671 F.3d 1358 (Fed. Cir. 2012)
Why a standard-character mark is not tied to any one font, style, size, or color — and how In re Viterra (XCEED over X-SEED) means examiners compare it across the variations it could take. The holding, the marks prong, how to cite it, and its limits.
The 30-second version
In 2008, the agricultural firm Viterra applied to register a single word for its seed line: XCEED, in plain standard characters. The examining attorney found a problem already on the register — X-Seed, a word-plus-design mark registered for agricultural seeds, with the descriptive 'SEED' disclaimed and color claimed. Same Class 31, and goods the Board would treat as legally identical. The refusal came down under Section 2(d).
Viterra made a plausible-sounding argument. Its mark, it said, was just the letters XCEED in ordinary type — it should not be charged with the cited mark's distinctive design and color, and besides, XCEED and X-Seed don't sound or read alike, and they mean different things. The older 'reasonable manners' rule had long let the Board cabin a standard-character mark to the depictions it would realistically use, and on appeal Viterra argued that rule still governed ex parte examination. So Viterra leaned on appearance, sound, and connotation.
The Federal Circuit rejected it. A standard-character registration, it held, is not tied to any particular font, style, size, or color — which means the mark must be evaluated across the range of forms it could take, not just the one the applicant has in mind. Compared that way, XCEED could be depicted as a capital 'X' followed by 'ceed,' resembling the cited mark's format; read aloud, the two sounded alike; and both played on the laudatory word 'exceed.' The court affirmed the refusal.
X-Seed, Inc. secures U.S. Reg. No. 3,339,424 (issued Nov. 20, 2007 on a December 2005 application, serial 78776043) for a word-plus-design X-Seed mark for 'agricultural seeds' in Class 31, with 'SEED' disclaimed and the colors black, red, and gray claimed. The registration is later assigned to DLF Pickseed USA, Inc.
Viterra Inc. files an intent-to-use application (Serial 77608885) on Nov. 6, 2008 to register XCEED in standard characters for 'agricultural seed' in Class 31.
The examining attorney refuses under Section 2(d) over the cited X-Seed registration — identical goods, presumed-overlapping trade channels, and marks found to be phonetic equivalents and visually similar. The refusal is made final.
Viterra appeals to the TTAB, arguing the marks differ in appearance, sound, and connotation. Applying its 'reasonable manners' standard, the Board nonetheless affirms — giving 'heavy weight' to the identical goods and finding the marks similar in sound and meaning.
On appeal the court extends Citigroup to ex parte examination, rejecting the 'reasonable manners' limitation on standard-character marks, and affirms the §2(d) refusal. It holds the Board's use of the older test was at worst harmless error.
With the refusal affirmed, Viterra's intent-to-use application goes abandoned; the XCEED record is now dead.
Put yourself in Viterra's shoes — the argument feels intuitive. 'Our mark is just the word XCEED in plain type. The cited mark has a stylized design and a color claim. Why should we be saddled with their look?' For years there was real support for that instinct: under the older 'reasonable manners' approach, a standard-character applicant could argue that its mark should be tested only in the depictions it would plausibly use, keeping the comparison narrow. Critically, the Board here actually applied that more-favorable test — and still found confusion. Viterra's appeal argued that 'reasonable manners' survived in ex parte examination even after Citigroup discarded it in inter partes cases. The trap is twofold. First, the Federal Circuit extended Citigroup to ex parte examination, so a standard-character registration claims the words themselves, untethered from any font, style, size, or color — and the broader rule only made the refusal harder to attack. Second, even the narrow comparison the Board ran was enough: XCEED could be shown as a capital 'X' followed by 'ceed,' resembling the cited format. Once that is true, the design-and-color differences Viterra was counting on largely fall out of the picture, and what's left is two close-sounding marks that both play on 'exceed' for legally identical goods.
Prong 1 — the marks
Similarity of the marks — in sound, appearance, meaning, and commercial impression. For a standard-character mark this similarity is judged across the font, style, size, and color variations the registration would cover, not just the applicant's chosen depiction — though the court was explicit that a standard-character mark does NOT thereby encompass all possible design elements, and it left the design-comparison method for future cases. Here the court found the marks similar in sound (phonetic equivalents) and in connotation (both a 'play on' the laudatory word 'exceed'), and that the cited mark's literal portion, not its design, was dominant.
Prong 2 — the goods
Relatedness of the goods or services — here uncontested. Both marks covered agricultural seed in Class 31; Viterra conceded the goods were identical, and the Board gave that identity 'heavy weight.' Because neither identification was restricted, the Board also presumed the goods travel in the same trade channels to the same classes of purchasers — so the case turned almost entirely on the marks.
The two 'prongs' are a teaching shorthand: §2(d) is formally the 13-factor DuPont balancing test, and these are simply the factors that usually dominate. Viterra is a marks-prong case about scope — specifically how broadly a standard-character mark must be read. The standard-character rule the court applied comes from Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344 (Fed. Cir. 2011), which Viterra quotes and extends to ex parte examination; the court also relied on the principle that there is no correct pronunciation of a trademark, see Interlego AG v. Abrams/Gentile Entm't Inc., 63 USPQ2d 1862 (TTAB 2002) (LEGO vs. MEGO).
These are the two factors that usually decide §2(d), but the governing standard is the full 13-factor DuPont likelihood-of-confusion test — any factor can control on the right record.
Standard-character format defines the scope
Because XCEED was registered in standard characters, the court treated it as claiming the word itself in any reasonable font, style, size, and color — so it could be compared against the cited mark across those variations rather than confined to one stylization. The court cautioned, though, that this does not mean a standard-character mark encompasses every design element of another mark.
The cited mark's literal portion dominates
The Board found that X-Seed's word element, not its design, was the dominant portion of the composite mark — the verbal portion is the one most likely to indicate origin and to be spoken when consumers request the goods. That is the doctrinal hinge that let the design and color features be given less weight, even though 'SEED' was disclaimed.
Sound, with no fixed pronunciation
There is no correct pronunciation of a trademark, so the Board could credit that consumers might say XCEED and X-Seed alike — it found it 'hard to imagine' the two would not sound alike. Any minor differences in sound, the court noted, may simply go undetected by ordinary buyers (citing Interlego, LEGO vs. MEGO).
Shared meaning — both play on 'exceed'
The Board found, and the Federal Circuit declined to disturb, that both marks would be perceived as a play on the commonly understood word 'exceed,' conveying the same laudatory suggestion of superiority. Connotation was a basis FOR similarity here, not an open avenue to distinguish.
Identical goods amplify small overlaps
Viterra conceded the goods were identical, and the Board gave that 'heavy weight.' Because the identifications were unrestricted, the Board also presumed overlapping trade channels and the same classes of purchasers. When the goods are identical, a lesser degree of mark similarity supports confusion — so the marks' minor differences had little room to save the application.
Design and color could not rescue the gap
The Board did not need to treat XCEED as taking on the cited mark's full color-and-design depiction; it was enough that XCEED could appear as a capital 'X' followed by lowercase 'ceed,' resembling the cited mark's format. Read that way — and with the cited mark's literal portion dominant — the design and color differences Viterra pressed could not outweigh the identical goods and the similar sound and meaning.
“The T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font, style, size and color and the other mark.”
The rule to memorize
A standard-character mark is not limited to any font, style, size, or color — it must be compared against the cited mark across the depictions it could take, in ex parte examination as well as inter partes. You cannot narrow a standard-character mark to your preferred logo to manufacture a difference, and design or color features in the cited mark may not be enough to overcome similarity in the words, their sound, and their meaning — especially where the cited mark's literal portion is dominant. Shorthand: standard characters claim the word in every reasonable form, so the comparison is broad, not pinned to one look.
The Examining Attorney's comparison rests on a single depiction of the marks, but where a mark is registered in standard characters, the marks must be compared across the variations of font, style, size, and color the registration would cover. See In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1353 (Fed. Cir. 2011). Even read across that full range, Applicant's mark differs from the cited mark in [the dominant literal element / sound] for the reasons set out above — a genuinely different word that does not resolve to the cited mark's format or meaning, unlike the near-equivalent in Viterra. Those differences are not the kind of incidental variation Viterra found insufficient.
Viterra usually cuts against the applicant, so cite it carefully. Use it defensively — to acknowledge the broad standard-character scope and then show your difference survives even at that breadth. The durable distinguishing path is a genuinely different WORD or sound, not a near-homophone. Do NOT lean on a 'different connotation' argument as if Viterra supports it: the court there found connotation SIMILAR (both marks play on 'exceed'), so a meaning argument must overcome that holding, not rely on the case. Likewise, do not lean on your own preferred stylization or on the cited mark's design — Viterra forecloses both, and it discounts the design where the cited mark's literal portion is dominant. If the goods are also unrelated, pair it with a relatedness argument under separate authority — Viterra won't help you there.
Of 211 applications that cited this case against a §2(d) likelihood of confusion refusal, 38 have reached a final outcome — 34.2% registered, below the 37.6% §2(d) baseline (N=10,097).
Applications citing Viterra register at 34.2% — just below the 37.6% §2(d) baseline. That fits its role: Viterra is the authority an examining attorney reaches for to defeat a standard-character applicant's 'our depiction differs' argument, so the citation tends to mark a contested similarity refusal rather than an easy win. The citation does not decide the case; whether the marks are genuinely distinguishable across their reasonable depictions does.
These rates are correlational, not causal. Citing a case does not “win” it — a response that cites a precedent often faced a harder, more contested refusal to begin with. Every rate is shown against its refusal-ground baseline and the number of terminal (finally-decided) applications it is based on; pending applications are excluded. This is a descriptive picture of how the profession argues, not legal advice.
Viterra Inc. · Serial 77608885
The refused intent-to-use application — XCEED in standard characters (drawing code 4) for 'agricultural seed' in Class 31. Now dead, abandoned after the §2(d) refusal was affirmed. Its standard-character format is the crux of the case.
DLF PICKSEED USA, INC. · Serial 78776043
The cited registration — U.S. Reg. No. 3,339,424, a word-plus-design X-Seed mark (drawing code 3) for 'agricultural seeds' in Class 31, with 'SEED' disclaimed and the colors black, red, and gray claimed. Registered to X-Seed, Inc. (the owner of record throughout the 2008–2012 prosecution and appeal) and assigned to DLF Pickseed USA, Inc. only after the 2012 decision — so DLF was not the cited registrant during the appeal.
Live USPTO records in GleanMark — click through for full prosecution history.
The complete TTAB record behind this decision — every filing and exhibit, the full timeline, and a one-click AI summary.
Open proceeding 77608885Viterra's XCEED never made it to the register — the application went abandoned once the refusal was affirmed in 2012, and the record sits dead today. The cited X-Seed registration eventually passed to DLF Pickseed USA after the decision and is no longer in active use. Both marks are gone, but the rule the case fixed is very much alive: file in standard characters and you claim the word in every form it could wear — a breadth that is a gift when you own the senior mark and a trap when you are the one trying to register around it. And Viterra adds a quieter lesson — when sound and meaning line up against you, no amount of standard-character argument about the other side's logo will save the day.
Is a standard character trademark limited to a specific font?
No. A mark registered in standard characters is not tied to any particular font, style, size, or color. In re Viterra Inc. (Fed. Cir. 2012) holds that such a mark must be compared against other marks across the depictions it could take — so you cannot narrow it to your preferred logo to argue the marks look different. The court did caution, though, that a standard-character mark does not thereby encompass every possible design element of another mark.
What did In re Viterra hold about likelihood of confusion?
The Federal Circuit affirmed a Section 2(d) refusal of XCEED (standard characters) over a registered X-Seed word-plus-design mark, both for agricultural seed. Because XCEED was in standard characters, the Board could compare it across font and style variations — it could appear as a capital 'X' followed by 'ceed,' resembling the cited format. With the goods identical and the marks similar in sound and in meaning (both a play on 'exceed'), the marks' minor differences were not enough to outweigh the other DuPont factors.
Does the 'reasonable manners' rule still apply to standard character marks?
No — and Viterra is the case that closed the last gap. Following Citigroup Inc. v. Capital City Bank Group (Fed. Cir. 2011), which discarded 'reasonable manners' in inter partes proceedings, Viterra extended that holding to ex parte examination, rejecting the argument that the older test survived there. Instead of asking which depictions are reasonable and analyzing only those, the Board uses the DuPont factors across the full range of font, style, size, and color a standard-character mark could take.
In re E.I. du Pont de Nemours & Co.
The §2(d) factors · 26.6% registered
Juice Generation, Inc. v. GS Enterprises LLC
Crowded field of weak marks · 22.6% registered
In re i.am.symbolic, llc
Marks compared in their entireties · 32.1% registered
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Foreign equivalents & fame · 41.7% registered
Jack Wolfskin Ausrüstung für Draußen GmbH v. New Millennium Sports, S.L.U.
Crowded field; weak design elements · 26.7% registered
Coach Services, Inc. v. Triumph Learning LLC
Fame as a §2(d) factor · 33% registered
In re Gyulay
Mere descriptiveness · 53.6% registered
In re Abcor Development Corp.
Descriptiveness standard · 61.7% registered
In re Thor Tech, Inc.
Goods-relatedness coexistence · 21.4% registered
In re Shell Oil Co.
Relatedness of goods and services · 23.1% registered
In re National Data Corp.
Dominant feature; disclaimed matter · 41.1% registered
In re Detroit Athletic Co.
First-word dominance; similarity · 40.6% registered
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
Least-sophisticated purchaser · 42.9% registered
In re Bayer Aktiengesellschaft
Descriptiveness; internet evidence · 54.2% registered
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