Exemplar Financial Network LLC

Trademark Trial and Appeal BoardJan 31, 2012

No. 77907213 (T.T.A.B. Jan. 31, 2012)

Mailed: January 31, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Exemplar Financial Network LLC ________ Serial No. 77907213 _______ Stephen T. Scherrer of Scherrer Patent & Trademark Law, P.C. for Exemplar Financial Network LLC. Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Bucher, Bergsman and Shaw, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Exemplar Financial Network LLC (“applicant”) filed an intent-to-use application for the mark YOUR PATHWAY TO SUCCESS, in standard character form, for “estate planning; financial planning; financial planning for retirement; insurance information and consultancy,” in Class 36. The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection with the identified services, so resembles the registered mark PATHWAYS TO SUCCESS, in standard THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77907213 2 character form, for the services set forth below as to be likely to cause confusion.1 Educational software featuring instruction in financial planning and management for professional persons relating to the management of a professional practice, in Class 9; Educational publications, namely, training manuals in the field of financial planning and management for professional persons relating to the management of a professional practice, and printed instructional, educational, and teaching materials in the field of financial planning and management for professional persons relating to the management of a professional practice, in Class 16; and Educational services, namely, providing courses of instruction at the college level, educational services, namely, conducting seminars, conferences, and workshops in the field of financial planning and management for professional persons relating to the management of a professional practice, and distributing course materials in connection therewith, educational services, namely, conducting programs in the field of financial planning and management for professional persons relating to the management of a professional practice, educational services, namely, providing a website featuring programs for financial planning and management for professional persons relating to the management of a professional practice, in Class 41. 1 Registration No. 3002571, issued September 27, 2005; Section 8 affidavit accepted. Serial No. 77907213 3 Our determination of likelihood of confusion 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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The marks are very similar: PATHWAYS TO SUCCESS vs. YOUR PATHWAY TO SUCCESS There is no material difference between the singular and plural form of the word “Pathway” and, therefore, PATHWAY and PATHWAYS will be regarded as the same. Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same mark”); Edison Brothers Stores, Inc. v. Brutting E.B. Serial No. 77907213 4 Sport-International GmbH, 230 USPQ 530, 532 (TTAB 1986) (“The marks [EBS vs. EB and design] differ only by the single letter ‘s’ in opposer’s mark and the diamond-shaped outline in applicant’s. Neither of these differences is adequate, in our opinion, to obviate confusion among purchasers of shoes”); In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB 19855) (“As for the marks [NEWPORT vs. NEWPORTS] except for the plurization of applicant’s mark which is almost totally insignificant in terms of the likelihood of confusion of purchasers, the marks are essentially identical in sound, appearance and commercial impression”). Likewise, applicant’s addition of the pronoun “your” before the term “Pathway To Success” does not distinguish the marks. The pronoun “your” tells the viewer whose pathway to success. Applicant’s mark YOUR PATHWAY TO SUCCESS, thus, encompasses registrant’s entire mark PATHWAYS TO SUCCESS. In such circumstances, likelihood of confusion has been found where the entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); Serial No. 77907213 5 Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD START for men’s hair lotion and after-shaving lotion). In view of the foregoing, we find that the marks are similar in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods, channels of trade and classes of consumers. It is well settled that applicant’s services and the registrant’s goods and services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective products and services are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 Serial No. 77907213 6 USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The question of likelihood of confusion is determined based on the identification of services in the application and the goods and services as set forth in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). In addition, the greater the degree of similarity between the marks, the less similarity between the goods and/or services is required to support a finding of likelihood of confusion. Where as here, the marks are very similar, there need be only a viable relationship between the goods and services to find that a likelihood of confusion exists. In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). When we are determining whether the goods and services are related, we must consider the goods and services as they are identified in the respective identification of goods and recitation of services. Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective Serial No. 77907213 7 descriptions of goods”). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”). Therefore, we may not read limitations into the identification of goods or recitation of services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). The registrant has registered its mark for, inter alia, educational software [Class 9], publications [Class 16], and educational services [Class 41] in the field of financial planning for professional persons relating to the management of a professional practice. Applicant is seeking to register its mark for, inter alia, financial Serial No. 77907213 8 planning.2 Because there are no limitations or restrictions in applicant’s recitation of services, applicant’s financial planning services encompass financial planning for professional persons relating to the management of a professional practice. As indicated above, because we may not read limitations into applicant’s recitation of services, we may not restrict or limit applicant’s services, as applicant asserts, to read “general estate and financial planning services, insurance information and consultancy provided to individuals requiring those services, sold through the channels of trade generally used for selling these services, while the Registrant’s goods are very clearly limited to ‘educational services.’”3 (Emphasis in the original). Thus, there is no basis for applicant’s argument that applicant’s services and registrant’s goods and services are dissimilar, move in different channels of trade and are offered to different customers.4 2 The fact that applicant’s recitation of services includes additional services is not dispositive. It is sufficient for a finding of likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods or services in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). 3 Applicant’s Brief, p. 13. 4 Applicant’s Brief, pp. 10-14. Serial No. 77907213 9 To support his position that the applicant’s services and the registrant’s goods and services are related, the Examining Attorney has submitted numerous use-based, third- party registrations for goods and services listed in both the application and registration at issue. Third-party registrations which individually cover a number of different goods and services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are representative.5 Mark Reg. No. Goods/Services THE PROFIT ZONE 3242285 Publications in the field of financial planning; consulting services in the field of financial planning; educational services in the field of financial planning 2597008 Personal and business planning, estate planning, retirement planning; educational services in the field of financial planning 2994674 Prerecorded audio and video tapes in the field of financial planning; printed educational materials in the field of financial planning; providing financial information, analysis and consultation; 5 We have not included the entire description of goods and services for each of the registrations. Only the goods in both applicant’s application and registrant’s registration are listed. Serial No. 77907213 10 Mark Reg. No. Goods/Services educational services in the field of financial planning CALSTRS 2994785 Printed educational materials in the financial field; financial planning; educational services in the field of financial planning MONEY DANCING 3562541 Printed materials in the field of personal finance; financial planning; personal coaching services in the field of financial planning We would expect that customers for financial planning services would request educational materials and services relating to the financial planning services offered by both registrant and applicant for use in making their financial planning purchasing decisions and it would be odd if applicant and registrant did not have such materials and provide educational services about financial planning. Indeed, it is logical that an entity that renders financial planning services would provide educational materials and services in order to market its financial planning services. In view of the foregoing, we find that applicant’s services and registrant’s goods and services are related, move in the same channels of trade, and are sold to the same classes of consumers. Serial No. 77907213 11 C. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Applicant argues, and we acknowledge, that consumers for financial planning goods and services may exercise a high degree of care. However, this high degree of care relates to financial planning goods and services rather than to trademarks. Since applicant did not introduce any evidence regarding the decision making process under which consumers exercise their high degree of care, we cannot speculate as to role trademarks play in the purchasing decision and whether this high degree of care will preclude consumers from mistaking one trademark for another when the marks are as similar as those before us and cover goods and services in the same field. See Educational Development Corporation v. Educational Dimensions Corporation, 183 USPQ 492, 496 (TTAB 1974). D. Balancing the factors. In view of the facts that the marks are very similar, the goods and services are related, move in the same channels of trade and are sold to the same consumers, we find that applicant’s mark YOUR PATHWAY TO SUCCESS for “estate planning; financial planning; financial planning for retirement; insurance information and consultancy,” is Serial No. 77907213 12 likely to cause confusion with the mark PATHWAYS TO SUCCESS for the goods and services recited in the registration. Decision: The refusal to register is affirmed.