In Re Viterra Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

(Serial No. 77/608,885)
IN RE VITERRA INC.
__________________________

2011-1354
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
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Decided: March 6, 2012
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SCOT A. DUVALL, Middleton & Reutlinger, of Louis-
ville, Kentucky, for appellant.

RAYMOND T. CHEN, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia for appel-
lee. With him on the brief were CHRISTINA J. HIEBER and
FRANCES M. LYNCH, Associate Solicitors.
__________________________

Before DYK, MOORE, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Viterra Inc. (“Viterra”) appeals the decision of the
Trademark Trial and Appeal Board (“the Board”) affirm-
ing the examining attorney’s refusal to register the
trademark XCEED, in standard character form, for
IN RE VITERRA 2

“agricultural seed.” The examining attorney refused
registration under Section 2(d) of the Lanham Act, 15
U.S.C. § 1052(d), finding that Viterra’s XCEED mark was
likely to cause confusion with the previously-registered
word and design mark for “agricultural seeds” shown
below:

See U.S. Reg. No. 3,339,424 (hereinafter, “the X-Seed
Mark”). The Board affirmed the examining attorney’s
refusal based on the identical nature of the goods in-
volved, the similarity of the marks, and the overlapping
trade channels and classes of potential consumers. Be-
cause we find that the Board’s factual findings are sup-
ported by substantial evidence, and we agree that
Viterra’s XCEED mark is likely to cause confusion with
the X-Seed Mark, we affirm.
BACKGROUND
On November 6, 2008, Vittera filed an intent-to-use
application under 15 U.S.C. § 1051(b) to register the mark
XCEED for “agricultural seed.” See U.S. App. Serial No.
77/608,885 (Joint Appendix (“J.A.”) 20-25). Viterra ap-
plied to register the mark in standard character form,
“without claim to any particular font, style, size, or color.”
Id. at 23. See also 37 C.F.R. § 2.52(a).
The trademark examining attorney refused registra-
tion under Section 2(d) of the Lanham Act, finding that it
was likely to cause confusion with the previously-
registered X-Seed Mark, shown above, for “agricultural
3 IN RE VITERRA

seeds,” which is owned by X-Seed, Inc. The X-Seed Mark
is registered in special form as a word and design mark
and, according to the registration, “consists of the stylized
letter X and the surrounding dots appears [sic] in red and
the term ‘-Seed’ is black and outlined in gray.” U.S. Reg.
No. 3,339,424 (J.A. 36-38). In its registration, X-Seed,
Inc. claims the colors black, red, and gray as a feature of
the X-Seed Mark, and it disclaims exclusive rights to the
term “seed” apart from the mark as shown pursuant to 15
U.S.C. § 1056. Id. In his final refusal, the examining
attorney found a likelihood of confusion between the
applied-for mark and X-Seed Mark after concluding that
“[t]he goods are identical,” and that “[t]he marks are
phonetic equivalents” and “visually similar.” U.S. App.
Serial No. 77/608,885 (Final Refusal Sept. 4, 2009) (J.A.
48).
Viterra appealed the refusal to the Board, which af-
firmed the examining attorney’s decision. The Board
found that confusion with the X-Seed Mark was likely
after giving “heavy weight” to the identical nature of the
goods. In re Viterra Inc., 2011 WL 526100, at *6 (T.T.A.B.
Jan 21, 2011) (“Board Decision”). In addition, because
neither the XCEED application nor the X-Seed registra-
tion limited the channels of trade or classes of purchasers,
the Board presumed that the goods travel in the same
trade channels and are bought by the same classes of
purchasers. Id., at *2. As to similarity, the Board found
that the literal portion of the X-Seed Mark, not the design
portion, was the dominant part of the mark, and that
“[t]he literal portion of registrant's mark, X-SEED, sounds
identical or, at the very least, virtually identical to appli-
cant's mark XCEED.” Id., at *5. The Board also found
that “both marks are likely to be perceived as a play on
the commonly known and understood word ‘exceed,’
conveying the same laudatory suggestion.” Id.
IN RE VITERRA 4

With respect to appearance, the Board applied its
“reasonable manners” standard, explaining that, “when
an applicant seeks registration of its word mark in stan-
dard characters, ‘then the Board must consider all rea-
sonable manners in which those words could be
depicted.’” 1 Id., at *3 (quoting INB Nat’l Bank v. Metro-
host, Inc., 22 USPQ2d 1585, 1588 (T.T.A.B. 1992)). Under
this standard, the Board found that one reasonable varia-
tion of XCEED could include a large capital letter “X”
followed by “ceed” in smaller letters, which would resem-
ble the X-Seed Mark. Id. at *3. In so finding, the Board
clarified that, “[b]y saying this, we do not mean to suggest
that the specific special form of registrant’s mark in its
entirety constitutes a ‘reasonable’ variation of applicant's
standard character mark. We acknowledge that regis-
trant’s mark is highly stylized, with colors.” Id., at *5.
Accordingly, based on the identical nature of the goods
involved, overlapping trade channels and potential con-
sumers, and the similarity of the marks, the Board con-
cluded that “purchasers familiar with registrant’s
agricultural seed sold under the mark X-SEED and
design would be likely to mistakenly believe, upon en-
countering applicant’s mark XCEED for agricultural seed,
that the goods originated with or are somehow associated
with or sponsored by the same entity.” Id. at *6. Based
on this conclusion, the Board affirmed the examining
attorney’s refusal to register XCEED.
Viterra timely appealed to this court, and we have ju-
1 After the Board issued its decision, this court re-
jected the “reasonable manners” standard as not being
supported by statute, regulation, or this court’s case law,
and finding that it unnecessarily “limits the range of
marks considered in the DuPont analysis.” Citigroup Inc.
v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353
(Fed. Cir. 2011). Below, we address the impact of the
Citigroup decision on this case.
5 IN RE VITERRA

risdiction under 28 U.S.C. § 1295(a)(4)(B). The parties
waived oral argument.
STANDARD OF REVIEW
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Mighty
Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010). The
Board’s determination of likelihood of confusion is a legal
determination, id., as is “its interpretations of the
Lanham Act and the legal tests it applies in measuring
registrability.” In re Save Venice New York, Inc., 259 F.3d
1346, 1351-52 (Fed. Cir. 2001). The ultimate question of
likelihood of confusion, however, is based upon factual
underpinnings that we review for substantial evidence.
In re Mighty Leaf Tea, 601 F.3d at 1346. For example, the
question of similarity between two marks and the relat-
edness of goods are factual determinations. See Shen
Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir.
2004). Within the broader question of the similarity of
the marks, determinations as to the appearance, sound,
connotation and commercial impression of the marks are
also factual in nature. See Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 1337 (Fed. Cir. 2001) (“The
Board’s finding that the marks are similar in sound is a
factual determination.”); Champagne Louis Roederer, S.A.
v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir.
1998) (referring to “the Board’s factual findings with
respect to the dissimilarities of the marks in appearance,
sound, significance, or overall commercial impression”).
We will not disturb such factual findings if they are
supported by substantial evidence in the record. Han
Beauty, 236 F.3d at 1337.
Substantial evidence is “‘more than a mere scintilla’
and [is] ‘such relevant evidence as a reasonable mind
would accept as adequate’ to support a conclusion.” In re
IN RE VITERRA 6

Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003) (quoting
Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938)).
Accordingly, “[w]here two different conclusions may be
warranted based on the evidence of record, the Board’s
decision to favor one conclusion over the other is the type
of decision that must be sustained by this court as sup-
ported by substantial evidence.” In re Bayer Aktiengesell-
schaft, 488 F.3d 960, 970 (Fed. Cir. 2007).
DISCUSSION
Under Section 2(d) of the Lanham Act, registration of
a mark must be refused if it:
so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previ-
ously used in the United States by another and
not abandoned, as to be likely, when used on or in
connection with the goods of the applicant, to
cause confusion, or to cause mistake, or to deceive.
15 U.S.C. § 1052(d). Whether a likelihood of confusion
exists is determined on a case-by-case basis aided by the
application of factors our predecessor court set out in In re
E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361
(CCPA 1973). “Not all of the DuPont factors are relevant
to every case, and only factors of significance to the par-
ticular mark need be considered.” In re Mighty Leaf Tea,
601 F.3d at 1346. In this case, the Board considered the
DuPont factors relating to the similarity and nature of the
goods, the similarity of trade channels, and the similarity
of the marks.
On appeal, Viterra concedes that the goods at issue
are identical. In addition, although Viterra challenges
the Board’s reliance on overlapping trade channels and
prospective purchasers as not being “of record,” it is well
established that, “absent restrictions in the application
7 IN RE VITERRA

and registration, goods and services are presumed to
travel in the same channels of trade to the same class of
purchasers.” Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 1268 (Fed. Cir. 2002) (citing CBS Inc. v.
Morrow, 708 F.2d 1579, 1581 (Fed. Cir. 1983)). The
Board, therefore, was entitled to rely on this legal pre-
sumption in determining likelihood of confusion. The
parties do not present arguments as to any of the other
DuPont factors. Accordingly, the only factor that we need
to address, and the focus of Viterra’s appeal, is the Du-
Pont factor relating to the similarity of the marks.
Viterra makes three arguments as to why its XCEED
mark and the registrant’s X-Seed Mark are dissimilar: (1)
the marks are different in appearance because the X-Seed
Mark includes a distinctive design and color claims, and
Viterra’s standard character mark should not be con-
strued so broadly as to cover that distinctive form; (2) the
marks are phonetically different because the sound of
Viterra’s mark is “exceed,” whereas the X-Seed Mark is
likely to be pronounced as two separate terms in succes-
sion: “X” and “seed”; and (3) the marks have different
connotations because Viterra’s mark will be construed as
“exceeding” customers’ expectations, whereas the focus of
the X-Seed Mark is the “X,” which is susceptible to several
different meanings, such as the roman numeral, an un-
known quantity, or shorthand for “cross.” We address
each argument in turn.
I.
The relevant DuPont factor requires examination of
“the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.” DuPont, 476 F.2d at 1361. As is
apparent from the plain language of this factor, marks
must be viewed “in their entireties,” and it is improper to
IN RE VITERRA 8

dissect a mark when engaging in this analysis, including
when a mark contains both words and a design. In re
Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“The
marks are considered in their entireties, words and de-
sign.”). Although the court may place more weight on a
dominant portion of a mark, for example if another fea-
ture of the mark is descriptive or generic standing alone,
the ultimate conclusion nonetheless must rest on consid-
eration of the marks in total. Packard Press, Inc. v.
Hewlett-Packard Co., 227 F.3d 1352, 1357 (Fed. Cir.
2000); In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed.
Cir. 1985).
In the case of a composite mark containing both words
and a design, “the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it
is affixed.” CBS, 708 F.2d at 1581-82; see also L.C. Li-
censing, Inc. v. Cary Berman, 86 USPQ2d 1883, 1887,
2008 WL 835278, at *3 (TTAB 2008) (“[I]t is well settled
that if a mark comprises both a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods.”).
Despite those statements, we also have cautioned that
there is no general rule that the letter portion of the mark
will form the dominant portion of the mark. See In re
Electrolyte Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990).
Marks, therefore, must be considered on a case-by-case
basis. Finally, where, as here, the goods at issue are
identical, “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).
A.
Viterra directs the majority of its argument to the ap-
pearance of the marks, arguing that the distinctive design
9 IN RE VITERRA

and color elements of the X-Seed Mark render it visually
different from its XCEED mark. The Board rejected this
argument, relying on the fact that Viterra applied to
register its mark in standard character form and, thus,
“without claim to any particular font, style, size, or color.”
See 37 C.F.R. § 2.52(a); Trademark Manual of Examining
Procedure (“TMEP”) § 1207.01(c)(iii) (“If a mark (in either
an application or a registration) is presented in standard
characters, the owner of the mark is not limited to any
particular depiction of the mark.”). Accordingly, the
Board found that the standard character mark XCEED
“could be depicted in a variety of reasonable variations,
including a large capital ‘X’ followed by ‘ceed’ in smaller
letters, that is, in a manner that resembles the format of
the cited mark.” Board Decision, at *5.
Viterra argues that the Board’s decision misapplies 37
C.F.R. § 2.52(a) and TMEP § 1207.01, and that this court
should clarify how standard character marks should be
compared to registered design marks in a likelihood of
confusion analysis. Specifically, Viterra argues that the
court “should readdress and clarify Citigroup [v. Capital
City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011)],” a
case in which we rejected the “reasonable manners”
standard the Board traditionally has used to determine
the scope of standard character marks. We find that
Viterra’s arguments are without merit and that it is
unnecessary to “readdress” Citigroup, even if we had the
authority to do so.
First, to the extent the Board simply held that a stan-
dard character mark is not limited to any particular font,
size, style, or color, it is entirely consistent with our case
law, the relevant regulations, and the TMEP. See In re
Mighty Leaf Tea, 601 F.3d at 1348 (rejecting an argument
that the specific style of a registered mark could serve to
distinguish the applicant’s mark in standard character
IN RE VITERRA 10

form); Cunningham v. Laser Golf Corp., 222 F.3d 943, 950
(Fed. Cir. 2000) (“Registrations with typed drawings 2 are
not limited to any particular rendition of the mark and, in
particular, are not limited to the mark as it is used in
commerce”); Phillips Petroleum Co. v. C.J. Webb, Inc., 442
F.2d 1376, 1378 (CCPA 1971) (a drawing in typed letters
“is not limited to the mark depicted in any special form”);
37 C.F.R. § 2.52(a) (providing rules for applicants “who
seek to register words, letters, numbers, or any combina-
tion thereof without claim to any particular font style,
size, or color”); TMEP § 1207.01(c)(iii) (same). Indeed, we
previously have rejected an applicant’s argument that its
standard character mark was distinct from a mark regis-
tered in stylized lettering with a design. See SquirtCo v.
Tomy Corp., 697 F.2d 1038, 1041 (Fed. Cir. 1983) (reject-
ing argument that SQUIRT SQUAD in standard letters is
distinct from SQUIRT registered in “distinctive lettering
on a dark medallion”; “[b]y presenting its mark merely in
a typed drawing, a difference cannot legally be asserted by
that party” (emphasis in original)).
Although this court’s Citigroup decision discarded the
Board’s “reasonable manners” standard after the Board
issued its decision in this matter, see 637 F.3d at 1353,
that holding does not change the outcome here. Indeed,
our decision in Citigroup only broadens the potential
variations of the standard character XCEED mark to be
considered in the likelihood of confusion analysis and, if
anything, makes the Board’s decision less vulnerable to

2 As we noted in Citigroup, until 2003, “standard
character” marks formerly were known as “typed” marks,
but the preferred nomenclature was changed in 2003 to
conform to the Madrid Protocol. Citigroup, 637 F.3d at
1352 n.1. Contrary to Viterra’s argument, we do not see
anything in the 2003 amendments that substantively
alters our interpretation of the scope of such marks.
11 IN RE VITERRA

attack.
Viterra argues that this court should clarify that Citi-
group does not apply to this case because Citigroup in-
volved an inter partes opposition proceeding, whereas this
is an ex parte examination case. According to Viterra, the
“reasonable manners” standard is alive and well in ex
parte examinations, and the Board misapplied that stan-
dard in this case. Viterra also asks this court to find that
Citigroup does not apply when design marks are at issue.
We decline Viterra’s invitation on both fronts.
In Citigroup, we affirmed the Board’s denial of an op-
position seeking to prevent registration of the mark
CAPITAL CITY BANK, in standard character form, based
on an asserted likelihood of confusion with opposer’s
CITIBANK mark (and other CITI- prefix marks), also in
standard character form. Id. at 1356. The Board, in
reaching its decision, considered only the “reasonable
manners” of depicting the standard character mark
CAPITAL CITY BANK, and it found that minimizing
“CAPITAL” and emphasizing “CITY BANK” would not be
a reasonable manner of depicting the mark. Accordingly,
it rejected the opposer’s contention that the parties’
marks were similar when compared in that manner.
Although we ultimately concluded that substantial
evidence supported the Board’s finding that the parties’
marks were dissimilar, we rejected the “reasonable man-
ners” test as unduly narrow and not required by statute,
regulation, or our case law. We instructed that “[t]he
T.T.A.B. should not first determine whether certain
depictions are ‘reasonable’ and then apply the DuPont
analysis to only a subset of variations of a standard
character mark.” Id. at 1353. Rather, “[t]he T.T.A.B.
should simply use the DuPont factors to determine the
likelihood of confusion between depictions of standard
IN RE VITERRA 12

character marks that vary in font, style, size and color
and the other mark.” Id. We noted, as we had in prior
cases, that “illustrations of the mark as actually used may
assist the T.T.A.B. in visualizing other forms in which the
mark might appear.” Id. Accordingly, our decision in
Citigroup discarded the Board’s “reasonable manners”
standard in favor of a standard that allows a broader
range of marks to be considered in the DuPont analysis
when a standard character mark is at issue.
Viterra first attempts to avoid Citigroup by arguing
that Citigroup involved an inter partes opposition proceed-
ing, whereas this appeal derives from an ex parte exami-
nation. Viterra, however, offers no principled reason to
make that distinction, and we see none. The analysis in
both types of cases derives from the same statute, 15
U.S.C. § 1052(d), which forms the basis of both an exam-
ining attorney’s refusal to register on likelihood of confu-
sion grounds and an opposer’s challenge on the same
grounds. By analogy, there can be no doubt that the
DuPont factors, which derive from 15 U.S.C. § 1052(d)
and originated in the ex parte context, apply both in ex
parte examinations and in inter partes proceedings. It
would indeed be strange if a standard character mark
were given a more limited view during ex parte examina-
tion than in inter partes proceedings, particularly since
inter partes proceedings are intended to be a backstop for
the examination process. See In re Shell Oil, 992 F.2d at
1209 (“The opposition procedure is intended to remedy
oversight or error, not to substitute for the examination
process.”); 3 J. Thomas McCarthy, McCarthy on Trade-
marks and Unfair Competition § 20:2 (4th ed. 2011)
(hereinafter “McCarthy”) (opposition proceedings “provide
a backstop to purely ex parte examination of trademark
applications”). Accordingly, we find that the holding in
Citigroup regarding the “reasonable manners” standard
13 IN RE VITERRA

applies equally in an ex parte examination context. 3
We also see no reason why Citigroup would not apply
to cases when a standard character mark is compared
with a design mark or, as here, a word and design mark.
There is no indication in Citigroup, or elsewhere in our
precedent, that the analysis would be so limited. See
Citigroup, 637 F.3d at 1353 (referring generally to com-
parisons between the standard character mark and “the
other mark.”) We assess the similarity of any two marks
on a case-by-case basis, and that assessment necessarily
takes into account whether one or both marks is in stan-
dard character form or contains a design feature. But
that does not require us to alter the basic analysis when a
standard character mark is compared with a stylized or
design mark. Applying Citigroup to this case is also
consistent with our prior case law, as well as Board
precedent, comparing standard character marks with
design marks. See SquirtCo, 697 F.2d at 1041; see also In
re Cont’l Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB
1999) (finding that the standard character mark
CONTINENTAL GRAPHICS was similar to the regis-
tered mark CONTINENTAL containing a globe design
within a large letter “C” at the beginning of the mark).
In rejecting the “reasonable manners” test, we are not
suggesting that a standard character mark encompasses
all possible design elements of the mark. We leave for
future cases to determine the appropriate method of
comparing design marks with standard character marks.
However, while we reject the “reasonable manners” test,

3 As mentioned above, although the Board applied
the now-defunct “reasonable manners” test in this case,
that error was harmless because the Board’s finding of a
similarity between the XCEED mark and the X-Seed
Mark is supported by substantial evidence even under
that more restrictive test.
IN RE VITERRA 14

the Board’s use of the test in its analysis was at best
harmless error. The Board was careful to state that, “we
do not mean to suggest that the specific special form of
registrant’s mark in its entirety constitutes a ‘reasonable’
variation of applicant’s standard character mark.” Board
Decision, at *5. In other words, the Board did not find
that the XCEED mark could be considered to have taken
on the precise depiction shown in the cited registration,
with full color and design; it only found that the XCEED
mark could be depicted as a capital “X” followed by “ceed”
in small letters, making it similar to the X-Seed Mark.
Such a finding is not a departure from our case law and is
not as remarkable as Viterra suggests. 4
B.
Aside from the design features of the X-Seed Mark,
Viterra also argues that the Board misconstrued the
dominant portion of that mark, and that the correct
analysis would reveal that the marks are dissimilar.
When comparing the marks in this case, the Board found

4 We also are not persuaded that the Board’s deci-
sion in this case is inconsistent with its decision in In re
White Rock Distilleries, Inc., 2009 WL 4081675 (TTAB
Aug. 11, 2009) (citable as precedent). In that case, the
Board found that the standard character mark VOLTA for
vodka was not confusingly similar with a word and design
mark for wines, which depicted a design of a large vine
shoot above the words TERZA with the word VOLTA
below in smaller letters. Id., at *1. The Board found that
the standard character mark could not be extended to
cover the separate design element appearing in the regis-
trant’s mark. Id., at *2. Contrary to Viterra’s suggestion,
the Board in this case did not find that a reasonable
manner of displaying XCEED included a display with the
background dot design, as it expressly stated in the quote
above. Accordingly, the Board’s decision here is not in
conflict with White Rock.
15 IN RE VITERRA

that the literal portion of the X-Seed Mark (i.e., the words
“X-Seed”) formed the dominant portion of the registrant’s
mark. Accordingly, the Board compared the literal por-
tion of registrant’s mark, “X-Seed,” to the applicant’s
mark XCEED. Viterra argues that the dominant portion
of the X-Seed Mark actually is the stylized letter “X” and
cannot include “-Seed,” particularly because the regis-
trant used a hyphen to separate “X” from “Seed” and
disclaimed the term “Seed.” We do not agree.
Here, the design feature of the X-Seed Mark is not en-
tirely distinct from the literal portion of the mark; rather,
the color and design features are incorporated in the
letter “X” and are covered in part by the “-Seed” portion of
the mark. This is not a case, therefore, where a larger
design is separate and independent from the literal fea-
tures of the mark. The design itself is a stylized letter
that overlaps with, and is covered by, other literal por-
tions of the mark. Accordingly, the Board’s determination
that the entire literal portion “X-Seed” is the dominant
portion of the mark, and not just the stylized “X,” is
supported by substantial evidence.
The Board’s conclusion is also in line with our deci-
sions holding that the verbal portion of a word and design
mark likely will be the dominant portion. CBS, 708 F.2d
at 1581-82 (“[T]he verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it
is affixed.”). This makes sense given that the literal
component of brand names likely will appear alone when
used in text and will be spoken when requested by con-
sumers. See id. at 1582 (“This is particularly true when a
mark appears in textual material, such as catalog descrip-
tions, in which it is often impossible or impractical to
include the design feature of the mark” (footnote omit-
ted)); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593
(TTAB 2001) (“In the case of marks which consist of words
IN RE VITERRA 16

and a design, the words are normally accorded greater
weight because they would be used by purchasers to
request the goods.”); see also Alzheimer’s Found. of Am.,
Inc. v. Alzheimer’s Disease & Related Disorders Ass’n,
Inc., 796 F. Supp. 2d 458, 465 (S.D.N.Y. 2011) (“While a
composite mark (consisting of both a word element and a
design element) must be considered in its entirety,
trademark law recognizes that the word portion is often
more likely to be impressed upon a purchaser’s memory
because it is the word that purchasers use to request the
goods and/or services.”).
Although Viterra is correct that the registrant dis-
claimed exclusive rights to the term “-Seed”, we previ-
ously have found that the dominant portion of a composite
word and design mark is the literal portion, even where
the literal portion has been disclaimed. Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71 (Fed.
Cir. 1983) (finding that the term “GIANT” was the domi-
nant portion of a mark consisting of the words GIANT
HAMBURGERS with a large background design, even
though the applicant disclaimed “GIANT
HAMBURGERS.”). In addition, in the ultimate determi-
nation of similarity of the marks, the Board must consider
the X-Seed Mark in its entirety, including the disclaimed
portion. See Giant Food, 710 F.2d at 1570 (“[I]t is well
settled that the disclaimed material still forms a part of
the mark and cannot be ignored in determining likelihood
of confusion.”); see also McCarthy § 19:72 (“For purposes
of determining the likelihood of confusion of a mark with
a registered composite mark of which portions are dis-
claimed, the disclaimed matter cannot be ignored.”). As
in Giant Food, the Board accorded greater weight to the
literal portion of the mark, and we will not upset that
factual determination.
17 IN RE VITERRA

C.
The remainder of Viterra’s arguments merit little dis-
cussion. Viterra argues that XCEED and X-Seed are not
phonetic equivalents because XCEED will be pronounced
“exceed” with an emphasis on the second syllable (i.e., ik-
SEED), whereas X-Seed will be pronounced with an
emphasis on the first syllable (i.e., EKS-seed). Viterra
presented dictionary evidence to the Board to support its
contentions, but the Board made the factual finding that
“it is hard to imagine that the two marks will not sound
alike when spoken.” Board Decision, at *5. Moreover, to
the extent any minor difference in pronunciation existed,
the Board was not persuaded that “any such difference
would even be noticed by prospective purchasers when
they hear the marks.” Id. It is also true, as the Board
recognized, that there is no correct pronunciation of a
trademark, and consumers may pronounce a mark differ-
ently than intended by the brand owner. See Interlego AG
v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863
(TTAB 2002) (finding similarity between LEGO and
MEGO, despite the applicant’s contention that consumers
would pronounce MEGO as “me go”). Given that, we
think substantial evidence supports the Board’s determi-
nation that any minor differences in the sound of these
marks may go undetected by consumers and, therefore,
would not be sufficient to distinguish the marks.
Finally, Viterra contends that the marks have differ-
ent connotations because its XCEED mark will be con-
strued by customers as “exceeding” their expectations,
whereas the X-Seed Mark is subject to a variety of mean-
ings, including the roman numeral for ten, an unknown
quantity, or an abbreviation for “cross.” The Board
agreed that the meaning of registrant’s mark is less clear
than Viterra’s mark, but nonetheless concluded that “it is
reasonable that purchasers will perceive registrant’s
IN RE VITERRA 18

mark in a similar manner, that is, purchasers may give
the same meaning of superiority to registrant’s mark.”
Board Decision, at *5. Under our substantial evidence
review standard, we do not upset the Board’s finding on
this point.
II.
Viterra’s arguments on appeal focus almost exclu-
sively on the similarity of the marks at issue, but this is
just one of three DuPont factors on which the Board based
its decision. The Board also gave “heavy weight” to the
identical nature of the goods involved in this case. Id., at
*6. It is also well established that, when the goods at
issue are identical, “the degree of similarity necessary to
support a conclusion of likely confusion declines.” Cen-
tury 21, 970 F.2d at 877. In light of those considerations,
although the marks involved are not identical, any minor
differences between them are insufficient to outweigh the
remaining factors that favor refusal of the registration in
this case.
CONCLUSION
For the reasons stated above, the decision of the
Board is affirmed.
AFFIRMED