Infosys Limitedv.Going Ventures, LLC

Trademark Trial and Appeal BoardMar 6, 2019

OPP (T.T.A.B. Mar. 6, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: March 6, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Infosys Limited v. Going Ventures, LLC _____ Opposition No. 91225803 _____ Naresh Kilaru and Mark Sommers of Finnegan Henderson Farabow Garrett & Dunner LLP for Infosys Limited Joseph R. Carvalko of Law Offices of Joseph R. Carvalko for Going Ventures, LLC _____ Before Bergsman, Hightower and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Going Ventures, LLC (“Applicant”) seeks registration on the Principal Register of the mark FINACULAR in standard characters (the “Application”) for: Computer software for use in the field of personal and business finance for accounting, project costing Opposition No. 91225803 - 2 - management and tax management and related user manuals sold as a unit therewith in Int. Class 9; Online finance and loan matching services, namely, matching potential lenders with small businesses and individuals needing financing; online business finance, business loan, and business lending matching services, namely, matching potential borrowers with potential lenders in the field of business loans, finance and capital; providing an online service that matches business finance requirements with commercial lenders, namely, matching businesses needing financing with commercial lenders; matching consumer requests for financing and commercial loans to lenders interested in those requests in Int. Class 35; and Providing a website featuring technology that matches business finance requirements with commercial lenders; providing a website featuring technology that enables business owners to find business financing and commercial loans; providing a website featuring technology that matches consumer requests for financing and commercial loans to lenders interested in those requests; providing a website featuring technology that enables the secure exchange of information by users; and providing a website featuring technology that enables personal and business financial users to process financial tasks, namely, accounting, project costing management, lending and tax management in Int. Class 42.1 Infosys Limited (“Opposer”) opposes registration of the mark based on alleged likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with two registered marks, shown below: FINACLE in standard characters for: Computer programs for installation of software for conducting transactions and enquiries on transactions for use in the field of banking, computer software for 1 Application Serial No. 86601483 was filed on April 17, 2015, based on Applicant’s allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Opposition No. 91225803 - 3 - conducting banking transactions and enquiries on transactions for use in the field of banking; magnetic data media, namely, magnetic disks and CDs featuring computer software programs for conducting banking business in Int. Class 9; Printed instructional and teaching material in the field of banking business and operations; book-bindings; books and booklets, namely, product manuals and training manuals for computer software in Int. Class 16; Professional business consultancy; business information; business inquiries; compilation of information into computer databases; systematization of information into computer databases in Int. Class 35; Providing of training in the field of banking services and software; arranging and conducting educational conferences, seminars, and training workshops, all in the fields of banking software and finance; practical training demonstrations in the field of banking software in Int. Class 41; and Design and development of computer software; computer programming; computer software design; maintenance of computer software; updating of computer software; computer system design in Int. Class 42.2 for: Automatic vending machines and mechanisms for coin- operated apparatus; data processing equipment and computers; pre-recorded discs featuring data regarding how to install software for conducting banking transactions; adding machines; automated teller machines (ATM); computer programs for installation of software for conducting transactions and enquiries on transactions for use in the field of banking, computer software for conducting banking transactions and enquiries on transactions for use in the field of banking, and peripherals for computers; magnetic data media, namely, floppy disks, 2 Registration Number 4392494 issued August 27, 2013, based on alleged use in commerce under 15 U.S.C. § 1051(a). Opposition No. 91225803 - 4 - magnetic disks, and CDs featuring computer software programs for conducting banking business; optical data media, namely, optical discs featuring computer software programs for conducting banking business in Int. Class 9; Printed instructional and teaching material in the field of banking business and operations; book-bindings; books and booklets, namely, product manuals and training manuals for computer software in Int. Class 16; Business management; business administration; office functions; auditing; bookkeeping; business appraisals; professional business consultancy; business information; business inquiries; business investigations; compilation of information into computer databases; systematization of information into computer databases; supply and demand forecasting for businesses; economic forecasting in the nature of sales forecasting in Int. Class 35; Financial forecasting; expense forecasting, namely, forecasting the financial needs of companies; monetary affairs, namely, financial management; financial analysis; banking; home banking; financial clearing, financial clearing-houses; credit bureau; credit card services; issuance of credit cards; debit card services; debt collection agencies; deposit of valuables, namely, safe deposit box services; exchanging money; factoring agencies; financial consultancy; financial evaluation; financial guarantees; hire purchase financing; housing agencies; financial information; insurance information; installment loan financing; insurance brokerage; issuing of travelers cheques; lease-purchase financing; loan financing; mortgage banking; mutual fund investment; safe deposit services; savings banks; securities brokerage; electronic funds transfer; arranging and provision of travelers checks; financial deposit valuations; check verification in Int. Class 36; Installation, maintenance and repair of computer hardware in Int. Class 37; Telecommunications services, namely, wireless telephone services; communications by computer terminals; computer aided transmission of messages and images; electronic mail; facsimile transmission; message sending; Opposition No. 91225803 - 5 - providing access to databases; transmission of information via a teleprinter in Int. Class 38; Electronic storage of data; storage services for archiving electronic data in Int. Class 39; Providing of training in the field of banking services and software; arranging and conducting educational conferences, seminars, and training workshops, all in the fields of banking software and finance; instruction in the field of banking software; practical training demonstrations in the field of banking software; providing on-line non-downloadable publications, namely, articles, newsletters, in-house magazines, research papers, issue papers, opinion papers, white papers, and booklets in the field of banking and banking software; publication of texts, other than publicity texts; translation in Int. Class 41; Design and development of computer hardware and software; recovery of computer data; retrieving data for others on computer networks; data backup; computer security service, namely, erasure of data from hard drives; computer services, namely, analysis of computer network operation data; computer programming; duplication of computer programs; computer software design; installation of computer software; maintenance of computer software; updating of computer software; computer system design; computer systems analysis; computer software consultancy; conversion of data or documents from physical to electronic media in Int. Class 42.3 In its answer, Applicant denies the salient allegations in the notice of opposition.4 The opposition is fully briefed. 3 Registration Number 4277634 issued January 22, 2013, based on Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e). The registration includes the following description: “The mark consists of the word mark ‘FINACLE’ in black letters, next to a red square with a white triangular shaped form. The color(s) Red, black and white is/are claimed as a feature of the mark.” 4 The Board previously granted in part a motion to strike Opposer’s affirmative defenses, declining to strike only what the Board deemed “not true ‘affirmative defenses’” but rather Opposition No. 91225803 - 6 - I. Evidentiary Record The record includes the pleadings and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application. Opposer introduced: • Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer’s pleaded registrations, 1 TTABVUE 13-26; • Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit testimony and accompanying exhibits of Dr. Melissa Pittaoulis, Opposer’s survey expert, 23 TTABVUE; • Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit testimony and accompanying exhibits of Rajashekara Maiya, Opposer’s Head of Finacle Product Strategy, 24 TTABVUE; • Pursuant to Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5), Applicant’s response to Opposer’s Interrogatory Nos. 6, 9 and 10, 25 TTABVUE; • Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), screenshots from the website of CELENT (celent.com), 26 TTABVUE. Applicant submitted: • Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit testimony and accompanying exhibits of Carl Fusco, Applicant’s survey expert, 29 TTABVUE 2-195; mere “amplifications of Applicant’s denials that provide fuller notice to Opposer of the bases for Applicant’s defense.” 7 TTABVUE 1 (footnote and citations omitted). Opposition No. 91225803 - 7 - • Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit testimony of Seni Hazzan, a Partner at Applicant, 29 TTABVUE 196-209;5 • Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), online dictionary definitions of “spectacular” and “pinnacle,” 30 TTABVUE. II. Standing and Priority Applicant does not contest Opposer’s standing or priority. Nonetheless, Opposer must prove standing by showing a real interest in the outcome of the proceeding and a reasonable basis for believing that it would suffer damage if the mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded registrations, for which Opposer has proven status and title, establish its standing. See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Also, Section 2(d) priority is not in issue as to the marks and the goods covered 5 We deny Opposer’s motion to strike certain portions of Mr. Hazzan’s testimony concerning the relatedness of the goods and services at issue as improper lay opinion testimony. “[T]he Board generally does not strike testimony taken in accordance with the applicable rules on the basis of substantive objections; rather, the Board considers such objections when evaluating the probative value of the testimony at final hearing.” Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1194 n.19 (TTAB 2014) (citations omitted). We consider Mr. Hazzan’s testimony about the nature of the goods and services at issue and facts regarding the relevant industries. However, we do not find probative Mr. Hazzan’s ultimate conclusory statements as to the lack of relatedness of particular goods and services. We will weigh the relevance and strength or weakness of the objected-to testimony, including any inherent limitations therein. See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1755 (TTAB 2013) (disregarding improper opinion testimony), aff’d mem., 565 Fed. App’x 900 (Fed. Cir. 2014). Opposition No. 91225803 - 8 - by these registrations. See Top Tobacco LP v. North Atlantic Op. Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)). III. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of confusion analysis often focuses on the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer bears the burden of proving its claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. A. The Goods and Services “[L]ikelihood of confusion can be found ‘if the respective products [and services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). Our comparison of the goods and services must be based on the identifications in the Opposition No. 91225803 - 9 - application and Opposer’s registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Contrary to Opposer’s statement in its Reply Brief, merely establishing likely confusion as to “only one of the products identified in the application” would not suffice.6 Rather, a finding of likely confusion must be made with respect to at least one item in each class of goods and services to establish likely confusion as to that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). This is so because a multiple class application is considered the equivalent of multiple separate applications. See Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1278 (TTAB 2014) (quoting G & W Labs. Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1573-74 (TTAB 2009)). Opposer did not introduce evidence regarding the relatedness of specific goods and services, but instead relies on the language in the identifications themselves as showing sufficient relatedness on its face. In its Brief,7 Opposer focuses its relatedness argument on the following goods and services: Opposer’s FINACLE Registrations (selected goods and services) Applicant’s FINACULAR Application (selected services) • Computer software for conducting banking transactions and enquiries on transactions for use in the field of banking (Reg. No. 4392494 Class 9); • Computer software for use in the field of personal and business finance for accounting, project costing management and tax management and related user manuals sold as a unit therewith (Class 9); 6 33 TTABVUE 9 (Opposer’s Reply Brief). 7 31 TTABVUE 32-33 (Opposer’s Brief). Opposition No. 91225803 - 10 - • Business management; business administration; office functions; auditing; bookkeeping; business appraisals; supply and demand forecasting for businesses; economic forecasting in the nature of sales forecasting (Reg. No. 4277634 Class 35). • Online finance and loan matching services, namely, matching potential lenders with small businesses and individuals needing financing (Class 35) • Providing an online service that matches business finance requirements with commercial lenders, namely, matching businesses needing financing with commercial lenders (Class 35); • Providing a website featuring technology that enables personal and business financial users to process financial tasks, namely, accounting, project costing management, lending and tax management (Class 42). Opposer argues that because a loan is a type of banking transaction, its “computer software for conducting banking transactions” “is clearly related to services that match lenders with those in need of financing.”8 Similarly, Opposer posits that its banking transaction software also should be deemed related to Applicant’s accounting software. Opposer also contends that its “business management,” “bookkeeping,” and “sales forecasting” are related to Applicant’s software and website for accounting, cost management and tax management. Applicant contends that its goods and services are unrelated to Opposer’s. However, Applicant’s argument that Opposer’s Class 9 goods are limited to computer programs for installation of software is inaccurate, because as reflected in the chart above, the goods include software for conducting banking transactions. Similarly, 8 Id. at 32. Opposition No. 91225803 - 11 - Applicant also draws the distinction that its goods and services “do not relate to or focus on ‘banking,’” while Opposer’s do, and “Opposer makes no reference to a consumer-like product or service such as software for ‘accounting, project cost management and tax management’ for personal and business finance.”9 But Opposer’s services are not limited to banking-related services and do include services such as “bookkeeping,” “business information,” and “professional business consultancy.” Without the benefit of relatedness evidence from Opposer to meet its burden of proof, we are left to carefully consider the identified goods and services to assess whether at least one item in each of Applicant’s three classes may be deemed sufficiently related on its face to Opposer’s goods or services as set forth in the pleaded registrations. The relatedness of goods and services may be apparent on the face of the identifications without the need to resort to extrinsic evidence, but “a broad general market category is not a generally reliable test of relatedness of products.” Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002). Thus, the mere fact that goods and services are “in the same industry does not of itself provide an adequate basis to find the required ‘relatedness.’” Cooper Indus., Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983). We find that the identifications of goods and services establish the necessary relatedness as to each class of goods and services in the application. First, Opposer’s magnetic data media featuring computer software programs for conducting banking 9 32 TTABVUE 9 (Applicant’s Brief) (emphasis in original). Opposition No. 91225803 - 12 - business overlaps with Applicant’s Class 9 computer software in the field of business finance for accounting and tax management. Banking business broadly includes “the custody, loan, exchange, or issue of money, for the extension of credit, and for facilitating the transmission of funds.”10 The field of business finance includes banking,11 and accounting encompasses “recording and summarizing business and financial transactions,”12 and therefore falls within the realm of banking business. For the same reason, we also find Opposer’s same goods related to Applicant’s Class 42 service of “providing a website featuring technology that enables … business financial users to process financial tasks, namely, …lending.” Lending is a type of banking business and a banking transaction, so Opposer’s software for banking business and for conducting banking transactions includes loan-related software. Thus, we find at least these goods Applicant identified in Class 9 and these services Applicant identified in Class 42 sufficiently related to Opposer’s goods. Next, we find Applicant’s online lender-borrower matching in Class 35 related to Opposer’s compilation of information into computer databases, which is unlimited as 10 From the definition of “bank” in Merriam-webster.com, accessed March 5, 2019. The Board may take judicial notice of online dictionary definitions that exist in print format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 11 We take judicial notice of one definition of “finance” as “the system that includes the circulation of money, the granting of credit, the making of investments, and the provision of banking facilities.” Merriam-webster.com, accessed March 5, 2019; see also 24 TTABVUE 2- 3 (Maiya Declaration – banking is part of the financial services industry). 12 We take judicial notice of the definition of “accounting” as “the system of recording and summarizing business and financial transactions and analyzing, verifying, and reporting the results.” Merriam-webster.com, accessed March 5, 2019. We have considered but are not persuaded by Mr. Hazzan’s testimony that banking is “unlike” accounting. See 29 TTABVUE 199. Opposition No. 91225803 - 13 - to the type of information and therefore includes compiling lender and borrower information into a database. The same analysis holds true for Applicant’s Class 42 services whereby a website features the technology for matching lenders and borrowers, as we also find this sufficiently related to the compilation of information into a database. Thus, we find these services in Applicant’s Classes 35 and 42 sufficiently related to Opposer’s services. While we have noted Mr. Hazzan’s testimony regarding the goods and services and Applicant’s intentions to use or not to use its marks on particular goods and services, we must rely on the identifications of goods and services for our analysis. Octocom Sys., 16 USPQ2d at 1787. Because at least one item in each class of goods and services in the application is related to goods and services in the pleaded registrations, this du Pont factor weighs in favor of likely confusion. B. Trade Channels, and Classes of Consumers Turning to the trade channels and classes of consumers, the goods and services discussed above and found related also would move in at least some of the same channels of trade to the same classes of consumers. For example, both the application and Opposer’s registrations involve some goods and services that would move in trade channels to banks. Opposer’s registrations directly refer to banking business, banking services and software, and banking transactions. The application’s references to business, potential lenders, and commercial lenders make clear that banks could be customers. In addition, Applicant’s consumers could include not only Opposition No. 91225803 - 14 - businesses but also individuals who might use personal finance software or make “consumer requests for financing.” Similarly, some of Opposer’s identified goods and services could also extend to individual consumers who might conduct their own banking using software for banking business, or who might use the compilation of information into computer databases. Thus, the identifications reflect overlapping trade channels. Evidence of record corroborates the overlap in the marketplace. Opposer submitted testimony that actual FINACLE customers include financial institutions ranging from large entities such as Discovery Financial Services, a leading credit- card issuer, to large banks such as Eastern Bank, to smaller credit unions, thrift banks and community banks, to small and medium businesses.13 Applicant has stated that its services target “potential lenders, small businesses, and individuals needing financing.”14 Thus, the evidence of record also shows commonality in that both Opposer and Applicant provide goods and services to lenders and small businesses. This factor weighs in favor of likely confusion. C. The Strength of Opposer’s Mark The strength of a mark under the fifth du Pont factor rests on the extent to which “a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps. v. Veuve 13 24 TTABVUE 7 (Maiya Declaration). 14 25 TTABVUE 6 (Applicant’s Interrogatory Answer No. 6). Opposition No. 91225803 - 15 - Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). This factor involves assessing the mark “‘along a spectrum from very strong to very weak.’” Id. (internal citations omitted). A very strong mark receives a wider latitude of legal protection in the likelihood of confusion analysis. See Palm Bay Imps., 73 USPQ2d at 1694 (strong marks “enjoy wide latitude of legal protection” and are “more attractive as targets for would-be copyists”). Opposer’s mark FINACLE is a coined,15 inherently distinctive term and, thus, a conceptually strong mark. The commercial strength of a mark may be measured indirectly by the volume of sales and advertising expenditures in connection with the goods and services sold under the mark, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the goods and services identified by the marks; and the general reputation of the goods and services. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength). Opposer provided evidence that sales under the FINACLE marks over the last five years exceeded $100 million.16 While that figure seems substantial, we lack industry context for it, or even evidence of the price of Opposer’s goods and services at issue so as to have a sense of the volume of goods or services this figure represents. 15 24 TTABVUE 4 (Maiya Declaration) 16 24 TTABVUE 4-5 (Maiya Declaration). Opposition No. 91225803 - 16 - Opposer relies on testimony that in the United States, Opposer’s FINACLE goods and services support 50 million bank accounts through at least ten banks,17 but it remains unclear whether the owners of these accounts would have any direct exposure to the FINACLE mark. Opposer’s promotional literature and awards suggest that banks and financial institutions are its actual customer base.18 However, as discussed below, the relevant consumer for our consideration, based on the identification of goods and services, includes small businesses and individual consumers. Thus, the probative value of this evidence to show widespread recognition of the mark by relevant consumers is limited. Opposer also introduced evidence that since 2003, annual promotional expenditures have averaged approximately $500,000,19 but we lack industry information to put this figure in context. FINACLE has received some industry recognition by being awarded “Best Core Banking Technology” in The Banker’s Innovation in Technology and Transaction Banking Awards 2013, and won Juniper Research’s 2014 Future Mobile Awards in the mobile banking category.20 Overall, this evidence suggests a modest degree of commercial 17 Id. at 3. 18 24 TTABVUE 10-47 (Finacle promotional materials), 49 (FINACLE recognized by awards that “celebrate[] companies coming up with newer ways to assist financial institutions in serving their clients quickly and efficiently.”). 19 Id. 20 Id. at 5-6, 49-50 (edgeverve.com), 58-59 (edgeverve.com); 26 TTABVUE 5-7 (celent.com). We agree with Applicant that we should not rely on Opposer being ranked first in Celent’s Big Leagues 2013: Core Platform Sales Ranking because it related to “sales performance in Asia-Pacific and Western Europe.” Id. at 52-56 (edgeverve.com & celent.com), Opposition No. 91225803 - 17 - strength within the banking industry, but not necessarily the broader relevant consumer base.21 Under the sixth du Pont factor, the record is devoid of evidence of third-party use or registration of similar marks on similar goods and services, and Applicant has admitted it is not aware of third-party marks beginning with FINAC- used in the financial services or financial software industries.22 Thus, Opposer’s marks do not appear to be commercially weak. In sum, because Opposer’s mark is conceptually strong with a modest degree of commercial strength, Opposer’s mark falls along the moderately strong side of the spectrum from very strong to very weak. D. Similarity of the Marks With respect to the marks, we must compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The proper comparison inquires “not whether the marks can be distinguished when subjected to a side-by- side comparison, but whether they are sufficiently similar in their overall commercial 21 Evidence pertaining to FINACLE on a global scale – and not specific to the United States – cannot be relied on for this factor. See, e.g., 24 TTABVUE 3 (testimony regarding global customer base). See Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991) (“Information concerning applicant’s foreign activities, including foreign trademark applications and/or registrations, is not relevant to the issues in an opposition proceeding.”); Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in mark in U.S.) 22 25 TTABVUE 7 (Applicant’s response to Interrogatory No. 10 stating it “is unaware that any third party has used a mark beginning with the letters FINAC- in connection with financial services or financial software.”). Opposition No. 91225803 - 18 - impression,” that source confusion is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). In fact, “marks ‘must be considered . . . in light of the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (citation omitted). The comparison of Opposer’s FINACLE standard-character mark to Applicant’s FINACULAR standard-character mark involves only the wording. Opposer’s mark includes a fairly nondescript design element consisting of a triangle in a red square, which we do not find significant in distinguishing the marks. Cf. In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“In particular, common geometric shapes such as circles, squares, rectangles, triangles and ovals, when used as backgrounds for the display of word marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the background design alone.”); Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB 1990) (a common geometric shape, particularly one serving as a carrier or background design element, is not usually considered distinctive). also features wording in an unremarkable stylized font, and Applicant’s standard-character mark could appear in the same font. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character form). Opposition No. 91225803 - 19 - The shared string of letters, FINAC-, coming at the beginning of Applicant’s and Opposer’s marks, followed immediately or shortly thereafter by the letter L, creates a visual resemblance between them and renders them phonetically similar, an important consideration in the analysis. See id. at 1911. The endings of the marks differ to such an extent that the marks would not likely be mistaken for one another, but they nonetheless could be perceived as variants of one another, coming from a common source. Overall, these marks look and sound somewhat similar, and consumers familiar with Opposer’s marks could perceive Applicant’s mark as a modification or extension of Opposer’s. The record lacks evidence that FINACLE and FINACULAR have any meaning. And to the extent that, as Applicant argues in another context, “FINACLE and FINACULAR both begin with the root ‘FINA,’ the same as the word ‘Finance,’” this would suggest in both marks the same “association with financial goods or services.”23 FINACLE and FINACULAR both are coined terms, and we find the connotation and commercial impression to be similar. Especially bearing in mind that Opposer’s marks are inherently distinctive and we lack any evidence of weakness, we deem Applicant’s mark sufficiently similar in appearance, sound, connotation and commercial impression to Opposer’s marks to weigh in favor of likely confusion. 23 32 TTABVUE 17 (Applicant’s Brief). Opposition No. 91225803 - 20 - E. Survey Evidence “Survey results may act as circumstantial evidence of likelihood of confusion, if the survey is designed and conducted using generally-accepted principles and methodology.” ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1247 (TTAB 2015). We accept that both parties’ survey experts, Opposer’s Melissa Pittaoulis, Ph.D., and Applicant’s Carl Fusco, qualify as experts in the conduct and assessment of likelihood of confusion surveys. Opposer submitted testimony about and evidence of a survey conducted by NERA Economic Consulting, under the direction of Dr. Pittaoulis.24 According to her testimony, she oversaw an online survey “using a variant of the ‘Squirt’ methodology,” conducted “in accordance with accepted survey research principles such as those listed in the Federal Judicial Center’s Manual for Complex Litigation and described in the Reference Manual on Scientific Evidence.”25 Online participation in this survey was facilitated by a market research firm that provides individuals who agree to take online surveys in exchange for incentives. For this survey of 208 in the test group and 200 in the control group, the individuals either were general consumers (consumer panel, approximately 50% of participants), people who work in accounting, finance, banking, real estate or mortgage professions 24 23 TTABVUE. 25 Id. at 3. See SquirtCo. v. Seven-up Co., 628 F.2d 1086, 207 USPQ 897 (8th Cir. 1980); Diamond, Shari S. 2011. “Reference Guide on Survey Research,” pp.359-423 in the Reference Manual on Scientific Evidence, Committee on the Development of the Third Edition of the Reference Manual on Scientific Evidence, Federal Judicial Center, National Research Council (hereinafter “Reference Guide on Survey Research”). Opposition No. 91225803 - 21 - (business panel, approximately 25% of participants), or small business owners (small business panel, approximately 25% of participants). These groups were intended to represent Applicant’s target market, deemed the relevant population for this type of survey.26 To qualify as survey participants, among other requirements, panelists had to indicate that within the next 12 months, they expect to purchase (for either personal or business use) computer software for accounting, project cost management, tax management, or personal finance management purposes, or that they expect to use an online finance and loan matching service, a website that matches consumers and businesses with lenders, or a website that allows users to process financial tasks.27 The marks at issue were presented as part of an array of brands, accompanied by a description of their goods and services, akin to a “line-up.” Participants were instructed to review a series of brand names and descriptions of products and services as though they were considering purchasing them. The test group reviewed FINACLE for some of Opposer’s goods and services, as well as some “distractor” brands and FINACULAR for some of Applicant’s goods and services. The control group did the same, except that Opposer’s FINACLE mark was replaced with FACULAR for the same selection of goods and services. Survey participants were asked if they thought any of the brands were from the same source as the first brand 26 Id. at 5-6. 27 Id. at 6. Opposition No. 91225803 - 22 - (FINACLE or FACULAR). Participants then were asked what makes them think that. Dr. Pittaoulis summarized the survey and results as follows: Test group respondents were shown the name FINACULAR and a description of the goods and services for which [Applicant] applied to register that name. Control respondents were shown the same description of goods and services, but the name FINACULAR was changed to FACULAR. Among the 208 test group respondents, 52.4 percent thought that FINACULAR was made by, associated with, or received permission from the company that makes FINACLE. Among the 200 control group respondents, the comparable percentage was 35.5 percent for FACULAR. Subtracting the control group percentage from the test group percentage yields a net confusion rate of 16.9 percent. In my professional opinion, this result is consistent with a finding of a likelihood of confusion.28 Applicant’s survey expert, Carl Fusco of Fusco Research & Consulting, did not conduct his own survey, but criticizes Dr. Pittaoulis’ survey as having “serious issues that negate the validity of the results in eight areas” described by Mr. Fusco as: • Universe that provided the base for sample selection • Screening questions lead to over inclusive sample • Biases based on quota sampling and unweighted data • Differences in product and service descriptions • Biases due to the choice of the name used in control group • Leading and confusing questions 28 Id. at 4 (¶ 9). Opposition No. 91225803 - 23 - • Failure to test the trademark as it appears in marketplace • Questions regarding the data analysis.29 Most of these criticisms do not undercut the validity or probative value of the survey. First, with respect to the universe of survey respondents, Applicant’s description of goods and services are broadly identified, and based on the identification on which we must rely, we agree with Opposer that therefore, there was “no need to screen out employees of large banks or financial institutions from the survey sample, as Applicant contends.”30 Nothing in Applicant’s identification renders such individuals ineligible or even unlikely to purchase the relevant goods and services. Second, we find the screening questions for the sample appropriate, as they screened for prospective purchasers or users of relevant goods and services within the next 12 months from the survey, a period of time we do not consider unduly long or prone to overstatement of intentions.31 While Applicant points to references in the screening questions to the purchase of computer software for other purposes such as “photo and video management” as reflecting improper over-inclusiveness, in fact prospective survey participants who selected only that option – or any other option 29 29 TTABVUE 4 (Fusco Declaration). 30 33 TTABVUE 4 (Opposer’s Reply Brief); see also 23 TTABVUE 17 (Pittaoulis Declaration) (“I disagree with Mr. Fusco that such respondents should be excluded. An institutional buyer who has an interest in the FINACULAR goods and services for their own personal use is part of the relevant market and should be eligible for the survey.”). 31 See 23 TTABVUE 18 (Pittaoulis Declaration). Opposition No. 91225803 - 24 - not relevant to the goods and services at issue in this case – were not included in the survey pool.32 Third, based on the survey methodology and data quality procedures described in Dr. Pittaoulis’ declaration testimony, which included preventing duplicative participants, we do not find anything amiss with the quota sampling of and weight given to various categories of prospective purchasers. For example, while Mr. Fusco contends “[t]here is no way to tell whether a respondent qualifies for overlapping sub- segments,”33 Dr. Pittaoulis’ testimony makes clear that digital fingerprinting technology precluded potential participants who attempted to take the survey more than once.34 And while Mr. Fusco criticizes the lack of weighting of various categories of prospective purchasers to match the actual makeup of the target market, he fails to offer specifics as to the nature of the alleged error and as to what the appropriate weighting should have been. Neither Applicant’s identification nor any evidence from Applicant (other than the general criticism from Mr. Fusco) suggests any error in this regard. Fourth, Mr. Fusco suggests that merely because he considers Applicant’s and Registrant’s goods and services so different, survey participants reporting a “connection” must be basing that solely on the similarity of names.35 Given that 32 Id. at 6 ¶15. 33 29 TTABVUE 12 (Fusco Declaration). 34 23 TTABVUE 12 (Pittaoulis Declaration). 35 29 TTABVUE 14 (Fusco Declaration). Opposition No. 91225803 - 25 - survey participants viewed the marks accompanied by a description of the goods and services, we find this criticism meritless. Fifth, we turn to the aspersions Applicant casts on the control used in the survey, the fictional mark FACULAR, which Mr. Fusco alleges lacked a basis in “any scientific or objective methodology.”36 Applicant complains that while FINACLE and FINACULAR “both begin with the root ‘FINA,’ the same as the word ‘Finance,’ suggesting an association with financial goods or services, “[t]he root ‘FAC’ is very different from ‘FINA’ and may not engender the same association with financial goods and services, thus suppressing potential association or confusion.”37 Other than Mr. Fusco’s assertion about “FINA” being the same root as in “finance,” Applicant points to no supporting evidence on this point, or on its greater relative significance in the marks as a whole. In response to the criticism of the control, Dr. Pittaoulis quotes the Reference Guide on Survey Research, noting that pursuant to its direction to select a control that shares many characteristics with the mark being tested, she kept the description of goods and services at issue, and selected a control with the same first letter (F) and the same ending (ACULAR).38 The parties are in agreement that the control should contain many of the same characteristics as Applicant’s mark, but while Applicant considers the FINA letter string essential to a proper control, Opposer counters that it is not. We agree that an optimal control mark would have 36 Id. 37 32 TTABVUE 17 (Applicant’s Brief). 38 23 TTABVUE 19 (Pittaoulis Declaration) (quoting Reference Guide on Survey Research, p.399.) Opposition No. 91225803 - 26 - shared the FINA component that Applicant’s and Registrant’s marks share in common, and we take this point into consideration in weighing the survey results. However, we also observe that the control obviously cannot share all of the characteristics of the mark being tested, and overall, the control appears to be reasonably in keeping with accepted survey methodology. Sixth, as to the questions in the survey, we agree with Applicant that the distractor brand names (INTACCT, MINT, QAPITAL, and XERO)39 also lack the FINA lettering. However, given that the survey questions clearly left open the possibility that a participant would respond that none of the brands displayed were made or put out by, or had the permission of, the FINACLE brand,40 we do not agree that these distractors necessarily enhanced the probability that participants would find an association with FINACULAR. As to the phrasing of the survey questions themselves, Applicant contends that the key question (“Do you think any of these brands are made or put out by the same company that makes or puts out the brand you saw first?”) was leading and biased because “FINACLE is always the brand seen first” and “[t]he impression is that it represents the ‘main’ brand in the study and that one of the subsequent brands is probably made or put out by the same company.”41 Applicant instead argues that “the design should have randomly changed the order of presentation, where FINACULAR 39 23 TTABVUE 9-10. 40 Id. at 10. 41 32 TTABVUE 18 (Applicant’s Brief). Opposition No. 91225803 - 27 - (or FACULAR in the Control cell) would be presented first and FINACLE included in the array of other ‘distractor’ brands.”42 We fail to see how the modification suggested by Applicant would solve the alleged problem. If we accept Applicant’s premise about the mark appearing first, under its alternative formulation, presumably FINACULAR or FACULAR would be viewed as the “main” brand and would give the impression that one of the subsequent brands (potentially Opposer or a distractor) is probably made or put out by the same company. Whether in its original formulation or in its modified formulation, participants would have the opportunity to compare Opposer’s and Applicant’s marks at issue among other distractor marks, and we see no reason that the formulation and consistent use of the key question constitutes a defect in the survey. See E. Deborah Jay, He Who Steals My Good Name: Likelihood- Of-Confusion Surveys in TTAB Proceedings, 104 Trademark Rep. 1141 (2014) (“Contemporary Squirt surveys often expose a respondent to the plaintiff's product in one room and then to an array or display of competitive products (including the defendant’s product) in another room. The survey then asks the respondent whether any of the products in the display come from the same source as the first product the respondent was shown.”); cf. ProMark Brands v. GFA Brands, 114 USPQ2d at 1248 (finding questions in Squirt survey to be leading because they provided only two stimuli -- the marks at issue in the proceeding -- and no other options). We also find no fault with the time period of at least 10 seconds required for participants to view the various marks, goods and services to prevent participants from merely clicking 42 Id. Opposition No. 91225803 - 28 - through the survey without actually reading the content. Applicant offers no evidence that this time period was inadequate.43 Seventh, Applicant correctly points out that the survey only addressed the standard-character word marks, and did not address Opposer’s mark or common law use of FINACLE with other elements. Our consideration of the survey therefore takes account of its scope, but given the minimal impact of the design component of Opposer’s mark on its source-indicating significance, we still find the survey results probative as to both Opposer’s pleaded marks. Eighth and finally, we are not persuaded by Mr. Fusco’s asserted concerns about the data analytics. We find that the questions he poses either are easily answered by Dr. Pittaoulis’ testimony,44 or concern matters that Applicant could have explored through discovery or cross-examination, such that they cannot serve as the source of legitimate complaint at this point.45 Turning at last to the results of the survey, 16.9% of participants believed that the FINACULAR mark is connected or affiliated with the same company that offers goods/services under the FINACLE mark. According to Opposer, this figure is 43 Mr. Fusco’s Declaration, on which Applicant relies, merely states, “the issue is whether 10 seconds was an adequate time for the respondent to read and comprehend each name and description completely and correctly,” without taking a position that the timeframe was inadequate. 29 TTABVUE 16 (Fusco Declaration ¶58). 44 For example, we agree with Opposer that the Pittaoulis Declaration overall provides clarity as to the basis for the percentages found in Table 3. See 23 TTABVUE 21 (Pittaoulis Declaration ¶70). 45 Applicant apparently did not elect to cross-examine Dr. Pittaoulis, or to seek discovery of the results of question 3 of the survey or “the raw data file,” the lack of which now is a source of criticism. 29 TTABVUE 19-20 (Fusco Declaration ¶¶70-72). Opposition No. 91225803 - 29 - comparable to levels of confusion found to be highly probative of the likelihood of confusion in other cases. Opposer cites Miles Labs, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445, 1457 (TTAB 1986) (“[S]urveys disclosing likelihood of confusion ranging from 11%-25% have been found significant.”); Sara Lee Corp. v. Mahmoud, Opp. No. 91162134 (TTAB Dec. 27, 2007) (non-precedential) (survey result of 17.7% “is well within the range of percentages that have been found in other cases to be sufficient to support a finding of likelihood of confusion”); Lon Tai Shing Co. v. Kock + Lowy, 19 USPQ2d 1081, 1097 (S.D.N.Y. 1991) (survey result of 18% confusion is “within the range of cognizable confusion recognized in this Circuit”). Applicant did not address the persuasiveness of the 16.9% figure in its brief, and Mr. Fusco did not address that point in his testimony. One commentator has noted, “survey confusion numbers that go below 20% need to be carefully viewed against the background of other evidence weighing for and against a conclusion of likely confusion. Where other evidence is supportive, courts have found a likelihood of confusion when survey results are between 10% and 20%.” 6 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 32:188 (5th ed. 2018). We find that in the context of the other evidence, and in light of our reasonable degree of confidence in the survey methodology, the 16.9% result weighs slightly in favor of likely confusion. However, we note that we would reach the same outcome in this case even without the survey evidence. Opposition No. 91225803 - 30 - IV. Conclusion Given the similarity of Opposer’s strong marks to Applicant’s mark, and the relatedness of their goods and services that move in some of the same channels of trade to the same classes of consumers, corroborated by Opposer’s survey result, we conclude that confusion is likely. Decision: The opposition is sustained.