Brookwood Funding, LLC.

Trademark Trial and Appeal BoardFeb 25, 2016

No. 86162901 (T.T.A.B. Feb. 25, 2016)

This Opinion is not a Precedent of the TTAB Hearing: January 12, 2016 Mailed: February 25, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Brookwood Funding, LLC. ________ Serial No. 86162901 _______ Ryan D. Watstein and Jeffrey N. Williams of Wargo French LLP for Brookwood Funding, LLC. Thomas Young, Trademark Examining Attorney, Law Office 120 (Michael W. Baird, Managing Attorney).1 _______ Before Cataldo, Greenbaum and Heasley, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Brookwood Funding, LLC (“Applicant”) filed an application, as amended, for registration on the Principal Register of BROOKWOOD LOANS (in standard characters, “LOANS” disclaimed) as a mark for Consumer lending services in the form of online, lump-sum, unsecured loans of $5,000 or less to individual consumers, specifically excluding investment banking services and other services to corporate clients 1 The application originally was examined by another Examining Attorney, but subsequently was reassigned to the attorney whose name is shown above for preparation of the appeal brief and representation of the Office at oral hearing. Serial No. 86162901 - 2 - in International Class 36.2 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based upon likelihood of confusion with Registration No. 3275085 for the mark BROOKWOOD ASSOCIATES (in standard characters, “ASSOCIATES” disclaimed) for “investment banking services” in International Class 36.3 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We reverse the refusal to register. Evidentiary Matter Before turning to the merits of the appeal, an evidentiary matter requires our attention. Applicant attached evidence to its reply brief regarding the asserted significance of the term BROOKWOOD. Trademark Rule 2.142(d) provides that the record in the application should be complete prior to the filing of an appeal. The Board ordinarily will not consider additional evidence submitted by an applicant or examining attorney after the appeal is filed. Thus, exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. See, e.g., In 2 Application Serial No. 86162901 was filed on January 10, 2014, under Section 1(a) of the Trademark Act, based upon Applicant’s allegation of November 30, 2007 as a date of first use of the mark anywhere and in commerce. In its March 13, 2015 request for reconsideration, Applicant amended its mark from BROOKWOOD to BROOKWOOD LOANS and amended its recitation of services from “consumer lending services” to the services noted above. 3 Registration No. 3275085 issued on August 7, 2007 under Section 2(f) of the Trademark Act. Section 8 affidavit accepted. Serial No. 86162901 - 3 - re District of Columbia, 101 USPQ2d 1588, 1591-92 (TTAB 2012). On the same point, evidentiary references made in briefs but not supported by timely submissions may not be considered. See In re Procter & Gamble Company, 105 USPQ2d 1119, 1120 (TTAB 2012). We are not persuaded by Applicant’s argument that it did not previously make the evidence of record “because the Examiner never claimed below that BROOKWOOD was an arbitrary term.”4 Applicant introduced evidence directed toward other aspects of the refusal of registration with its October 1, 2014 and March 3, 2015 communications, and thus was afforded opportunities to also introduce evidence regarding the asserted significance of the involved marks. Furthermore, Applicant could have availed itself of the opportunity to request remand of the involved application after filing its appeal in order to introduce evidence on this point. See Trademark Rule 2.142(d), 37 CFR § 2.142(d). See also TBMP § 1207.02 (2015) and authorities cited therein. Applicant will not now be heard to argue that it should be allowed to introduce such evidence with its reply brief, particularly after the Examining Attorney would be afforded any opportunity to introduce evidence on this point. Similarly, we decline Applicant’s request to take judicial notice of this evidence inasmuch as, contrary to its argument, the information contained in a City of Atlanta 2013-2014 Neighborhood Directory is not 4 10 TTABVUE 12, n. 7. Citations to the briefs refer to TTABVUE, the Board’s online docket system, by page number. Citations to documents that appear solely in the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR), by page number. Serial No. 86162901 - 4 - “a commonly known fact and is not reasonably subject to dispute.”5 See TBMP § 1208.04 and authorities cited therein. Accordingly, we have not considered the evidence attached to Applicant’s reply brief or any remarks relating thereto in the reply brief. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We discuss the du Pont factors for which Applicant and the Examining Attorney have presented evidence. Similarities and Dissimilarities of the Marks We begin by comparing the two marks in their entireties and, in doing so, look to their appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). We keep in mind that, under this factor, the test is not whether the marks can be distinguished when subjected to a side-by- side comparison; “[i]nstead, it is the similarity of the general overall commercial impression engendered by the marks which must determine, due to the fallibility of memory and the consequent lack of perfect recall, whether confusion as to source or sponsorship is likely.” Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 5 Id. Serial No. 86162901 - 5 - 1741 (TTAB 1991); see also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Thus, although we place the marks alongside each other for purposes of this decision, consumers will rarely have the luxury of viewing the marks in such a manner. Here, upon evaluating the marks BROOKWOOD LOANS and BROOKWOOD ASSOCIATES, we agree with the Examining Attorney that the dominant feature of each mark is the term “BROOKWOOD.” Because this term appears first in each mark, it is most likely to be impressed in purchasers’ memories. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). As discussed above, there is no evidence properly of record to support a finding that BROOKWOOD has any meaning in relation to the respective services.6 Moreover, for source-identifying purposes, consumers will likely focus on the BROOKWOOD element in each mark in view of the fact that the additional portions in the marks, “LOANS” and “ASSOCIATES,” respectively denote the generic name of Applicant’s services and an entity designation, and thus are disclaimed. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983) (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on 6 We observe that even if Applicant’s evidence was properly of record, there is nothing to suggest that the term “BROOKWOOD” would have a different connotation as applied to Applicant’s services as opposed to Registrant’s services. Serial No. 86162901 - 6 - likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark's commercial impression”). Thus, while we do not disregard the disclaimed portions of the involved marks, we find that the identical first term, “BROOKWOOD,” is the dominant portion thereof. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant argues that the marks are not substantially similar due to the differences in the terms “LOANS” and “ASSOCIATES.” We agree with Applicant that these terms differ in appearance, sound and meaning. However, the similarity or dissimilarity of the marks is determined based on the entire marks, not just part of the marks. In re National Data Corp., 224 USPQ at 751; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). When taken as a whole, the mark BROOKWOOD LOANS and BROOKWOOD ASSOCIATES share an identical, dominant, first term followed by a generic term or entity designation with little source identifying significance. As a result, we find these Serial No. 86162901 - 7 - marks to be more similar than dissimilar in appearance, sound, connotation and overall commercial impression. Applicant further argues that “it seems there are numerous marks containing the term ‘Brookwood’ that have previously been permitted to register, including at least three marks that were registered after Registrant’s.”7 In support of this position, Applicant introduced into the record a summary of BROOKWOOD formative marks printed from the USPTO’s Trademark Electronic Search System (TESS).8 However, a mere listing of third-party marks, without any accompanying indication of the goods or services identified thereby, has virtually no probative value. See TBMP § 1208.02 and authorities cited therein. We further observe that of the 37 entries in the TESS summary, only 13 indicate that the application or registration identified thereby is live, and of those 13, only 10 identify registered marks. The expired registrations and pending and abandoned applications are of no value, even if the listing thereof contained additional information regarding, for example, the goods or services associated therewith. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of anything”), and the applications show only that they have been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003). As a result, we find insufficient evidence on this record that the term “BROOKWOOD” is weak as used in connection with banking 7 7 TTABVUE 18, n.5. 8 Applicant’s March 13, 2015 Request for Reconsideration at 54-55. Serial No. 86162901 - 8 - or loan services or that the registered mark BROOKWOOD ASSOCIATES should be afforded only a narrow scope of protection. In sum, we view the marks in their entireties and find them to be more similar than dissimilar. The fact that each mark is dominated by the same term “BROOKWOOD” simply outweighs the points of dissimilarity. In re National Data Corp., 224 USPQ at 751 (“[T]here is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). Thus, this du Pont factor weighs in favor of finding a likelihood of confusion. Relationship of the Services We turn then to the du Pont factor involving the similarity or dissimilarity of Applicant’s services and Registrant’s services. It is settled that in making our determination, we must look to the services as identified in the application vis-à-vis those recited in the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It is not necessary that the respective services be competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective services are related in some manner, or that the conditions and activities surrounding the marketing of the services are such that Serial No. 86162901 - 9 - they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). We begin our analysis by considering the services as identified. The Examining Attorney introduced into the record definitions of terms comprising the involved services.9 Applicant also introduced into the record definitions of terms comprising the involved services.10 9 October 27, 2014 Final Office Action at 25-27. 10 Applicant’s October 1, 2014 communication at 49, 68. Serial No. 86162901 - 10 - The Examining Attorney argues First, the services are similar in nature as both are financial services with a primary aim of providing solvency through cash and/or capital for immediate needs, such as a mortgage payment or business acquisition. Second, the services of the applicant and registrant are commonly provided by the same entity under the same mark and through the same trade channels.11 We note, however, that while both Applicant and Registrant provide financial services intended to secure or increase capital, Registrant’s services are provided by banks to companies seeking to acquire capital funds by means of stock or bond transfer, providing investment capital or corporate acquisition. Applicant’s Consumer lending services in the form of online, lump-sum, unsecured loans of $5,000 or less to individual consumers, specifically excluding investment banking services and other services to corporate clients on the other hand, are provided to individuals seeking up to $5000 of capital for, e.g., home or automobile purchase or home repair, or to address a personal need or financial crisis. Based upon the recitations of the services themselves and the above definitions, these services are provided to businesses on one hand and individuals 11 9 TTABVUE 10. Serial No. 86162901 - 11 - on the other, the former in the nature of securities transfer, capital investment or corporate acquisition, and the latter in the form of a lump-sum unsecured loan of up to $5000. Thus, notwithstanding that both services are, broadly speaking, financial services intended to increase capital, they are provided to different types of recipients through very different means. In support of his contention that the services are related, the Examining Attorney has introduced into the record examples from three commercial Internet websites of financial institutions to show that the same entities provide various forms of investment banking and consumer lending services.12 These are: Bank of America/Merrill Lynch offers investment banking and Bank of America, apparently a related entity, provides consumer lending services in the nature of mortgages and other home loans, credit cards and auto loans; Citibank offers various forms of business banking, as well as investing and consumer lending services in the nature of credit cards although no reference is made to investment banking services; and HSBC offers investing services and consumer lending services in the nature of mortgages, home equity loans and credit cards but similarly does not mention investment banking services. Viewing this evidence, we find it does not support the Examining Attorney’s contentions inasmuch as the second and third of the three websites do not indicate that the identified entity provides Registrant’s services, and the first website clearly 12 October 27, 2014 Final Office Action at 25-37. Serial No. 86162901 - 12 - indicates that Registrant’s services are provided by Bank of America/Merrill Lynch, which appears to be a related entity to Bank of America that provides Applicant’s services, although the nature of the relationship is not clear on the face of the evidence. The Examining Attorney further made of record the following six use-based, third-party registrations for marks reciting Registrant’s “investment banking services” as well as “consumer lending services,” which include Applicant’s more narrowly identified Consumer lending services in the form of online, lump-sum, unsecured loans of $5,000 or less to individual consumers, specifically excluding investment banking services and other services to corporate clients.13 These registrations are: Registration No. 4195133, issued to Extraco Corp. for the mark EXTRAORDINARY STARTS HERE; Registration No. 4258516, issued to BMO Harris National Association for the mark BMO HARRIS; Registration No. 4232934, issued to James L. Wyckoff, dba OutreachSpeed.com for the mark AMERICANS, REBUILDING AMERICA; Registration No. 4475774, issued to Seacoast National Bank for the mark FUEL CELL; Registration No. 4435544, issued to UBS AG Corp.14 for the mark ADVICE. BEYOND INVESTING. (“ADVICE” and “INVESTING” disclaimed); and 13 Id. at 7-24. Serial No. 86162901 - 13 - Registration No. 4533749, issued to Suffolk County National Bank for the mark SCNB. These registrations suggest that six third parties provide broadly identified consumer lending services as well as Registrant’s type of services under a single mark. See, e.g., In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217- 18 (TTAB 2001) (“The registrations show that entities have registered their marks for both television and radio broadcasting services.”) We presume that the “consumer lending services” recited in each of the above registrations includes Applicant’s more narrowly identified services; however, we note that none of these third party registrations recite Applicant’s particular services.15 These six registrations, however, are sparse evidence to support the Examining Attorney’s contention that Applicant’s unsecured loans to individuals of up to $5000 and Registrant’s investment banking services to businesses by means of stock or bond transfer, capital investment or corporate acquisition, are “commonly” provided by the same source. To be clear on this point, we are not persuaded by the precatory language “specifically excluding investment banking services and other services to corporate 14 UBS AG Corp. is a Swiss entity; however the filing basis for application underlying this registration is Section 1(a), based upon an allegation of October 2012 as a date of first use of the mark in commerce. 15 Applicant also submitted Internet website evidence with its March 13, 2015 request for reconsideration (at 28-42) suggesting that the “consumer lending services” provided by the third-party registrants does not include Applicant’s more narrowly identified services. However, we base our determination on the services as recited in the third-party registrations of record. Serial No. 86162901 - 14 - clients” added by Applicant to distinguish its services, inasmuch as it is not binding on consumers when they encounter Applicant’s mark. See In re I.Am.Symbolic, LLC, 116 USPQ2d 1406, 1410 (TTAB 2015). Such language generally is not sufficient to overcome persuasive evidence of relatedness between goods and/or services. Simply put, the Examining Attorney’s evidence is insufficient to support a finding that the services, which differ on their face as defined above, may emanate from a common source. We find, as a result, that the du Pont factor of the relatedness of the services supports a finding of no likelihood of confusion. Channels of Trade and Classes of Purchasers As discussed above, there is insufficient evidence that Applicant’s services are related to the services identified in the cited registration. Similarly, there is insufficient evidence that these services travel in the same channels of trade or may be purchased by the same classes of purchasers. Rather, we find that the services, as identified, are offered to commercial entities on one hand and individual borrowers on the other, and are rendered in different channels of trade to different consumers, thus reducing the prospect for confusion as to source. This du Pont factor also supports a finding of no likelihood of confusion. Sophistication of Purchasers Applicant argues that Registrant’s consumers are sophisticated commercial enterprises and its own consumers are also sophisticated because they are Serial No. 86162901 - 15 - “operating on a tight budget”16 and “must necessarily be discerning as to the source of the loans they seek out, as even a small difference in the terms of the loan could have a vast impact on their personal finances.”17 Even if we accept, in considering the fourth du Pont factor, Applicant’s assertion that Registrant’s services are, by their very nature, offered to sophisticated consumers, we note an absence of evidence as to the asserted sophistication of individuals seeking Applicant’s services. Furthermore, as stated by our primary reviewing court, “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. ‘Human memories even of discriminating purchasers ... are not infallible.’” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). Therefore, the fact that the consumers may exercise care before seeking at least Registrant’s services does not mean there can be no likelihood of confusion. As such, this du Pont factor appears to be neutral or to slightly favor a finding of likelihood of confusion. Actual Confusion The final du Pont factor discussed by Applicant and the Examining Attorney is that of the lack of instances of actual confusion. Applicant submitted the affidavit of its General Counsel, Mr. John McKloskey, asserting that the absence of actual confusion since 2007, particularly given that Applicant and Registrant are located 16 7 TTABVUE 22. 17 Id. Serial No. 86162901 - 16 - within 25 miles from one another, suggests no likelihood of confusion.18 However, and as pointed out by the Examining Attorney, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990). Particularly in an ex parte proceeding, Applicant's assertion of the absence of actual confusion is of little probative value in our determination on the issue of likelihood of confusion because the Board cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp., 222 USPQ 333 (TTAB 1984). Moreover, it has often been recognized that such evidence is very difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). In addition, the test under Section 2(d) is not actual confusion but likelihood of confusion. See In re Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value.”). Conclusion We have considered all of the du Pont factors for which Applicant and the Examining Attorney have introduced evidence and arguments. The rest we treat as neutral. After considering all of the evidence of record, including any evidence not specifically discussed herein, and arguments pertaining to the du Pont likelihood of confusion factors, we find the marks are similar; however, there is insufficient 18 4 TTABVUE 49-50. Serial No. 86162901 - 17 - evidence that the services, channels of trade and classes of consumers are related. In view thereof, we find that Applicant’s mark, as used in association with the services identified in the application, is not likely to cause confusion with the registered mark used in connection with the services recited in the registration.19 Decision: The refusal to register Applicant’s mark is reversed. 19 We observe, nonetheless, that on a different record, such as may be adduced in an inter partes proceeding, we may come to a different result.