Earlybird-capital, Inc.

Trademark Trial and Appeal Board

Sep 7, 2012

No. 77830022 (T.T.A.B. Sep. 7, 2012)

Mailed: September 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Earlybirdcapital, Inc.
________

Serial No. 77830022
_______

Robert L. Epstein and Dermot M. Sheridan of Epstein Drangel LLP,
for Earlybirdcapital, Inc.

Mark Shiner, Trademark Examining Attorney, Law Office 102
(Mitchell Front, Managing Attorney).
_______

Before Holtzman, Zervas and Wellington, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Earlybirdcapital, Inc., seeks to register on the
Principal Register the standard character mark HYFINS for
services ultimately identified as follows:1
Financial services, namely, selling, specifically,
note brokerage services for notes, the proceeds of
which are used to finance loans made to fund
insurance premium payments; financial services,
namely, servicing notes, the proceeds of which are
used to finance loans made to fund insurance premium
payments; financial services, namely, providing an

1 Application Serial No. 77830022, filed September 18, 2009, based on
an allegation of a bona fide intent to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77830022
2
investment option, namely, a note, the proceeds of
which are used to finance loans made to fund
insurance premium payments" in Class 36.

The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's services, so
resembles two registered marks, HYPHEN PARTNERS L.P. (with
PARTNERS L.P. disclaimed) and HYPHEN MANAGEMENT LLC (with
MANAGEMENT LLC disclaimed), both in standard characters and both
for "investment management and investment fund services" (in
Class 36) as to be likely to cause confusion.2 The registrations
are owned by the same entity.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the
relationship between the goods and/or services. Han Beauty, Inc.
v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed.
Cir. 2001) (citation omitted) ("While it must consider each
factor for which it has evidence, the Board may focus its
analysis on dispositive factors, such as similarity of the marks

2 Registration Nos. 3690499 and 3690500, respectively; both issued
September 29, 2009.
2 Registration No. 3690499, issued September 29, 2009.
Serial No. 77830022
3
and relatedness of the goods."). See also Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the relationship between the services,
keeping in mind that the services must be considered as they are
described in the application and cited registrations, rather than
in light of what the services may actually be. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If
the services are described broadly, and there are no limitations
as to the nature, type, channels of trade or class of purchasers,
it is presumed that the application and registrations encompass
all services of the type described, that they move in all
channels of trade normal for these services, and that they are
available to all classes of purchasers for the described
services. See Hewlett-Packard Co., 62 USPQ2d at 1005; In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
We find that the respective services are similar and closely
related. Applicant does not argue otherwise. Applicant's
services include "an investment option, namely, a note, the
proceeds of which are used to finance loans made to fund
insurance premium payments." The examining attorney submitted a
definition of "note" as "a debt security that promises to pay
Serial No. 77830022
4
interest during the term that the issuer has use of the money,
and to repay the principal on or before the maturity date."3
Registrant's services are "investment management and
investment fund services." We take judicial notice of the
definition of "investment fund" as "a company that invests in
shares, bonds, etc. for investors: The investment fund has a
portfolio of shares worth $180 million."4 Registrant's
investment fund services, which are not limited to any particular
type of assets, include funds that invest in "notes." For
example, the website for First Financial Bank (first-online.com),
as part of its "investment management approach," offers "short-
term notes," among other investment options:5
Asset allocation is the investment concept that's the
cornerstone of Tapestry portfolios. There are three
major classes of investment securities: stocks,
bonds, and money markets. Each of these classes
offer varying returns and levels of risk. Within the
major asset classes there are many different
categories including but not limited to long-term
bonds, short-term notes, value stocks, growth stocks,
large capitalization stocks, small capitalizations
stocks and others.

3 TheFreeDictionary (financial-dictionary.thefreedictionary.com).
Office action dated December 16, 2009.
4 Cambridge Business English Dictionary (Cambridge University Press)
from the website Cambridge Dictionaries Online
(dictionary.cambridge.org). The Board may take judicial notice of
dictionaries, including online dictionaries which exist in printed
format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3
(TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
5 Office action dated January 31, 2011.
Serial No. 77830022
5
It can also be seen from the website evidence above as well
as the following, that registrant's investment management
services include managing investment decisions and the various
securities, such as "notes," which comprise the fund. The
examining attorney provided a definition of "investment
management" as "The process of managing money, including
investments...." (investorswords.com).6 As explained further in
the Wikipedia entry submitted by the examining attorney,7
"Investment management"
is the professional management of various securities
(shares, bonds and other securities) and assets...in
order to meet specified investment goals for the
benefit of the investors. ... At the heart of the
investment management industry are the managers who
invest and divest client investments. A certified
company investment advisor should conduct an
assessment of each client's individual needs and risk
profile. The advisor then recommends appropriate
investments.

In fact, as examining attorney points out, applicant's
services of note selling and brokerage are also aspects of
investment management services. As described in the Reference
for Business Encyclopedia of Business
(referenceforbusiness.com):8
Investment management comprises a broad spectrum of
topics ranging from the workings of capital markets,
to valuation of financial securities, to the
construction of portfolios of assets to meet the

6 Office action dated December 16, 2009.
7 Office action dated January 31, 2011.
8 Id.
Serial No. 77830022
6
objectives of investors. ... Investors who want to
buy or sell financial assets typically engage the
services of a broker. The broker transmits orders to
buy or sell to the trading floor of the appropriate
exchange....

In addition, the examining attorney has submitted several
use-based, third-party registrations covering both applicant's
and registrant's types of services.9 For example, Reg. No.
2550865 for the mark STEWARDACCOUNT and design lists "financial
services in the nature of investment in securities bonds, notes"
and "investment management"; Reg. No. 3513190 for the mark BACHE
COMMODITY INDEX lists "providing investment management" and
"distribution and brokerage of commodity index funds and
structured products, namely, swaps, [and equity notes]"; and Reg.
No. 3533141 for the mark X XTF ETF EXPERTS and design lists
"investment fund transfer and transaction services" and
"providing investment management and investment advice for
exchange traded funds, notes and certificates." These third-
party registrations, while not evidence of use of the marks
therein, may serve to suggest that the services are of a type
which may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
It is clear that applicant's particular type of investment
option involving notes, as well as its note selling and brokerage

9 Office action dated December 16, 2009.
Serial No. 77830022
7
services, are similar to and/or encompassed within registrant's
investment management and investment fund services.
Because there are no restrictions or limitations in either
applicant's or registrant's identifications of services, we must
assume that these similar and closely related services would be
sold in the same channels of trade to the same purchasers, i.e.,
investors. See Venture Out Properties LLC v. Wynn Resorts
Holdings LLC, 81 USPQ2d 1887, 1894 (TTAB 2007) ("Because the
services are clearly related, they would be offered in the same
channels of trade and offered to the same classes of
consumers...."). The website evidence referenced above shows
that the channels of trade and purchasers for both applicant's
and registrant's types of services are in fact the same.
We turn then to a comparison of the marks. In determining
the similarity or dissimilarity of marks, we consider the marks
in their entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005). The test under this du Pont factor is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions that
confusion as to the source of the services offered under the
respective marks is likely to result. The focus is on the
Serial No. 77830022
8
recollection of the average purchaser, who normally retains a
general, rather than a specific, impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and in
such a case there is nothing improper in giving greater weight to
the more dominant feature. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant's mark is HYFINS; registrant's marks are HYPHEN
PARTNERS L.P. and HYPHEN MANAGEMENT LLC. The word HYPHEN is the
dominant part of registrant's marks. While, as applicant points
out, the additional wording PARTNERS L.P. and MANAGEMENT LLC
results in longer marks with more syllables than applicant's
mark, these disclaimed terms are descriptive of registrant's
services and/or its entity, and they are therefore less
significant in creating the marks' commercial impressions.
Purchasers will look to the word HYPHEN, rather than these
descriptive elements, to distinguish the source of registrant's
services. See In re National Data, 224 USPQ at 751.
Applicant's entire mark, HYFINS, is virtually identical in
sound to HYPHEN, the dominant and distinguishing portion of
registrant's marks. The fact that one mark is the plural form of
the other "does not amount to a material difference" in the
marks. In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227, 227
Serial No. 77830022
9
(CCPA 1969). Because the marks consist in whole or in
significant part of phonetically identical terms, the marks as a
whole are substantially similar in sound. As the examining
attorney points out, similarity in sound alone has been held to
support a finding of likelihood of confusion. See Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir.
1983) ("Another factor weighing heavily in our decision is that
the dominant portion of both parties' marks sounds the same when
spoken.").
Applicant contends that the marks have different meanings
and commercial impressions, arguing that HYFINS, unlike HYPHEN,
is not a recognized word in the English language but rather is a
coined term and is an acronym for the words "High Yield Financed
Insurance Notes." Brief, pp. 5-6. However, the wording "High
Yield Financed Insurance Notes" is not part of applicant's mark,
and moreover, there is no evidence that purchasers will view
HYFINS as an acronym standing for other words or that purchasers
would even be aware of this meaning of the term. Purchasers are
more likely to view HYFINS as simply a misspelling or variation
of the familiar word HYPHEN with the same meaning as HYPHEN,
rather than the acronym meaning invented by applicant. Thus,
whatever meaning HYPHEN has in registrant's marks, and this
meaning appears to be entirely arbitrary for registrant's
Serial No. 77830022
10
financial services, would apply to applicant's mark HYFINS, as
well.
There are visual differences between the marks due to the
misspelling of HYPHEN as HYFINS in applicant's mark and the
presence of the additional words in registrant's marks. However,
we find that the substantial similarity of the marks in sound,
meaning and overall commercial impression far outweigh their
differences in appearance. See, e.g., Centraz Industries Inc. v.
Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006)
(similarity in sound between ISHINE (stylized) and ICE SHINE "is
so substantial that it outweighs any differences in appearance
and meaning.").
We also point out that registrant's marks which prominently
feature the arbitrary term HYPHEN must be considered strong marks
entitled to a broad scope of protection. See Palm Bay, 73 USPQ2d
at 1692 (“VEUVE [in the mark VEUVE CLICQUOT] is an arbitrary term
as applied to champagne and sparkling wine, and thus conceptually
strong as a trademark.”); and In re Wilson, 57 USPQ2d 1863 (TTAB
2001). This is a factor which increases the similarity of the
marks, and the likelihood that the marks, when used in connection
with similar and closely related services, would cause confusion.
Applicant, however, argues that the "extensive third-party
usage of 'HYPHEN' as applied to financial services has rendered
the term relatively weak in that context." To support this
Serial No. 77830022
11
contention, applicant relies on two third-party registrations,
namely, Reg. No. 3232072 for the mark HYPHEN for "business
management consulting services to others in the field of
hospitality, food service and retail industries"; and Reg. No.
2738496 for the mark HYPHEN for "business marketing consulting
services for the healthcare industry."
First, as we noted, third-party registrations are not
evidence that the marks therein are in use. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973). Further, while third-party registrations can be
used in the manner of a dictionary to show that a commonly
registered element of a mark has a suggestive meaning in a
particular field, the existence of just two registrations is
insufficient for this purpose, and more important, neither of the
registrations is for services in the relevant field.
It is reasonable to assume that the customers for
applicant's and registrant's investment services would be
sophisticated and knowledgeable about the services or would at
least exercise some degree of care in selecting them. However,
even sophisticated and/or careful purchasers would be susceptible
to source confusion, particularly where, as here, the services
are similar and closely related and are sold under similar marks.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman
Serial No. 77830022
12
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers...are not
infallible.”). Thus, we find that this du Pont factor is
outweighed by all the other du Pont factors favoring a finding of
likelihood of confusion.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.