Martin Nachemson

Trademark Trial and Appeal BoardJun 7, 2021

88217783 (T.T.A.B. Jun. 7, 2021)

This Opinion is not a Precedent of the TTAB Mailed: June 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Martin Nachemson _____ Serial No. 88217783 _____ David B. Sunshine and Brianne L. Polito of Cozen O’Connor P.C., for Martin Nachemson. William H. Dawe, III, Trademark Examining Attorney, Law Office 108, Kathryn E. Coward, Managing Attorney. _____ Before Wellington, Kuczma and English, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Martin Nachemson (“Applicant”) seeks registration on the Principal Register of the mark PROSPERIAN WEALTH MANAGEMENT (in standard characters) for: Financial advisory and consultancy services; Financial planning; Financial services, namely, wealth management services; Insurance planning services, namely, insurance consultation in International Class 36.1 1 Application Serial No. 88217783 was filed on December 5, 2018, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as November 1, 2011, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). “WEALTH MANAGEMENT” is disclaimed. Serial No. 88217783 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No. 4493497, owned by Steven M. Booren dba Prosperion Financial Advisors (“Registrant”), for the standard character mark PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE., “FINANCIAL ADVISORS” disclaimed, for “financial advice” in International Class 36, as a bar to registration. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. Applicant and the Examining Attorney have filed briefs. We affirm the refusal to register. I. Likelihood of Confusion Our determination under § 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion enunciated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 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 or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 Page references to the application record refer to the online database of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Serial No. 88217783 - 3 - USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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.”). We have considered each DuPont factor for which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.”); see also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered). A. Similarity of the Services, Channels of Trade and Classes of Customers We initially address the second DuPont factor, the relatedness of the services, and the third DuPont factor, the channels of trade and classes of customers. The question of likelihood of confusion is determined based on the description of the services in the application and registration at issue, not on extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computs. Serial No. 88217783 - 4 - Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Applicant’s services include “financial advisory and consultancy services” and Registrant’s services are “financial advice,” thus, their services are essentially the same and legally identical. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods or services within a particular class in the application. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019). Turning to the trade channels, because the services are legally identical in part, we must presume that at least those services will be offered in the same channels of trade to the same classes of purchasers. See Cai v. Diamond Hong, 127 USPQ2d at 1801 (“[T]he TTAB properly followed our case law and “presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods [or services] ….”) (citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968). See also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1740 (TTAB 2016). In view of the foregoing, the services are identical in part, travel in the same trade channels and are sold to the same classes of customers, supporting a likelihood of confusion under the second and third DuPont factors. Serial No. 88217783 - 5 - B. Similarity of the Marks It is well settled that marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression. Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re Viterra, 101 USPQ2d at 1908. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, 127 USPQ2d at 1801 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Without the benefit of a side-by-side comparison, it is highly Serial No. 88217783 - 6 - unlikely that a customer exposed to Applicant’s mark on one day and Registrant’s mark at a later time, or vice versa, would recall the differences between the marks. The Examining Attorney contends that because of the similarity of the wording PROSPERIAN WEALTH MANAGEMENT in Applicant’s mark and PROSPERION FINANCIAL ADVISORS in Registrant’s mark, it is likely that a potential consumer seeking financial related services from either PROSPERIAN WEALTH MANAGEMENT or PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE. would confuse one for the other.2 Applicant counters that the marks “are substantially different in appearance, sound, and commercial impression.”3 Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis should not be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). However, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature 2 Examining Attorney’s Brief at 8 TTABVUE 9. 3 Applicant’s Brief p. 2 (6 TTABVUE 6). Serial No. 88217783 - 7 - of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. The first term in Applicant’s mark, i.e., “PROSPERIAN,” is nearly identical in appearance to the first term in the cited registration, “PROSPERION,” the only difference being that the letter “A” is substituted in place of the letter “O” in the last syllable of Applicant’s mark. With this minor difference, the terms PROSPERIAN and PROSPERION are also phonetic equivalents or near phonetic equivalents. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. See Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (similarity in sound between ICE SHINE and ISHINE is so substantial that it outweighs any differences in appearance and meaning, we find that the marks engender similar overall commercial impressions); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (“the term ‘SEYCOS’ is simply so close in appearance and pronunciation to ‘SEIKO’ as to make source confusion inevitable when the marks are used in connection with identical goods”); In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983) (the linguistic component of applicant’s mark ENTELEC & design and the mark in the cited registration INTELLECT are similar in appearance, substantially identical in pronunciation, contain the same number of syllables and have the same stress pattern, with the primary accent on the initial syllable. . . . noting the final “T” in the registered mark, which is the only sound which serves to distinguish the marks when they are vocalized is discernible only if the mark is perfectly pronounced). Serial No. 88217783 - 8 - Thus, Applicant’s and Registrant’s marks are similar in that the first word of each is nearly identical in appearance and sound and is most likely “to be impressed upon the mind of the purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also Palm Bay Imps. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). The addition of the descriptive wording WEALTH MANAGEMENT in Applicant’s mark, and FINANCIAL ADVISORS CARE BEYOND ADVICE. in Registrant’s mark, does not suffice to distinguish the marks. If an important portion of both marks is the same, then the marks may be confusingly similar notwithstanding some differences. The initial terms PROSPERIAN and the phonetically equivalent PROSPERION are likely to make the greater impression upon customers, be remembered by them, and used by them to refer to or request financial services. Serial No. 88217783 - 9 - Turning to the meaning of the terms, Applicant submits definitions of the “prosper” and “ion” portions of the leading term PROSPERION in Registrant’s mark which, according to Applicant, “is a combination of the terms ‘prosper’ which means ‘to achieve economic success’ and the suffix –ion, which means ‘a state or condition’ or ‘act or process.”4 Therefore, according to Applicant, the “Cited Mark, PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE[.] means, the act, process, or state of achieving economic success through holistic financial advising services that transcends basic advice.”5 Applicant explains that the term PROSPERIAN in his mark refers to the “Prosperian Tree” as explained on his website6: The Prosperian Tree is our symbol. Its story is very much our story. We help cultivate, nurture, grow, and protect our clients’ assets – and, over time allow them to build deep roots, mature and gain strength for the future. Sturdy trees can live for generations. They grow bigger and stronger over time and, with great care, can provide shelter from life’s storms. Additionally, Applicant contends that his “website contains a tree symbol near the PROSPERIAN WEALTH MANAGEMENT mark. See Exhibit A showing the same. Therefore, Applicant’s Mark creates the commercial impression that Applicant’s wealth management services help to cultivate, nurture, and grow their client’s 4 Applicant’s Brief p. 4 (6 TTABVUE 8) referring to definitions of “prosper” and “ion” submitted as Exhibit B attached to March 5, 2020 Response to Office Action at TSDR 8, 9; September 30, 2020 Request for Reconsideration at TSDR 10-11. 5 Applicant’s Brief p. 4-5 (6 TTABVUE 8-9). 6 Applicant’s Brief p. 4 (6 TTABVUE 8) citing to Exhibit A attached to March 5, 2020 Response to Office Action at TSDR 6; September 30, 2020 Request for Reconsideration at TSDR 8. Serial No. 88217783 - 10 - assets.”7 However, Applicant’s Exhibit A8 does not display any tree symbol. Even if it did, the tree symbol is not part of the mark he seeks to register and therefore is not pertinent to the issue of likelihood of confusion. Despite the fact that there is a definition for “prosper,” we find no dictionary definitions for either the term “prosperian” or “prosperion.” Additionally, Registrant’s Registration certificate contains the statement that “[t]he wording ‘Prosperion’ has no meaning in a foreign language,” which supports that “prosperion” is not a defined English term because if it were, the statement that it has no meaning in a foreign language would not be required.9 In view of the foregoing, it is likely that the terms “prosperian” and “prosperion” in Applicant’s and Registrant’s marks are coined terms. To the extent that such terms are made-up or coined, it is even more likely that confusion would arise as they differ by only one letter found near the end of each term. Thus, PROSPERIAN and PROSPERION are not well recognized or readily known words and therefore are likely to be conceived as similar, if not identical. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data, 224 USPQ at 751. Thus, the individual components of a mark may be weighed to determine its overall commercial impression. In re Detroit Athletic, 128 USPQ2d at 1050 (“[Regarding the issue of 7 Applicant’s Brief p. 4 (6 TTABVUE 8). 8 See Exhibit A attached to March 5, 2020 Response to Office Action at TSDR 6; September 30, 2020 Request for Reconsideration at TSDR 8. 9 See TMEP § 1207.01(b)(vi)(A). Serial No. 88217783 - 11 - confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data, 224 USPQ at 751)). Moreover, the disclaimed matter that is descriptive of or generic for Applicant’s and Registrant’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic, 128 USPQ2d at 1050 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)). Accordingly, the descriptive wording “WEALTH MANAGEMENT” in Applicant’s mark and “FINANCIAL ADVISORS” in Registrant’s mark is less significant than the initial wording PROSPERIAN/PROSPERION in establishing the overall commercial impression of Applicant’s and Registrant’s marks. Further, the descriptive terms “WEALTH MANAGEMENT” and “FINANCIAL ADVISORS” used by Applicant and Registrant convey the same idea, stimulate the same mental reaction, and have the same overall meaning, of assisting customers in handling their financial assets, therefore conveying the same commercial impression. Applicant contends another difference between the marks is the presence of the catch phrase “CARE BEYOND ADVICE.” located at the end of Registrant’s mark. Applicant argues that the Examining Attorney has not provided any evidence in support of his position that Registrant’s mark creates a commercial impression that the term “PROSPERION FINANCIAL AVDISORS” is separate from the catch phrase Serial No. 88217783 - 12 - “CARE BEYOND ADVICE.”10 However, given the meaning and commercial impression of the wording in Applicant’s mark PROSPERIAN WEALTH MANAGEMENT, and in Registrant’s mark PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE., it is likely that a potential customer seeking financial related services would focus on the dominant first term in the marks confusing one for the other, particularly because that dominant term is followed by descriptive phrases conveying a similar commercial impression. We find the phrase “CARE BEYOND ADVICE.” at the end of Registrant’s mark a secondary tagline that is consistent with the commercial impression imparted by the common dominant term and following descriptive phrases found in both marks. Additionally, the “period” at the end of “CARE BEYOND ADVICE.” is not verbalized and does not distinguish Registrant’s mark from Applicant’s mark in sound or meaning. In general, differences in punctuation fail to obviate the similarities in sounds, meaning and commercial impression of an applicant’s and a cited registrant’s marks. See, e.g., Nahshin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1258 n.2 (TTAB 2013) (“the presence or absence of a hyphen is insignificant to our . . . 10 Applicant’s Brief p. 5 (6 TTABVUE 9); see also Examining Attorney’s argument at 8 TTABVUE 9, 13-14. “As demonstrated by the attached page from registrant’s website, registrant’s use of the catch phrase CARE BEYOND ADVISE [sic] appears distinctly separate and apart from the wording PROSPERION FINANCAL ADVISORS.” 8 TTABVUE 9. “Accordingly, a potential consumer of registrant’s identified financial services is likely to place more significance on the wording PROSPERION FINANCIAL ADVISORS when calling for registrant’s financial services. Moreover, because of the similarity of the wording PROSPERIAN WEALTH MANAGEMENT and PROSPERION FINANCIAL ADVISORS, it is likely that a potential consumer seeking financial related services from either PROSPERIAN WEALTH MANAGEMENT or PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE[.] would confuse one for the other.” 8 TTABVUE 13-14. Serial No. 88217783 - 13 - decision”); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen did not distinguish MAGNUM from MAG-NUM); Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (“Fast-Finder” with hyphen is substantially identical to “Fastfinder” without hyphen); cf. In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (punctuation marks in the mark CAESAR!CAESAR! do not significantly change commercial impression of the mark). Such is the case here where the period at the end of Registrant’s mark does not alter the meaning of its literal terms. See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 807.14(c) (Oct. 2018) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”). II. Conclusion Based on the record, the services are legally identical in part, travel through the same trade channels and are purchased by the same classes of customers. The near identity of the source-identifying dominant first terms PROSPERIAN in Applicant’s mark PROSPERIAN WEALTH MANAGEMENT, and PROSPERION in the cited mark PROSPERION FINANCIAL ADVISORS CARE BEYOND ADVICE., render the marks similar in part with respect to appearance and sound, and highly similar overall with respect to commercial impression. Taken as a whole, the similarities in Applicant’s mark and the cited mark outweigh any dissimilarities. Moreover, when the goods or services are identical in-part and closely related, as they are in this case, the degree of similarity between the marks necessary to support a determination that Serial No. 88217783 - 14 - confusion is likely declines. See In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Morinaga, 120 USPQ2d at 1740-41 (TTAB 2016); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). Therefore, we find a likelihood of confusion between Applicant’s mark and the cited mark for the identified services. Decision: The refusal to register Applicant’s mark PROSPERIAN WEALTH MANAGEMENT under § 2(d) of the Trademark Act is affirmed.