Crossroads LLC

Trademark Trial and Appeal Board

Dec 12, 2005

No. 78405956 (T.T.A.B. Dec. 12, 2005)

Mailed: December 12, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crossroads LLC
________

Serial No. 76561691
Serial No. 78405956
_______

Julie L. Dalke of Latham & Watkins LLP for Crossroads LLC.

Pamela N. Hirschman and Tasneem Hussain,1 Trademark
Examining Attorneys, Law Office 105 (Thomas G. Howell,
Managing Attorney).
_______

Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Crossroads LLC (a California limited liability
company) has filed the two applications involved herein to
register on the Principal Register the marks XROADS

1 Gretta Yao, Trademark Examining Attorney, Law Office 105, wrote
the first Office action and the Final Office action in both
applications. However, Pamela N. Hirschman wrote the appeal
brief in application Serial No. 76561691, and Tasneem Hussain
wrote the appeal brief in application Serial No. 78405956. For
purposes of simplicity, the Trademark Examining Attorneys will be
referred to in this decision by the singular “Trademark Examining
Attorney.”
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76561691 and 78405956
2
CONSULTING (“consulting” disclaimed) (Serial No. 76561691
filed November 10, 2003) and XROADS SOLUTIONS GROUP
(“solutions group” disclaimed) (Serial No. 78405956 filed
April 21, 2004), both for services amended to read as
follows: “business consulting services; business
consulting related to operations management services” in
International Class 35; and “financial analysis and
consulting” in International Class 36. Each application is
based on applicant’s assertion of a bona fide intention to
use the respective mark in commerce.
The Examining Attorney has refused registration in
each application for both classes of services under Section
2(d) of the Trademark Act, 15 U.S.C. §§1052(d), on the
ground that applicant’s marks, XROADS CONSULTING and XROADS
SOLUTIONS GROUP, when used in connection with applicant’s
identified services, would so resemble the registered mark
CROSSROADS FINANCIAL GROUP (“financial group” disclaimed)
for “insurance brokerage in the field of life, health and
annuity insurance products” in International Class 36,2 as
to be likely to cause confusion, mistake or deception.

2 Registration No. 2734880, issued July 8, 2003.
Ser. Nos. 76561691 and 78405956
3
Applicant appealed in each application to the Board.
Briefs have been filed, and applicant did not request an
oral hearing.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. We
specifically note that the records in the two applications
are virtually identical. Thus, we have issued this single
opinion.
Preliminarily, we will determine two evidentiary
matters. In each application applicant submitted new
evidence in and with its appeal brief. Also, contained
within each appeal brief (p. 18), applicant requested that
the Board reverse the Examining Attorney’s refusal to
register, or, alternatively, remand the application for
reconsideration by the Examining Attorney. The Board sent
the applications files to the Examining Attorney for
preparation of the appeal briefs. The Examining Attorney,
in each application, objected to applicant’s inclusion of
new evidence at the appeal brief stage. Applicant could
have requested a remand under Trademark Rule 2.142(d), but
chose not to do so until the appeal brief stage. The
Examining Attorney’s objections are well-taken as the
Ser. Nos. 76561691 and 78405956
4
evidence is untimely under Trademark Rule 2.142(d).
Accordingly, the objections are sustained. The new
evidence submitted by applicant for the first time in each
appeal brief has not been considered herein. We add,
however, that even if considered, the new evidence would
not alter our decision herein.
Applicant’s alternative requests that the
applications(s) be remanded to the Examining Attorney for
reconsideration are denied. If applicant wished to
introduce additional evidence after it had appealed, it
should have filed a separate written request to do so in
each application. See TBMP §1207.02 (2d ed. rev. 2004).
However, applicant did not do so. Rather, applicant’s
requests are contained within the narrative of the briefs
on the cases (p. 18). When a request for remand is not
made by separate notice, it is administratively extremely
difficult, if not impossible, for the Board to note the
request, and take timely action thereon. The
administrative difficulties arise whether an applicant
files paper documents or electronic submissions to the
Board.
Finally, in application Serial No. 76561691, the
Examining Attorney requested in her brief (footnote 1) that
the Board take judicial notice of the fact that “x” is
Ser. Nos. 76561691 and 78405956
5
commonly used to mean “cross,” as established by her
attachment from the Acronym Dictionary. The Examining
Attorney’s request for judicial notice of this fact is
granted. See TBMP §704.12 (2d ed. rev. 2004).
We turn now to the merits of the refusal to register
in each of these two applications. Our determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See 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). In any likelihood
of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Turning first to a consideration of the respective
services, it is well settled that goods and/or services
need not be identical or even competitive to support a
finding of likelihood of confusion; it being sufficient,
instead, that the goods and/or services are related in some
manner or that the circumstances surrounding their
Ser. Nos. 76561691 and 78405956
6
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992);
and In re International Telephone and Telegraph Corp., 197
USPQ 910 (TTAB 1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the cited registration(s). See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As the Court of
Appeals for the Federal Circuit stated in Octocom, supra,
16 USPQ2d at 1787:
The authority is legion that the
question of the registrability of an
applicant’s mark must be decided on the
basis of the identification of goods
[or services] set forth in the
application regardless of what the
record may reveal as to the particular
Ser. Nos. 76561691 and 78405956
7
nature of applicant’s goods [or
services], the particular channels of
trade or the class of purchasers to
which sales of the goods [or services]
are directed.

And later the Court reiterated in Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000):
Proceedings before the Board are
concerned with registrability and not
use of a mark. Accordingly, the
identification of goods/services
statement in the registration, not the
goods/services actually used by the
registrant, frames the issue.

Applicant argues that there is no likelihood of
confusion “because the services [of applicant and the cited
registrant] are not identical nor related” (briefs, p. 12);
that applicant’s services and the cited registrant’s
services “might be characterized as ‘financial-related’”
(briefs, p. 12 and p. 13, respectively), but that even if
they are in the same general category, it does not
automatically follow that they are related; and that even
if one considers the normal field of expansion for
registrant’s services, “Applicant’s services are not
confusingly similar to [registrant’s] services” (briefs, p.
12.)
The Examining Attorney argues that the issue is not
likelihood of confusion between the services, but rather
whether there is a likelihood of confusion as to the source
Ser. Nos. 76561691 and 78405956
8
of the services; that here the involved services are all
financial services; that courts have held insurance related
services are “related” and “complementary” to non-insurance
financial services; that registrant’s normal field of
expansion must be considered; and that consumers would
believe applicant’s services (business consulting and
financial analysis) are within that zone of expansion
because it is extremely common for the same source to
provide both insurance brokerage services and business and
financial consulting services.
The Examining Attorney submitted printouts of numerous
third-party registrations, based on use in commerce, to
show that the identified services of applicant and
registrant may emanate from a single source and be offered
under the same mark. See, for example, Registration No.
2902461 for, inter alia, “business information management
on the subject of investments,” “business research and
surveys,” “financial analysis and consultation,” “financial
management,” “financial planning” and “insurance brokerage
services”; Registration No. 2874225 for, inter alia,
“financial analysis and consultation,” “financial
management,” “financial planning” and “insurance brokerage,
consultation, subrogation and actuarial services in the
fields of life, health, accident, fire, …”; Registration
Ser. Nos. 76561691 and 78405956
9
No. 2858834 for, inter alia, “financial analysis and
consultation,” “financial management,” “financial planning”
and “insurance brokerage”; Registration No. 2886237 for,
inter alia, “financial analysis,” “financial management,”
“financial planning” and “insurance brokerage services”;
and Registration No. 2830379 for, inter alia, “financial
planning and financial consulting” and “insurance brokerage
services.”
When considering the third-party registrations
submitted by the Examining Attorneys, we are aware that
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them. Such third-party registrations nevertheless have
some probative value to the extent they may serve to
suggest that such services are of a type which emanates
from the same source. See In re Infinity Broadcasting
Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Purchasers aware of registrant’s insurance brokerage
services in the field of life, health and annuities, who
then encounter applicant’s business consulting services and
its financial analysis and consulting services, would be
Ser. Nos. 76561691 and 78405956
10
likely to believe that, if offered under the same or
similar marks, applicant’s services emanate from or are
sponsored by or affiliated with registrant.
When the respective services are compared in light of
the legal principles cited above, we find that applicant’s
business consulting services and financial analysis
services and registrant’s insurance brokerage services are
related within the meaning of the Trademark Act.
As our primary reviewing Court stated in Recot Inc. v.
M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898 (Fed. Cir.
2000): “Even if the goods [or services] in question are
different from, and thus not related to, one another in
kind, the same goods [or services] can be related in the
mind of the consuming public as to the origin of the goods
[or services]. It is this sense of relatedness that
matters in the likelihood of confusion analysis.” The same
Court reiterated in the case of Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) as follows: “Even if the goods and
services in question are not identical, the consuming
public may perceive them as related enough to cause
confusion about the source or origin of the goods and
services.”
Ser. Nos. 76561691 and 78405956
11
Applicant argues that the trade channels of the
respective services are “entirely different” as shown by
applicant’s and registrant’s websites (briefs, p. 13); and
that the purchasers are sophisticated, careful consumers.
However, as identified, there are no restrictions or
limitations in either applicant’s identifications of
services or in registrant’s identification of services as
to trade channels. We agree with the Examining Attorney
that applicant cannot place limitations on registrant’s and
its own unrestricted identifications of services. We are
not persuaded by applicant’s argument that the respective
trade channels are “entirely different.”
Further, there is nothing in the identifications of
services of either applicant or registrant which limits the
purchasers of these services. Therefore, we must presume
in this administrative proceeding that the involved
services are offered to all the usual classes of
purchasers, which could include myriad business entities as
well as individuals. See Octocom Systems Inc. v. Houston
Computers Services Inc., supra; and Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, supra.
We find that the channels of trade and the classes of
purchasers are the same or are, at least, overlapping.
Ser. Nos. 76561691 and 78405956
12
Applicant argues that the purchasers of both
applicant’s and registrant’s services are sophisticated and
would make careful purchasing decisions. The Board will
assume that purchasers of business consulting services,
financial analysis and consulting services and insurance
brokerage services would exercise some degree of care and
possible sophistication in purchasing. However, assuming
sophistication of and care taken by the purchasers of these
services, “even careful purchasers are not immune from
source confusion.” In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999). See also, Wincharger Corp.
v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and
In re Decombe, 9 USPQ2d 1812 (TTAB 1988). That is, even
sophisticated purchasers of these related services are
likely to believe that the services emanate from the same
source, when offered under similar marks. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1841-1842 (Fed. Cir. 1990); and Aries Systems
Corp. v. World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB
1992).
We consider next the marks in terms of their
similarities and dissimilarities as to sound, appearance,
connotation and commercial impression. It is well settled
that marks must be considered in their entireties because
Ser. Nos. 76561691 and 78405956
13
the commercial impression of a mark on a consumer is
created by the mark as a whole, not by its component parts.
This principle is based on the common sense observation
that the impression is created by the purchaser’s cursory
reaction to a mark in the marketplace, not from a
meticulous comparison of it to others to assess possible
legal differences or similarities. See 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:41 (4th ed. 2005). See also, Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255 (TTAB 1980). The proper
test in determining likelihood of confusion does not
involve a side-by-side comparison of the marks, but rather
must be based on the overall similarities and
dissimilarities engendered by the involved marks.
Applicant argues that the visual differences between
the registered mark and each of applicant’s marks outweigh
the phonetic similarities; that applicant’s marks each use
“a distinctive ‘x’ as a symbol to denote the word ‘cross,’
invoking in consumers’ minds the contemporary, state-of-
the-art ‘cutting edge’ image advanced in such cultural
icons as Generation X, ESPN’s XGames,…” (briefs, p. 7);
that considered in their entireties, each of applicant’s
marks and the registered mark share only the suffix
“roads”; that the overall commercial impression of
Ser. Nos. 76561691 and 78405956
14
applicant’s marks is “completely different” from that
created by the registered mark (briefs, p. 8); and that
“commercial impression is sometimes viewed as a separate
[du Pont] factor, but overall is more appropriately viewed
as a summation of the sound, appearance, and meaning
factors.” 3 (Briefs, p. 8.)
The Examining Attorney argues that the first word in
each of the involved marks is XROADS or CROSSROADS, and
that it is frequently the first word or portion of a mark
that is most likely impressed upon the minds of consumers;
that applicant acknowledges that the “X” in its marks
refers to “CROSS” and the Acronym Dictionary definitions of
“x” show that consumers would perceive it as such; that the
words XROADS and CROSSROADS are phonetic equivalents and
would be the same when spoken; that the added words after
XROADS or CROSSROADS in each of the involved marks
(“consulting,” “solutions group” and “financial group”) are
descriptive and have all been disclaimed; that the dominant
feature of each mark is the word XROADS or CROSSROADS; and
that, when considered in their entireties, applicant’s

3 Regarding how the first du Pont factor is to be interpreted,
see Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Ser. Nos. 76561691 and 78405956
15
marks, XROADS CONSULTING and XROADS SOLUTIONS GROUP, are
similar to registrant’s mark, CROSSROADS FINANCIAL GROUP.
It is well settled that marks must be considered in
their entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing Court has held
that in articulating reasons for reaching a conclusion on
the question 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 or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Cunningham v. Laser
Golf Corp., supra, 55 USPQ2d at 1845; Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); and In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
We agree with the Examining Attorney that the dominant
feature in all three involved marks is XROADS or
CROSSROADS. It is often the first term or portion of a
mark which is most likely to be impressed upon the mind of
a purchaser and be remembered by the purchaser. See Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988).
In all of the marks, the additional wording is
descriptive in relation to the identified services and has
Ser. Nos. 76561691 and 78405956
16
been disclaimed. The descriptive words, while not ignored
in our consideration, are nonetheless of less trademark
significance to consumers. Further, applicant’s mark
XROADS SOLUTIONS GROUP and the mark in the cited
registration CROSSROADS FINANCIAL GROUP share not only the
XROADS / CROSSROADS feature, but they also end with the
word GROUP.
The descriptive terms in each mark do not provide
sufficient differences to create separate and distinct
commercial impressions. See In re Dixie Restaurants Inc.,
supra. It is the dominant word, XROADS or CROSSROADS, not
the generic/descriptive words “consulting” and “solutions
group” in applicant’s mark and “financial group” in
registrant’s mark, that would be impressed into the minds
of consumers.
Moreover, the differences in the marks may not be
recalled by purchasers seeing the marks at separate times.
The emphasis in determining likelihood of confusion, as
indicated earlier, is not on a side-by-side comparison of
the marks, but rather must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of the many trademarks
encountered; that is, the purchaser’s fallibility of memory
over a period of time must be kept in mind. See Grandpa
Ser. Nos. 76561691 and 78405956
17
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573 (CCPA 1973); and Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d
(Fed. Cir., June 5, 1992).
The connotation of the word XROADS / CROSSROADS (i.e.,
a place where two roads intersect or a crucial place) is
the same for all three of the involved marks. While the
other terms are part of the involved marks, as explained
previously, they are not dominant nor particularly
memorable to consumers (e.g., “consulting” for consulting
services, “solutions group” for business management and
financial analysis and consulting services and “financial
group” for financial services).
We find that the mark in the cited registration vis-a-
vis each of applicant’s marks, when all considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression. See Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin, supra; Cunningham v. Laser Golf
Corp., supra; and In re Azteca Restaurant Enterprises Inc.,
50 USPQ2d 1209 (TTAB 1999).
Applicant argues that “CROSSROAD-Containing Marks
Already Coexist in Class 36 For Similar Services” (briefs,
p. 16); and that a search of “crossroads financial” on the
Internet revealed numerous hits therefor. However, as
Ser. Nos. 76561691 and 78405956
18
explained previously herein, applicant’s asserted evidence
on this du Pont factor was not timely made of record and
was excluded earlier in this decision.
The record does include one third-party registration
which was cited by the Examining Attorney under Section
2(d), even though she later withdrew the refusal based
thereon. That cited registration, Registration No.
2214154, issued December 29, 1998 for the mark “CROSSROADS”
for “investment advisory services and investment management
services” in International Class 36. Applicant submitted a
written consent agreement between applicant and the owner
of Registration No. 2214154. The Examining Attorney
accepted the agreement whereby that registrant consented to
applicant’s “use and registration” of its marks XROADS
CONSULTING and XROADS SOLUTIONS GROUP.
In any event, as often noted by the Board and the
Courts, each case must be decided on its own merits. The
determination of registrability of a mark in another case
cannot control the merits in the case now before us. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). See also, In re Kent-Gamebore
Corp., 59 USPQ2d 1373 (TTAB 2001); and In re Wilson, 57
USPQ2d 1863 (TTAB 2001).
Ser. Nos. 76561691 and 78405956
19
Even if applicant had shown that the mark in the cited
registration is weak (which applicant has not done), such
marks are still entitled to protection against registration
by a subsequent user of the same or similar mark for the
same or related goods or services. See Hollister Inc. v.
Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976). Registrant’s
ownership of its registration gives it the exclusive right
to use the registered mark in connection with the services
specified in the certificate of registration. See Section
7(b) of the Trademark Act, 15 U.S.C. §1057(b).
In view of the similar marks, the related services,
and the same or overlapping channels of trade and
purchasers, we find that consumers seeing applicant’s marks
XROADS CONSULTING and XROADS SOLUTIONS GROUP (which
applicant asserts it has a bona fide intention to use), may
likely assume that applicant’s services emanate from or are
associated with or sponsored by the cited registrant.
Further, we note that any possible doubt on the
question of likelihood of confusion must be resolved
against applicant as the newcomer, inasmuch as applicant
has the opportunity of avoiding confusion and is obligated
to do so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44
USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Ser. Nos. 76561691 and 78405956
20
Decision: The refusal to register the mark for both
classes of services in each application under Section 2(d)
of the Trademark Act is affirmed.