First Union Corporation

Trademark Trial and Appeal Board

Mar 13, 2006

No. 76142267 (T.T.A.B. Mar. 13, 2006)

Mailed: March 13, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re First Union Corporation
________

Serial Nos. 76142267 and 76142450
_______

Karl S. Sawyer, Jr. of Kennedy Covington Lobdell & Hickman,
LLP for First Union Corporation.

Dorritt Carroll, Trademark Examining Attorney, Law Office
116 (M. L. Hershkowitz, Managing Attorney).
_______

Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

First Union Corporation has filed applications to
register the marks COMPASS ADVISORY PROGRAM1 and COMPASS
PORTFOLIO PROGRAM2 for, in each case, “investment advice,

1 Serial No. 76142267, filed on October 6, 2000, which alleges a
date of first use anywhere and date of first use in commerce of
June 1, 2000. The words ADVISORY PROGRAM have been disclaimed
apart from the mark as shown.
2 Serial No. 76142450, filed on October 6, 2000, which alleges a
date of first use anywhere and a date of first use in commerce of
June 1, 2000. The words PORTFOLIO PROGRAM have been disclaimed
apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 76142267 and 76142450
2
namely, annuity counseling, mutual fund counseling and
investment counseling.”
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that each of applicant’s marks, when applied to its
services, so resembles the previously registered marks
shown below,

for “managing group annuity funds for qualified and non-
qualified retirement plans,”3 and

for “financial services, namely stock and mutual fund
brokerage services, investment banking services, financial
planning services and asset management services,”4 as to be
likely to cause confusion. The cited registrations are
owned by different entities.

3 Registration No. 1,560,125 issued October 10, 1989; Section 8
and 15 affidavits accepted and acknowledged, respectively.
4 Registration No. 1,910,414 issued August 8, 1995; renewed. The
word BROKERAGE is disclaimed apart from the mark as shown.
Ser Nos. 76142267 and 76142450
3
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. Because both cases
involve similar records and similar issues, we will
consider them in a single opinion.
Insofar as the marks are concerned, the examining
attorney argues that applicant’s marks and the cited marks
are highly similar due to the shared term COMPASS. It is
the examining attorney’s position that the term COMPASS is
the dominant portion of each of the applicant’s marks and
each of the cited marks, and this term is entitled to more
weight in our likelihood of confusion determination.
With respect to the services, it is the examining
attorney’s position that the “annuity counseling” services
in applicant’s applications are related to the services in
Registration No. 1,560,125, i.e., “managing group annuity
funds for qualified and non-qualified retirement plans.”
Further, it is the examining attorney’s position that the
“mutual fund counseling and investment counseling” services
in applicant’s applications overlap with the services in
Registration No. 1,910,414, i.e., “financial services,
namely stock and mutual fund brokerage services, investment
banking services, financial planning services, and asset
management services.” In support of her position with
respect to the relatedness of the services, the examining
Ser Nos. 76142267 and 76142450
4
attorney submitted Internet printouts which she maintains
show: a) that a single entity offers annuity counseling
services and other services relating to annuities under a
single mark, and b) that a single entity offers mutual fund
brokerage services and investment counseling services under
a single mark.
Applicant does not take issue with the examining
attorney’s position with respect to the related and
overlapping nature of applicant’s and registrants’
services. Rather, applicant’s arguments are directed to
the marks. Applicant contends that there are specific
differences in its marks and each of the cited marks,
namely, its marks includes the words ADVISORY PROGRAM and
PORTFOLIO PROGRAM, respectively, whereas the mark in
Registration No. 1,560,125 includes the letter “G” and a
design, and the mark in Registration No. 1,910,414 includes
the letter “C”, a design and the word BROKERAGE. Further,
with respect to the marks, applicant argues that:
Applicant respectfully submits that the refusal
of registration on the grounds that there would
be a likelihood of confusion is contradictory to
the fact that the two cited Registrations, owned
by differing and unrelated parties, co-exist with
one another. Specifically, the Office Action
explains the refusal of registration as being
basically grounded on the single similarity
between the present mark and the cited registered
marks as sharing the common terms “COMPASS” and
as having related services, but the Office action
Ser Nos. 76142267 and 76142450
5
fails to acknowledge and reconcile the fact that
the cited Registrations owned by differing and
unrelated parties, themselves have precisely the
same similarities between their respective marks
and services for which the present mark is being
refused registration. If, as asserted in the
Office Action, Applicant’s mark is likely to be
confused with the cited marks for these reasons,
then it would necessarily follow that the cited
marks are confusingly similar with one another.
However, such cannot be the case inasmuch as the
Trademark Act provides that the cited
registrations must be presumed valid and, as a
necessary corollary, it must be presumed that the
registered marks are not confusing with one
another. Since the present Applicant’s mark and
services under the current application have no
greater similarities to the cited marks and their
respective services than such marks and services
are similar to one another, the only logical and
legally supportable conclusion is that
Applicant’s mark is no more likely to cause
confusion with the cited marks than they are
likely to be confused with one another. In turn,
the Applicant’s mark must be equally entitled to
registration.

(Brief at 3-4 in both applications).
Also, applicant argues that there is an additional co-
existing registration, namely its own Registration No.
2,280,592 for the mark WHEAT FIRST COMPASS PORTFOLIO
PROGRAM for “annuities counseling, mutual fund counseling
and investment counseling.” Again, applicant places
significant weight on the fact that three “COMPASS”
registrations have been issued to three different entities
and that they have co-existed on the register.
Ser Nos. 76142267 and 76142450
6
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. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
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 the relatedness of the services, we
deem applicant’s silence on this factor as a concession of
the examining attorney’s contention that applicant’s
services are related to and overlap with the services in
the cited registrations. Moreover, the evidence submitted
by the examining attorney establishes that the involved
services are related/overlapping. In view of the
related/overlapping nature of the services, we must presume
that such services would be offered in the same channels of
trade to the same classes of purchasers. Thus, confusion
as to source or sponsorship of the services would be likely
Ser Nos. 76142267 and 76142450
7
to occur if such services were to be sold under the same or
similar marks.
Turning then to a consideration of the marks, we must
determine whether applicant’s marks and the cited marks,
when compared in their entireties are similar or
dissimilar, in terms of sound, appearance, connotation and
commercial impression. Although the marks must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Furthermore, the test 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 commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is
likely to result. The focus is on the 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).
Ser Nos. 76142267 and 76142450
8
We first compare applicant’s marks COMPASS ADVISORY
PROGRAM and COMPASS PORTFOLIO PROGRAM with the mark shown
below.

Applicant’s marks are clearly dominated by the word
COMPASS. The words ADVISORY PROGRAM and PORTFOLIO PROGRAM
are descriptive of applicant’s services and thus entitled
to less weight in our likelihood of confusion analysis.
Similarly, registrant’s mark is dominated by the word
COMPASS. The compass design simply reinforces the word
COMPASS and the additional letter “G” is insufficient to
distinguish the marks.
We next compare applicant’s marks and the mark in
Registration No. 1,910,414 shown below.

Again, for the reasons stated above, COMPASS is the
dominant portion of applicant’s marks. Also, we find that
COMPASS is the dominant portion of registrant’s mark. The
word BROKERAGE is descriptive/generic of registrant’s
services and thus is entitled to less weight in our
Ser Nos. 76142267 and 76142450
9
likelihood of confusion determination. Further, the letter
“C” and compass design simply reinforce the word COMPASS,
particularly since registrant’s name is also Compass
Brokerage.
In view of the foregoing, we find that applicant’s
marks and each of the cited marks is similar in sound,
appearance, meaning and commercial impression.
The co-existence on the register of the two cited
marks and applicant’s registered mark, although a factor in
this case, does not compel us to reach a different result
here. We think that applicant’s registered mark WHEAT
FIRST COMPASS PORTFOLIO PROGRAM engenders a different
commercial from each of the cited marks COMPASS-G and
design and C COMPASS BROKERAGE and design. Also, the
services covered by each of the cited marks are somewhat
different from one another. Further, while the USPTO
strives for consistency of examination, as often noted by
the Board, each case must be decided on its own merits. We
are not privy to the records of the other registrations,
and moreover, the determination of the registrability of
different marks by a trademark examining attorney cannot
control the results in the case now before use. See In re
Nett Designs Inc., 236 F.2d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Ser Nos. 76142267 and 76142450
10
In sum, we find that purchasers familiar with the
registrant’s COMPASS-G and design mark for managing group
annuity funds for qualified and non-qualified retirement
plans, would be likely to believe, upon encountering either
applicant’s COMPASS ADVISORY PROGRAM mark or its COMPASS
PORTFOLIO PROGRAM mark for annuity counseling services, in
particular, that such related services emanate from or are
otherwise sponsored by or associated with a common source.
In addition, we find that purchasers familiar with the
registrant’s C COMPASS BROKERAGE and design mark for
financial services, namely stock and mutual fund brokerage
services, investment banking services, financial planning
services and asset management services, would be likely to
believe, upon encountering either of applicant’s marks for
mutual fund counseling and investment counseling, in
particular, that such services emanate from or are
otherwise sponsored by or associated with a common source.
Decision: The refusal to register under Section 2(d)
is affirmed in each case.