Automated Securities Clearance, Ltd.

Trademark Trial and Appeal Board

Jun 4, 2002

No. 75762919 (T.T.A.B. Jun. 4, 2002)

Mailed: June 4, 2002
Hearing: Paper No. 17
April 23, 2002 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Automated Securities Clearance, Ltd.
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Serial No. 75/762,919
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Glenn A. Gundersen and Erik Bertin of Dechert for Automated
Securities Clearance, Ltd.

Charles G. Joyner, Jr., Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Applicant has filed an application to register the
mark UMA for goods ultimately amended to read “computer
software for use by securities brokers and dealers and
financial institutions in receiving, transmitting,
executing, and managing trades involving stocks, bonds,
currencies, debentures, mutual funds, futures, options,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75/762919
2
securities, and related instructional manuals” in
International Class 9.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified
goods, so resembles the registered mark UMA for “investing
the funds of others and investment management services” in
International Class 362 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, and an oral hearing was held before
this Board on April 23, 2002.
We reverse the refusal to register. Upon
consideration of the pertinent factors set forth by the
Court in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), for determining whether a
likelihood of confusion exists, we find that confusion is
not likely.
The marks are identical. Applicant’s argument that
the marks create separate commercial impressions because

1 Application Serial No. 75/762,919, filed July 28, 1999.
Applicant claimed dates of first use and first use in commerce of
June 1997 and January 1998, respectively.
2 Registration No. 1,484,602, issued April 12, 1988, to The
Prudential Insurance Company of America; Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed date of
first use is November 13, 1986.
Ser. No. 75/762919
3
the letters “UMA” stand for different words in applicant’s
and registrant’s marks (“Universal Market Access” and
“Union Mortgage Account,” respectively) is not relevant in
this appeal which deals only with the issue of the
registrability of the marks ass applied for and registered.
Turning to the involved goods and services, the Board
must determine the issue of likelihood of confusion on the
basis of the goods and/or services as identified in the
application and the registration. See Octocom Systems Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
The Examining Attorney specifically contends that “the
goods and services are closely related because it is
extremely common in this industry for companies too [sic]
provide both investing services for the benefit of its
[sic] clients as well as investment and trade-related
software” (Final Office action, p. 2); and that “inasmuch
as the applicant’s computer software is related to the
provision of investment management services as well as
investing the funds of others, the goods and services are
exceedingly intertwined.” (Brief, p. 5.) In support of
his position, the Examining Attorney submitted photocopies
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of 14 third-party registrations to demonstrate that
computer software which performs financial functions and
financial services commonly emanate from the same source.
Applicant argues that the Examining Attorney
mischaracterizes applicant’s goods by broadly referring to
them as “investment and trade-related software” when in
fact, and as identified, it is clear that applicant’s
computer software is used to process trades of stocks,
bonds and other securities; that trade-related software and
investment management software are not synonymous; and that
applicant seeks registration only for software used by
brokerage and trading houses in the mechanics of the
trading of various securities. Applicant submitted
photocopies of printouts from its website describing
applicant’s product, and photocopies of articles retrieved
from the Nexis database about the product.
Having carefully reviewed the evidence, we conclude
that the Examining Attorney has not made a prima facie
showing that these goods and services are related. Nine of
the third-party registrations submitted by the Examining
Attorney issued on the basis of foreign registrations
(Section 44 of the Trademark Act) rather than on use in
commerce, and therefore are not indicative of a common
source in the United States of the goods and services
Ser. No. 75/762919
5
identified therein. See In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467, footnote 6 (TTAB 1988). The remainder of
these third-party registrations (with one exception which
is discussed below) do not include both securities trading
software for use by securities brokers and dealers, on the
one hand, and investment management services, on the other.
Rather, they generally include broader categories such as
“computer software for investment management” and
“investment consultation” (Registration No. 2,401,026);
“computer software for use in the analysis of financial and
investment management information” and “investment
management services” (Registration No. 2,003,089); and
“computer software for use in retirement planning” and
“investment management services” (Registration No.
2,316,014).
The most pertinent third-party registration submitted
by the Examining Attorney does include “computer software
for use in the field of securities trading...” and
“...financial investment and management services...”
(Registration No. 2,391,318). However, this single
registration is insufficient evidence to establish either
that the goods and services in the case now before this
Board routinely originate from a single source or that
there is a natural business expansion from investing the
Ser. No. 75/762919
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funds of others and investment management services to
selling computer software used by securities brokers and
dealers to transact various securities trades.
Applicant’s identification of goods refers to
financial institutions and various traded securities, but
it does not necessarily follow that all investment
management services are related thereto. The Examining
Attorney’s statement that “both the Applicant and
Registrant are providing Investment management – the
Applicant in the form of a computer software program and
the Registrant in the form of services” (brief, p. 9) is
simply unsupported in this record. To the contrary, both
applicant’s identification of goods and the evidence
submitted by applicant regarding its goods clearly indicate
that applicant’s goods are not used for investment
management, but rather are for carrying out trades of
securities. We disagree with the Examining Attorney’s
contention that the registrant’s identification is very
broad, and “it is presumed that the Registrant’s services
include the specific functions provided by the Applicant’s
computer software program.” (Brief, p. 7.) We are not
convinced that “investing the funds of others and
investment management services” encompasses computer
Ser. No. 75/762919
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software used by securities brokers and dealers to execute
trades.
Regarding the channels of trade, the record is devoid
of evidence that these differing goods and services would
be sold through similar channels of trade. The mere fact
that the goods and services are in the very broad field of
investing does not establish similar channels of trade.
Applicant’s goods, as is clear from the identification
of goods, are marketed to securities trading organizations
for use by brokers and dealers and financial institutions
in executing securities trades. That is, applicant’s
specialized computer software is marketed to information
technology professionals at financial institutions, who are
a sophisticated, discerning clientele. Registrant’s
services of investing the funds of others and investment
management services are presumably offered to those with
money to invest, which includes the general public.
However, the limitations in applicant’s goods, as
identified, are significant restrictions as to the
purchasers and channels of trade. Simply put, there is no
showing in this record of who would be confused by the use
of the mark UMA on these divergent goods and services.
The sophistication of the purchasers of applicant’s
goods and the high degree of care taken in the purchasing
Ser. No. 75/762919
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decision relating to either applicant’s goods and/or
registrant’s services are significant in this case. Any
person deciding to invest his or her money and seeking the
services of an investment management company is not likely
to do so on impulse or without careful consideration. In
fact, by definition, these consumers are seeking the
assistance of professional investment advisors. Further,
the specific purchasers of applicant’s goods are
information technology professionals who purchase
applicant’s software on behalf of large financial
institutions to execute trades. Although it is settled
that even sophisticated purchasers are not immune from
source confusion, in the present case, we are of the
opinion that the circumstances surrounding the marketing
and purchase of the respective goods and services are such
as to minimize or eliminate any possible likelihood of
confusion.
Applicant has argued that these goods and services, as
identified, are not related and are sold through differing
channels of trade to different purchasers. The evidentiary
record furnished by the Examining Attorney is not
sufficiently probative to lead us to conclude that the
contemporaneous use of the mark UMA by registrant for
investing the funds of others and investment management
Ser. No. 75/762919
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services and applicant’s UMA mark for its computer software
for brokers and dealers to transact securities trades is
likely to cause confusion. The dissimilarities in the
goods and services, as identified, are such that they would
not be expected to emanate from the same providers, would
not normally travel through the same trade channels, and
would not normally be provided to the same purchasers. See
e.g., General Electric Co. v. Graham Magnetic’s Inc., 197
USPQ 690, 694 (TTAB 1977); and Harvey Hubbell Inc. v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975). Cf. The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991).
Decision: The refusal to register under Section 2(d)
is reversed.