Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1129634
`04/26/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92071703
`
`Plaintiff
`Servi-Tek, Inc.
`
`MICHELLE HON DONOVAN
`DUANE MORRIS LLP
`750 B STREET, SUITE 2900
`SAN DIEGO, CA 92101-4681
`UNITED STATES
`Primary Email: mhdonovan@duanemorris.com
`(619) 744 2219
`
`Submission
`
`Motion for Summary Judgment
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 05/09/2021
`Meghan C. Killian
`
`mckillian@duanemorris.com, mhdonovan@duanemorris.com
`
`/Meghan C. Killian/
`
`04/26/2021
`
`1. Petitioners Motion for Summary Judgment and Memorandum of Points a nd
`Authorities In Support Thereof--Public Version Redacted.pdf(333166 bytes )
`2. Declaration of Bryan McMinn ISO Motion for Summary Judgment--PUBLI C
`VERSION_Redacted.pdf(147540 bytes )
`3. Exhibits 1-6 to Declaration of Bryan McMinn.pdf(3866475 bytes )
`4. Exhibits 7 to Declaration of Bryan McMinn.pdf(5194153 bytes )
`5. Exhibits 8-14 to Declaration of Bryan McMinn--PUBLIC VERSION_Redac
`ted.pdf(2612479 bytes )
`6. Declaration of Meghan C. Killian ISO Petitioner's Motion for Summa ry Judg-
`ment and Exhibits A-D.pdf(6203219 bytes )
`7. Exhibits E-Q to Declaration of Meghan C. Killian--PUBLIC VERSION_R edac-
`ted.pdf(5890578 bytes )
`8. Certificate of Service.pdf(136264 bytes )
`
`

`

`Servi-Tek, Inc.,
`
`
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`__________________________________________
`:
`:
`:
`:
`: Cance llation No.: 92071703
`:
`:
`:
`:
`Respondent,
`:
`__________________________________________:
`
`Jimmy’s Contractor Services, Inc.,
`
`PETITIONER SERVI-TEK, INC.’S MOTION FOR SUMMARY JUDGMENT
`
`Petitioner Servi-Tek, Inc. (hereinafter “Petitioner”), by and through its undersigned
`
`counsel, hereby files its motion for summary judgment, in accordance with TBMP §528 and Rule
`
`56 of the Federal Rules of Civil Procedure seeking cancellation of the mark SERV-TECH (U.S.
`
`Reg. No. 5,044,774) based on priority and likelihood of confusion.
`
`In support of its motion, Petitioner submits herewith its Memorandum of Law in Support
`
`of its Motion for Summary Judgment, Declaration of Meghan C. Killian In Support Of Petitioners’
`
`Motion For Summary Judgment and the Declaration Of Bryan McMinn In Support Of Petitioners’
`
`Motion For Summary Judgment.
`
`Dated: April 26, 2021
`
`Respectfully submitted,
`
`/Michelle Hon Donovan/
`Michelle Hon Donovan
`DUANE MORRIS LLP
`750 B Street, Suite 2900
`San Diego, CA 92101-4681
`Telephone: (619) 744 2219
`Fax: (619) 923 2967
`
`Attorneys for Petitioner
`
`

`

`ATTORNEY DOCKET NO. H3599-00004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Servi-Tek, Inc.,
`
`
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`Mark: SERV-TECH
`Registration No. 5044774
`Reg. Date: September 20, 2016
`__________________________________________
`:
`:
`:
`:
` Cance llation No.: 92071703
`:
`:
`:
`:
`:
`Respondent,
`:
`__________________________________________:
`
`Jimmy’s Contractor Services, Inc.,
`
`PUBLIC VERSION
`Redacted
`
`MEMORANDUM IN SUPPORT OF SERVI-TEK, INC.’S
`MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION
`
`Petitioner Servi-Tek, Inc. (“Petitioner”) brought this proceeding to cancel Jimmy’s
`
`Contractor Services, Inc.’s (“Registrant”) U.S. Registration No. 5,044,774 for the SERV-TECH
`
`mark (“Registrant’s Mark”) based on Servi-Tek’s prior common law rights in the SERVI-TEK
`
`mark (“Petitioner’s Mark”).
`
`In the Petition for Cancellation, Petitioner asserted that Registrant’s SERV-TECH mark,
`
`when used in connection with “Roofing services; Roofing consultation; Roofing contracting;
`
`Roofing installation; Roofing repair; Roofing services, namely, waterproofing” (“Registrant’s
`
`Services”), is likely to cause confusion as to source with Petitioner’s SERVI-TEK mark, shown in
`
`1
`
`

`

`U.S. Serial No. 87/908,708,
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`for use with “janitorial and building maintenance services”
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`(“Petitioner’s Services”). 1 TTABVUE at ¶¶ 14-15. 1
`
`
`
`There are no genuine issues of material fact as to priority. As discussed in detail below,
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`Registrant concedes that it has not used the SERV-TECH mark with Registrant’s Services prior to
`
`May 8, 2015. Petitioner, on the other hand, has continuously used the SERVI-TEK mark with
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`Petitioner’s Services since at least as early as March 1, 2006, which is nine years before Registrant
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`even contends it began using its mark. Thus, there is no disputed issue as to priority.
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`
`
`It is also undisputed that (1) SERVI-TEK and SERV-TECH are similar in sight, sound,
`
`meaning, and commercial impression; (2) “roofing” services” and “building maintenance and
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`janitorial services” often originate from the same source and are included within, Petitioner’s
`
`Services; (3) as Registrant’s U.S. Registration No. 5,044,774 does not include any limitations to
`
`the channels of trade or the types of consumers, Registrant’s Services are presumed to be sold
`
`through the normal channels and to the usual types of consumers as Petitioner’s Services; (4)
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`Petitioner’s Services and Registrant’s Services do, in fact, travel in the same trade and marketing
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`channels to the same consumers.
`
`
`
`Thus, the undisputed material facts demonstrate that Registrant’s Mark is likely to cause
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`confusion or mistake as to source with Petitioner’s Mark. Accordingly, a grant of summary
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`judgment for Petitioner is appropriate in this instance and Petitioner respectfully request that the
`
`Board cancel Registrant’s U.S. Registration No. 5,044,774. 2
`
`
`1 Petitioner likewise identified priority and likelihood of confusion as a basis for the cancellation
`proceeding on the ESTTA cover page of the Petition to Cancel. 1 TTABVUE. As identified in Petitioner’s
`Opposition to Registrant’s Motion for Summary Adjudication, Petitioner has properly pled cancellation based on
`priority and likelihood of confusion; however, to the extent the claim requires clarification, Petitioner has sought
`leave to file an amended Petition to Cancel. 20 TTABVUE 10-14.
`
`2 Petitioner’s Motion has been timely filed. On March 3, 2020, Petitioner served its Initial Disclosures on
`Registrant. The deadline for pre-trial disclosures for the first testimony period was April 12, 2021; however, on
`March 16, 2021 the Board suspended the proceeding and tolled the time for disclosures. 15 TTABVUE; 19
`
`
`
`2
`
`

`

`Petitioners’ motion for summary judgment (“Motion”) is also supported by the Declaration
`
`of Meghan C. Killian In Support Of Petitioners’ Motion For Summary Judgment (“Killian Decl.”)
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`and the Declaration Of Bryan McMinn In Support Of Petitioners’ Motion For Summary Judgment
`
`(“McMinn Decl.”). The Killian Decl. and the McMinn Decl. were filed concurrently with this
`
`memorandum.
`
`II.
`
`STATEMENT OF UNDISPUTED FACTS
`
`Standing
`
`1.
`
`Petitioner is the owner of U.S. Trademark Application Serial No. 87/908,708
`
`(“Petitioner’s Application”) for use of Petitioner Mark with Petitioner’s Services.
`
`Killian Decl., Ex. A.
`
`2.
`
`Registrant
`
`is the owner of U.S. Trademark Registration No. 5,044,774
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`(“Registrant’s Registration”) for use of Registrant’s Mark with Registrant’s
`
`Services. Killian Decl., Ex. B.
`
`3.
`
`On February 8, 2019, the United States Patent and Trademark Office (“USPTO”)
`
`issued a Final Office Action refusing registration of Petitioner’s Application under
`
`Section 2(d) of the Trademark Act based on an alleged likelihood of confusion with
`
`Registrant’s Mark. Killian Decl., Ex. C.
`
`Priority
`
`4.
`
`Petitioner has continuously used in commerce the SERV-TECH mark with
`
`Petitioner’s Services since at least as early as March 1, 2006 to the present. McMinn
`
`Decl., ¶¶ 3-4, Exs. 1-8; Killian Decl., Exs. A, D, O (Response to Interrogatory Nos.
`
`4, 12), P (October 6, 2006 Specimen Servi-Tek_217-222).
`
`TTABVUE. As such, Petitioner’s Motion has been timely filed. See, Root Four Imagination Inc.
`v. Esurance Insurance Services, Inc., 2019 WL 5884975, at *1 (TTAB Oct. 31, 2019).
`
`3
`
`

`

`5.
`
`Petitioner was the owner of cancelled U.S. Trademark Registration No. 3,273,571
`
`(“Petitioner’s Prior Registration”) for use of Petitioner’s Mark in connection with
`
`Petitioner’s Services. Killian Decl., Ex. D; McMinn Decl., ¶ 6.
`
`6.
`
`Registrant’s earliest date of claimed use in commerce of the SERVI-TEK mark is
`
`May 8, 2015. 3 Killian Decl., Ex. E (Response to Interrogatory No. 2); 17
`
`TTABVUE 86, Stroh Decl. at ¶ 6 (“Jimmy’s Contractor Services began using its
`
`SERV-TECH mark in commerce on May 8, 2015”).
`
`Pe titione r’s Use of the SERVI-TEK Mark With Pe titione r’s Se rvices
`
`7.
`
`8.
`
`Petitioner’s Mark is comprised of the terms “servi” and “tek.” Killian Decl., Ex. A.
`
`The term “servi” in Petitioner’s Mark was chosen as an abbreviation of the word
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`“service.” McMinn Decl., ¶ 5; Ex. 10; Killian Decl., Ex. O (Response to
`
`Interrogatory No. 9).
`
`9.
`
`Petitioner’s Application is for use of Petitioner’s Mark with Petitioner’s Services.
`
`Killian Decl., Ex A.
`
`10.
`
`Petitioner’s Services include tasks such as internal and external cleaning of
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`facilities, power washing, facility inspection, carpentry, painting, maintenance and
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`repair of electrical, plumbing and ventilation systems. McMinn Decl., ¶¶ 8-9, Exs.
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`4, 5, 7, 8, 10, 13, 14; Killian Decl., Ex. O (Response to Interrogatory No. 3).
`
`Petitioner also provides its customers with access to its preferred contractor system
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`and coordinates with third-party contractors to repair and maintain the buildings ,
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`including the roofs, of Petitioner’s client properties. McMinn Decl., ¶ 9, Ex. 5.
`
`3 Petitioner disputes Registrant’s claimed first use date of May 8, 2015 on the basis that Registrant has
`proffered no evidentiary support for this date. Nevertheless, even if Registrant’s claimed date was accepted as true
`solely for the purposes of this Motion, Petitioner still has priority of use.
`
`4
`
`

`

`
`
`11.
`
`There is no limitation as to the consumers or channels of marketing or trade in
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`Petitioner’s Application. Killian Decl., Ex A.
`
`12.
`
`Petitioner’s target consumers for Petitioner’s Services are commercial building and
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`multi-family residential building owners, property or facility managers without any
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`limitation on building type or industry. McMinn Decl., ¶ 8, Exs 2, 5; Killian Decl.,
`
`Ex. O (Response to Interrogatory No. 18). In fact, Petitioner has advertised and/or
`
`provided Petitioner’s Services to the owners and property or facility managers for
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`industrial, educational, commercial, multi-family, and healthcare buildings.
`
`McMinn Decl., Exs. 5, 10.
`
`13.
`
`From December 2015
`
`to December 2020, Petitioner spent approximately
`
`$
`
` on marketing and advertising Petitioner’s Mark in connection with
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`Petitioner’s Services. McMinn Decl., ¶¶ 19-20, Ex. 9.
`
`14.
`
`Since 2006 through present, Petitioner has promoted Petitioner’s Services in
`
`connection with Petitioner’s Mark on its website at <servi-tek.net>. McMinn Decl.,
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`Exs. 7-9.
`
`15.
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`Petitioner has also used other forms of advertising such as cold-calling, golf
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`tournament sponsorships, brochures, and trade shows. McMinn Decl., Exs. 1-6.
`
`16.
`
`Petitioner’s Services have been offered in California, Nevada, Florida, Arizona and
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`Hawaii. McMinn Decl., ¶ 3, Exs. 1, 4, 5, 7, 10; Killian Decl., Ex. O (Response to
`
`Interrogatory Nos. 4, 16).
`
`
`
`5
`
`

`

`17.
`
`Third-parties have recognized Petitioner’s use of Petitioner’s Mark, including
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`recognition in the 2010 Inc. 5000 list of the fastest growing, private companies in
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`America. McMinn Decl., ¶ 21, Exs. 10-12.
`
`Re gistrant’s SERV-TECH Mark and Re gistrant’s Se rvices
`
`18.
`
`Registrant’s Mark is comprised of the terms “serv” and “tech”. Killian Decl., Ex.
`
`B.
`
`19.
`
`The term “serv” in Registrant’s Mark was chosen as an abbreviation of the word
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`“service” and represents Registrant’s “service department”. Killian Decl., Ex. F
`
`(JCS_030-033).
`
`20.
`
`Registrant considered the marks “serv-tek” or “servtek,” as alternatives to
`
`Registrant’s Mark, but the options were disregarded because the domain names
`
`were not available. Killian Decl., Ex. F (JCS_030-033).
`
`21.
`
`Registrant’s Registration is for use of Registrant’s Mark with Registrant’s Services.
`
`Killian Decl., Ex B.
`
`22.
`
`There is no limitation as to the consumers or channels of trade or marketing in
`
`Registrant’s Registration. Killian Decl., Ex B.
`
`23.
`
`Registrant’s Services include roof, gutter and drain cleaning, maintenance, graffiti
`
`removal, internal ceiling tile replacement, and light cleaning. Killian Decl., Ex. G
`
`(JCS_165-173;
`
`JCS_182-184;
`
`JCS_193-212;
`
`JCS_235-236;
`
`JCS_239-241;
`
`JCS_267-282; JCS_292-29), Ex. I at p. 63:8-10. 4
`
`
`4 Registrant attested that the invoices that were produced were for services rendered in connection with the
`SERV-TECH mark, despite the mark not appearing on the invoices. Killian Decl., Ex. I at pp. 56:1-6,
`
`
`
`6
`
`

`

`24.
`
`Registrant admits that the target consumers for Registrant’s Services are “the
`
`commercial building owners, property or facility managers.” Killian Decl., Ex. H
`
`(Response to Interrogatory No. 18). There is no limitation on the type of building
`
`or industry to which Registrant provides its services. Id., Ex. I at pp. 45-46. In fact,
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`Registrant advertises Registrant’s Services to the owners and property or facility
`
`managers for industrial, educational, commercial, religious, multi-family, and
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`healthcare buildings. Id., Ex. L (JCS_035).
`
`25.
`
`Registrant promotes and markets Registrant’s Services through word of mouth,
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`internet referrals, cold calling, and trade show attendance. Killian Decl., Exs. I at
`
`pp. 46-47; J (JCS_069-072).
`
`Pe titione r’s Se rvices Are Re lated To Re gistrant’s Se rvices
`
`26.
`
`United States trademark registrations for a mark in connection with “roofing”
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`services often also included “building maintenance and janitorial” services. Killian
`
`Decl., Ex. K.
`
`27.
`
`Entities in the United States commonly provide janitorial, maintenance, and roofing
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`services under the same mark. Killian Decl., Ex. Q.
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`III. ARGUMENT
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`Summary judgment should be granted, where, as here, it is shown that there is no genuine
`
`issue of material fact, and the moving party is entitled to judgment as a matter of law. Federal
`
`Rule of Civil Procedure (“FRCP”) 56(c). These general principles of summary judgment apply
`
`under FRCP 56 to proceedings before the Board. See, e.g., Sweats Fashions, Inc. v. Pannill
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`Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987). Thus, summary judgment
`
`is an appropriate method of disposing of an opposition or cancellation proceeding in which there
`
`
`
`7
`
`

`

`is no genuine issue of material fact on the question of likelihood of confusion. Kellogg Co. v.
`
`Pack’Em Enters, Inc., 14 USPQ2d 1545 (TTAB 1990). Summary judgment in a cancellation
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`proceeding is designed to save the time and expense of a full proceeding where there is no genuine
`
`issue as to any material fact. Bet Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 USPQ 552
`
`(C.C.P.A. 1969).
`
`Petitioner, as the moving party, has the burden of demonstrating that it is entitled to
`
`summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986). By meeting its burden
`
`of identifying undisputed facts, Petitioner is entitled to relief. Registrant cannot respond merely
`
`by pointing to allegations or denials in the pleadings. Matsushita Elec. Indus. Co. v. Zenith Radio
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`Corp., 475 U.S. 574, 586 (1986). Instead, Registrant must submit specific facts showing that there
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`is a genuine issue for trial. Id. at 587. In doing so, Registrant must present evidence from which
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`a reasonable trier of fact might return a verdict in its favor. Anderson v. Liberty Lobby, Inc., 477
`
`U.S. 242, 249-50 (1986). As there are no genuine issues of material fact, summary judgment in
`
`favor of Petitioner is appropriate.
`
` The Board may grant summary judgement and dispose of this action on fewer grounds
`
`than pled a Petition for Cancellation. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170,
`
`1171-72 (TTAB 2013) (where summary judgment entered on fewer than all pleaded grounds,
`
`Board might dispose of case without considering alternate grounds). As such, the Board may
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`cancel Registrant’s Regisrtation based on priority and likelihood of confusion without needing to
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`consider Petitioner’s other claims based on fraud, non-use and abandonment. TTABVUE 1.
`
`A.
`
`The re Is No Ge nuine Issue of Mate rial Fact that Se rvi-Te k Has Priority Of
`Use
`
`Petitioner has priority in its SERVI-TEK mark because it has used its mark in commerce
`
`for nine years prior to any claimed use by Registrant. To establish priority on a likelihood of
`
`
`
`8
`
`

`

`confusion claim brought under Trademark Act Section 2(d), a party must prove that, vis-à-vis the
`
`other party, it owns “a mark or trade name previously used in the United States . . . and not
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`abandoned. . . .” Trademark Act § 2, 15 U.S.C. § 1052. A party may establish its own prior
`
`proprietary rights in a mark through “prior use as a trade name, prior use analogous to trademark
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`or service mark use, or any other use sufficient to establish proprietary rights.” Trademark Act §§
`
`2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127; Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
`
`1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (internal citations omitted). Petitioner need only
`
`prove that it used or made analogous use of its mark in commerce before Respondent. In Mattel
`
`Inc. v. Funline Merchandise Co., the Board found that petitioner had priority in its mark because
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`it had been using it on its product many years prior to Respondent’s first use of the mark. 81
`
`USPQ2d 1372, 1374 (TTAB 2006).
`
`The fact that Petitioner used its SERVI-TEK mark before Respondent’s first date of use is
`
`not at issue. Petitioner’s claimed date of first use in Petitioner’s Application is March 1, 2006,
`
`which was also Petitioner’s claimed date of first use in commerce in its Prior Registration. Killian
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`Decl., Exs. A, D. Petitioner’s proffered evidence also shows continuous use from 2006 to the
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`present. McMinn Decl., ¶ 4, Exs. 1-12; Killian Decl., Ex. P. In comparison, the earliest that
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`Registrant has claimed first use of Registrant’s Mark is May 8, 2015—more than 9 years after
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`Petitioner’s first use. Killian Decl., Ex. E (Response to Interrogatory No. 2); 17 TTABVUE 86,
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`Stroh Decl. at ¶ 6. Since Petitioner’s use in commerce of the SERVI-TEK mark predates
`
`Registrant’s claimed first use, there is no genuine issue of material fact as to Petitioner as to the
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`priority of Petitioner’s SERVI-TEK mark.
`
`B.
`
`Re gistrant’s Mark Is Likely to Cause Confusion with Pe titione r’s Mark
`
`The Board is guided by the factors set forth in In re E.I. du Pont de Nemours & Co., 476
`
`F.2d 1357, 177 USPQ 563 (CCPA 1973) for the determination of likelihood of confusion. The
`
`
`
`9
`
`

`

`analysis is based on all of the facts in evidence that are relevant to the factors bearing on the issue
`
`of likelihood of confusion. Only those du Pont factors shown to be material or relevant in a
`
`particular case and which have evidence submitted thereon are to be considered. See Olde Tyme
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`Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
`
`
`
`The issue of likelihood of confusion revolves around the similarity of the marks, the
`
`relatedness of the services, and the similarity of consumers and the channels of trade. Here, there
`
`are no genuine issues of material fact regarding likelihood of confusion between Petitioner’s Mark
`
`and Registrant’s Mark. Specifically, the undisputed facts demonstrate that: (1) Petitioner’s Mark
`
`and Registrant’s Mark are confusingly similar in appearance, sound, meaning and overall
`
`commercial impression; (2) Registrant’s Services are subsumed within, and highly related to,
`
`Petitioner’s Services; (3) there are no limitations
`
`to the type of customer in Registrant’s
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`Registration, Petitioner’s Application and, without limiting the foregoing, Registrant’s Services
`
`and Petitioner’s Services are marketed, promoted and intended to be received by the same class of
`
`customers, namely building owners and property and facility managers of commercial and multi-
`
`family residential buildings; and (4) Registrant’s Services and Petitioner’s Services are offered in
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`the same channel of trade.
`
`
`
`Given the similarities of the marks and the highly related nature of the services, consumers
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`and potential consumers are likely to believe that Registrant’s Services originate with or are
`
`otherwise authorized, licensed or sponsored by Petitioner. Therefore, this matter is appropriate for
`
`a summary judgment decision.
`
`C.
`
`Re gistrant’s SERV-TECH Mark Is Confusingly Similar to Pe titione r’s
`SERVI-TEK Mark
`
`
`
`In a likelihood of confusion determination, the marks are compared for similarities in their
`
`appearance, sound, meaning or connotation and commercial impression. In re E. I. DuPont
`
`
`
`10
`
`

`

`DeNemours & Co., 177 USPQ at 567; TMEP § 1207.01(b). “Similarity in either form, spelling or
`
`sound alone may be sufficient to support a finding of likelihood of confusion.” Interstate Brands
`
`Corp., 53 USPQ2d 1910 (TTAB 2000). “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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
`
`1713, 1721 (Fed. Cir. 2012) (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
`
`Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co.,
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`190 USPQ 106, 108 (TTAB 1975)).
`
`Petitioner’s SERVI-TEK mark and Registrant’s SERV-TECH mark are nearly identical in
`
`sound, appearance, connotation, and overall commercial impression. The USPTO notably refused
`
`registration of Petitioner’s Mark on the basis that it was nearly identical with Registrant’s Mark.
`
`Specifically, the Examining Attorney noted:
`
`
`The applied-for mark SERVI-TEK and the registered mark SERV-TECH are
`similar in sound, appearance, connotation, and overall commercial impression
`because they are nearly identical. Both of these standard character marks begin
`with the four letters "SERV", which are subsequently followed by a hyphen and
`then one of the phonetically equivalent terms of "TEK" (applicant) or "TECH"
`(registrant). See the attached internet evidence from the Merriam-Webster website,
`which demonstrates via its pronunciation guide that the word "TECH" is
`pronounced
`"TEK",
`and which
`is
`available
`at https://www.merriam-
`webster.com/dictionary/tech. Indeed, the principal difference between the two
`marks (other than the same-sounding final consonant(s) being spelled "K" or
`"CH"), is that applicant adds the single letter "I" after the marks' identical
`beginnings of "SERV". This extra vowel, which does not appear until the middle
`of applicant's proposed mark, is simply not enough to meaningfully distingu ish
`these marks from each other, much less eliminate the likelihood of confusion.
`
`Killian Decl., Ex. C.
`
`
`
`
`11
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`

`

`
`
`The evidence on the record confirms the Examining Attorney’s opinion. Regarding
`
`appearance, Petitioner’s Mark and Respondents Mark are nearly identical visually with the same
`
`(i) word-hyphen-word format, (ii) “serv” prefix on the first element, (ii) and phonetically
`
`equivalent second element of “tek/tech”. Overall, the respective marks have the same number of
`
`characters and seven of the nine characters are identical, as shown below (with similar elements
`
`bolded for comparison purposes):
`
`
`
`Petitioner’s Mark Registrant’s Mark
`
`SERVI-TEK
`
`SERV-TECH
`
`
`The respective marks only differ by two letters. Such a minute difference in appearance—even if
`
`it lends itself to arguably differing pronunciations—does not prevent a likelihood of confusion.
`
`See, e.g., Blansett Pharmacal Co. v. Carmrick Labs., 25 USPQ2d 1473, 1477 (TTAB 1992)
`
`(NALEX and NOLEX found confusingly similar despite differences in appearance (and
`
`pronunciation) of the letters “A” and “O”); Dap, Inc. v. Duracite Mfg., 157 USPQ 640, 643-44
`
`(TTAB 1968) (finding DURATITE and DURACITE, with a one-letter difference in the middle of
`
`the mark, “substantially similar in appearance and almost indistinguishable when spoken”); Tenax
`
`S.P.A. v. Wuhan Keda Marble Protective Materials Co., 2018 WL 1082093, at *4 (TTAB Feb. 23,
`
`2018) (TEENIAX and TENAX found confusingly similar in appearance because consumers could
`
`overlook the additional “E” and “I” in applicant’s mark).
`
`
`
`Additionally, the Federal Circuit and the Board have held that it is often the first portion
`
`of a mark that is most likely to be impressed on the mind of a purchaser and remembered. See See
`
`Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73
`
`USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895,
`
`1897 (TTAB 1988). Here, the first and dominant portions of each mark is “Serv,” which is the
`
`
`
`12
`
`

`

`word most likely to be remembered by consumers. Decho Corp. v. Mueller, 2011 WL 3828714, at
`
`*7 (TTAB Aug. 12, 2011) (finding opposer’s MOZYENTERPRISE, MOZYPRO, and
`
`MOZYHOME confusingly similar in sound, appearance, and commercial impression to MOZIE
`
`where “MOZY” was determined to be the dominant portion of opposer’s mark).
`
`
`
`Furthermore, the marks are likewise nearly identical in pronunciation. The prefix “serv”
`
`will be pronounced the same, as will the “tek” and “tech” elements of the respective marks. Killian
`
`Decl., Ex. N (explaining the word “TECH” is pronounced “TEK”) 5 The evidence of record even
`
`shows that Registrant considered spelling its SERV-TECH mark as “serv-tek,” which further
`
`demonstrates the interchangeable nature of the “tech” v. “tek” suffix. Killian Decl., F (JCS_030-
`
`033). Petitioner’s Mark is pronounced “surv-/i/-tek” and Respondent’s Mark is pronounced “surv-
`
`tek”. Except for the inclusion of the short “i” in the middle of Petitioner’s Mark, the marks are
`
`phonetically identical. As noted by the Examining Attorneys, the additional vowel, which does
`
`not appear until the middle of Petitioner’s Mark, fails to distinguish the marks or eliminate the
`
`likelihood of confusion. Slight differences in the sound of similar trademarks will not protect an
`
`infringer. G. D. Searle & Co. v. Charles Pfizer & Co., 265 F.2d 385, 387, 121 USPQ 74 (7th Cir.
`
`1959) (BONAMINE held to be confusingly similar to senior user's DRAMAMINE, both for
`
`motion sickness remedy. Infringement was found.); see also Jules Berman & Assocs., Inc. v.
`
`Consol. Distilled Prod., Inc., the Board found “CHULA” was similar in appearance to
`
`“KAHLUA” and virtually identical thereto in sound such to give rise to a likelihood of confusion.
`
`202 USPQ (BNA) ¶ 67 (TTAB Jan. 25, 1979).
`
`
`5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
`Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
`online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
`1375, 1377 (TTAB 2006).
`
`
`
`13
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`

`

`Finally, the marks also share the same meaning. It is undisputed that the first elements in
`
`the parties’ respective marks (serv/seri) were selected as abbreviations of the word “service.”
`
`McMinn Decl., ¶ 5, Ex. 10; Killian Decl., Ex. F (JCS_030-033).
`
`Due to the nearly identical visual and phonetic elements of the marks, as well as the
`
`identical meaning, the overall commercial impression of the SERV-TECH and SERVI-TEK mark
`
`is so similar that this factor weighs heavily in favor of finding a likelihood of confusion.
`
`D.
`
`Pe titione r’s Mark is A Strong Mark Entitle d To Broad Prote ction
`
`
`
`A strong mark receives a wider latitude of legal protection in the likelihood of confusion
`
`analysis. See Palm Bay Imps., Inc., 73 USPQ2d at 1694. The strength of Petitioner’s Mark is
`
`undisputed. Petitioner has been continuously and prominently used Petitioner’s Mark for 15 years.
`
`McMinn Decl., ¶¶ 3-4, Exs. 1-8; Killian Decl., Exs. A, D, O (Response to Interrogatory Nos. 4,
`
`12). During that time, Petitioner has offered Petitioner’s Services in connection to Petitioner’s
`
`Mark to some of the country’s most prominent corporations and has spent hundreds of thousands
`
`of dollars advertising Petitioner’s Mark since December of 2015. McMinn Decl., ¶¶ 8, 19-20, Exs.
`
`7, 9, 10. Moreover, Petitioner’s Mark has been recognized in a number of third-party publications ,
`
`including the 2010 Inc. 5000 list of the fastest growing, private companies in America. McMinn
`
`Decl., ¶ 21, Exs. 10-12. As such, it is undisputed that Petitioner’s Mark is considered strong and,
`
`therefore, entitled to broad protection.
`
`E.
`
`Re gistrant’s Se rvices Are Closely Re lated to, and Subsume d Within,
`Pe titione r’s Se rvices
`
`
`
`The services of the parties need not be identical or directly competitive to find a likeliho od
`
`of confusion. See Safety-Kleen Corp. v. Dresser Indus, Inc., 518 F.2d 1399, 186 USPQ 476, 480
`
`(C.C.P.A. 1975); TMEP § 1207.01(a)(i). Rather, they need only be related in some manner, or the
`
`conditions surrounding their marketing are such that they would be encountered by the same
`
`
`
`14
`
`

`

`purchasers under circumstances that would give rise to the mistaken belief that the services come
`
`from a common source. In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999);
`
`TMEP § 1207.01(a)(i).
`
`
`
`Here, Registrant’s Services are highly
`
`related to, and actually subsumed within,
`
`Petitioner’s Services. Specifically, as identified by the USPTO, Petitioner’s “building maintenance
`
`services” on their face encompass the roofing related services proffered by Registrant:
`
`The ordinary meaning of "maintenance" includes "the act of maintaining," such as
`in
`the usage example: "[t]he building has suffered from years of poor
`maintenance." See the attached internet evidence from the Merriam-Webster
`website,
`available
`at https://www.merriam-
`webster.com/dictionary/maintenance. Another
`common
`meaning
`of
`"maintenance" is "the upkeep of property or equipment," such as in the usage
`example: "the maintenance of the school." Id. Thus, "the act of maintaining a
`building" or "the upkeep of" a building necessarily extends to the upkeep or
`maintenance of any of the particular parts of a building—for example, the upkeep
`or maintaining of a building's roof.
`
`Killian Decl., Ex. C.
`
`
`
`The evidence of record likewise supports the USPTO’s determination that Registrant’s
`
`Services are encompassed within Petitioner’s Services. As identified on Registrant’s website and
`
`within its produced invoices, Registrant’s Services includes roof, gutter and drain cleaning,
`
`“maintenance on commercial building,” graffiti removal, internal ceiling tile replacement, and
`
`light cleaning. Killian Decl., Ex. G. Registrant also has self-advertised its own services as “facility
`
`maintenance.” Id., Ex. M. These are precisely the types of janitorial and building maintenance
`
`services Petitioner provides to its consumers. Id., Exs. A. Specifically, Petitioner’s janitorial and
`
`building maintenance services include internal and external cleaning, pressure washing, carpentry,
`
`painting, and maintenance and repair of electrical, plumbing, and ventilation systems. McMinn
`
`Decl., Exs. 1 at Servi-Tek_078, 5, 7 at Servi-Tek_001-002, 8, 13, 14. Petitioner also provides its
`
`customers with access to its preferred contractor system and coordinates with third-party
`
`
`
`15
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`

`

`contractors to repair and maintain the building