Charitable Fundraising Unrelated to Fundraising Software

Overview

While the marks were found to be identical or highly similar, the Board concluded that the Applicant’s charitable food distribution and community service projects were entirely unrelated to the Registrant’s fundraising software and financial sponsorship services. The Board rejected the Examining Attorney’s attempt to generalize the identifications. The Board emphasized that a charity’s internal fundraising to support itself does not constitute providing "fundraising services" to third parties.

Furthermore, by evaluating the specific target recipients of these offerings, the Board found no evidence of overlapping trade channels or consumer classes. The needy and impoverished individuals receiving food charity are completely distinct from the enterprise consumers purchasing financial software, making a likelihood of confusion highly unlikely.

Background

Applicant, Part of the Solution, sought registration on the Principal Register for two marks: a standard-character mark, POTS, and a composite word-and-design mark featuring the stylized letters "POTS" with two curved lines on either side, all enclosed within a circle.

Both applications identified the same set of Class 35 services, which included:

• Distributorship services in the field of food
• Purchasing food for others
• Various charitable services, such as coordinating food donations for needy persons, organizing and conducting volunteer programs and community service projects, and developing projects to improve the lives of underprivileged and impoverished people

The Trademark Examining Attorney refused registration for both marks under Section 2(d) of the Trademark Act, citing a likelihood of confusion with a previously registered standard-character mark, POTS. The cited registration covers an extensive list of goods and services across Classes 9, 35, 36, and 42, including:

• Technology & Software (Classes 9 & 42): Recorded or downloadable mobile apps, Platform as a Service (PaaS), Infrastructure as a Service (IaaS), and website hosting designed to facilitate fundraising and financial sponsorship.
• Business & Consumer Services (Class 35): The bringing together of various fundraising and financial sponsorship services to allow consumers to conveniently view and purchase them.
• Financial & Advisory Services (Class 36): The actual fundraising for and financial sponsorship of cultural, business, charitable, and sporting events, alongside related informational and advisory services.

After the Examining Attorney made the refusals final, the Applicant requested reconsideration in both cases. When those requests were denied, the Applicant appealed both refusals, and the cases were subsequently consolidated.

How the Board Analyzed the DuPont Factors

The Board’s analysis centered on the classic DuPont factors, with the most significant weight given to the similarity of the marks and the relatedness of the services.

DuPont #1: Similarity of the Marks

The Board began its analysis by evaluating the similarity between the Applicant’s marks and the cited registration.

The '804 Application (Standard Characters)

The Applicant conceded that the marks were identical in sound and appearance but argued that they differed in connotation and commercial impression. To support this, the Applicant provided its own specimen showing that POTS is an acronym for its corporate name, "Part Of The Solution." It also submitted evidence from the Registrant’s website showing that the cited mark refers to virtual "pots" of money, similar to a digital piggy bank.

The Board rejected this argument, emphasizing that a likelihood of confusion analysis must be based on the marks as they appear in the application drawings, not how they are used in the marketplace. Because the Applicant’s full corporate name did not appear in the drawing, and the mark lacked periods or other punctuation to suggest it was an abbreviation, the Board found the marks to be legally identical. This identity weighed heavily in favor of a likelihood of confusion.

The '806 Application (Composite Mark)

For the composite mark, the Board identified the word "POTS" as the dominant portion. It noted that when a mark consists of both words and design elements, the wording is typically accorded greater weight because that is what consumers use to request the services.

The Board dismissed the surrounding circle and curved lines as a nondescript carrier and modest design elements with no inherent source-identifying significance. Furthermore, because the cited mark was registered in standard characters, the Registrant is entitled to depict it in any font, style, or size, including one that matches the Applicant’s stylization. Consequently, the Board found the marks in the '806 Application to be highly similar.

DuPont #2: Similarity of the Services

The Examining Attorney argued that the services were related because charitable food-distribution organizations frequently engage in and solicit sponsorship for fundraising events. To support this position, the Examining Attorney submitted evidence from eight websites of charitable food organizations, contending that these examples established that a single entity commonly provides both food distribution and fundraising-related services.

The Board, however, found this evidence insufficient in both quantity and quality. The Board emphasized that a likelihood of confusion analysis must focus strictly on the actual language of the identifications rather than broadened or generalized descriptions, criticizing the Examining Attorney for paraphrasing the identifications. Specifically, the Board noted that while the submitted websites showed that charities engage in fundraising to support themselves, this does not constitute providing "fundraising services" to others.

As the Board observed, "to be a service, an activity must be primarily for the benefit of someone other than the applicant." The fundraising conducted by both the Applicant and the third-party organizations in the evidence was entirely for their own benefit, not a service rendered to the public. In contrast, the Registrant’s identification involved providing fundraising software and sponsorship services to third parties. Because the Examining Attorney failed to show that entities commonly distribute food to the needy and sell fundraising software to third parties under the same mark, the Board found the services to be unrelated.

DuPont #3 and #4: Similarity of Trade Channels and Consumers

The Examining Attorney argued that the consumers were overlapping because both sets of services targeted people looking to donate to charities or participate in fundraising events. However, the Board found that the Applicant’s identifications were either expressly or by definition limited to specific, distinct groups: the general public as donors, needy or impoverished persons as beneficiaries, and volunteers for community projects.

In contrast, the Registrant’s goods and services, such as fundraising software and PaaS, were directed toward businesses and organizations that provide fundraising services. The Board found no evidence that the "needy persons" or "impoverished people" benefiting from the Applicant’s food distributorship would be the same consumers purchasing financial software or infrastructure services from the Registrant.

Furthermore, the Board noted that while a charity itself might purchase fundraising software for its own internal use, there was no evidence that the trade channels for these disparate offerings overlapped in a way that would lead to confusion.

Other DuPont Factors

The Board reviewed several other DuPont factors but ultimately found them all to be neutral:

• Factor #5 (Fame): The Board noted that in ex parte proceedings, the fame of the cited mark is typically treated as neutral because the Examining Attorney is not expected to provide evidence of market renown.
• Factor #8 (Actual Confusion): The Applicant argued that years of concurrent use without any reported incidents proved that confusion was unlikely. The Board dismissed this argument, noting that the record lacked evidence of actual market conditions. It emphasized that in an ex parte context, the Board only gets "half the story" since the Registrant is not a party to the case and cannot speak to their own experiences.
• Factor #12 (Potential Confusion): This factor arose because the Applicant claimed the Registrant had stopped using the mark "POTS" in favor of the term "Jars." The Board characterized this argument as an impermissible collateral attack on the validity of a registration, which cannot be entertained in an ex parte appeal.
• Factor #13 (The "Catchall"): The Applicant submitted fifteen pairs of third-party registrations to show that identical marks frequently coexist in charitable and non-charitable fields. The Board found these registrations had no probative value because they did not involve the specific goods or services at issue in this case.

Board’s Decision

Ultimately, the Board reversed the refusals to register both the standard-character mark in the ’804 Application and the composite mark in the ’806 Application.

The Board concluded that while the marks were either identical or highly similar, the remaining factors heavily favored the Applicant. Specifically, the significant differences in the services, the total lack of relatedness between food distribution and financial software, and the completely distinct channels of trade and consumer classes vastly outweighed the similarity of the marks.

In closing, the Board emphasized that the Examining Attorney’s evidence was simply insufficient to prove that relevant consumers would ever expect such disparate offerings to emanate from the same source.