Panacea Financial LLC

Trademark Trial and Appeal Board

Mar 18, 2022

88955564 (T.T.A.B. Mar. 18, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: March 18, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Panacea Financial LLC _____ Serial No. 88955564 _____ Kimberly D. Logue and Jamie Fugitt of PPGMR Law, PLLC, for Panacea Financial LLC. Bridget A. McCarthy, Trademark Examining Attorney, Law Office 125, Heather Biddulph, Managing Attorney. _____ Before Kuhlke, Greenbaum and Pologeorgis, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Panacea Financial LLC (“Applicant”) seeks registration on the Principal Register for the mark PANACEA FINANCIAL (FINANCIAL disclaimed) in standard characters for goods and services ultimately identified as: Downloadable mobile applications for searching, viewing, accessing, sharing, managing, providing, and completing banking, financing, loan, mortgage, credit, and other financial actions, in International Class 9; and Providing temporary use of on-line non-downloadable software and applications for users to search, view, access, share, manage, provide, and complete banking, financing, loan, mortgage, credit, and other financial actions; Serial No. 88955564 - 2 - Providing a web site featuring technology that enables users to search, view, access, share, manage, provide, and complete banking, financing, loan, mortgage, credit, and other financial actions, in International Class 42.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified goods and services, so resembles the registered mark PANACEA VENTURE (VENTURE disclaimed) in standard characters for: financial services, namely, venture capital investment firm services targeted at investments in companies in the healthcare and life sciences fields, in International Class 36,2 as to be likely to cause confusion. When the Section 2(d) refusal was made final, Applicant appealed and briefs have been filed. We affirm the refusal to register.3 I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 1 Application Serial No. 88955564, filed on June 9, 2020, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of an intention to use the mark in commerce. 2 Registration No. 5822437, issued on July 30, 2019. 3 Citations to TTABVUE throughout the decision are to the Board’s public online database that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first number represents the docket number in the TTABVUE electronic case file and the second represents the page number(s). Citations to the examination record refer to the USPTO’s online Trademark Status and Document Retrieval system (TSDR). Serial No. 88955564 - 3 - 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 [or services] and differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all [DuPont] factors for which there is record evidence but ‘may focus . . . on dispositive factors, such as similarity of the marks and relatedness of the goods [or services].”’) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Similarity/Dissimilarity of the Marks We compare the marks in their entireties as to “appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d Serial No. 88955564 - 4 - 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of 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, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, 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.” In re Nat’l Data, 224 USPQ at 751. The marks PANACEA FINANCIAL and PANACEA VENTURE begin with the identical word PANACEA. The additional words in the respective marks FINANCIAL and VENTURE are, at a minimum, merely descriptive and appropriately disclaimed. As such, they have limited source identifying significance. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)). Further supporting the dominance of the word PANACEA in each mark is the location as the first part of the marks. The first Serial No. 88955564 - 5 - word in the marks, PANACEA, is clearly the more dominant source identifying element in the marks. See In re Detroit Ath. 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”); Palm Bay Imps. Inc., 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) (upon encountering the marks, consumers will first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). Applicant argues that, although the additional wording is merely descriptive, it still serves to distinguish the marks because of the difference in length and cadence, and the difference in connotation. Applicant asserts VENTURE is descriptive of Registrant’s venture capital investment services in contrast to the word FINANCIAL in Applicant’s mark connoting “common, everyday financial services, such as banking, checking accounts, and home loans.” 4 TTABVUE 20. Despite the difference in appearance and any possible specific difference in connotation between investment and financial, we do not find these differences sufficient to overcome the identical nature of the source-identifying term located in the first position in each mark. We bear in mind that the “marks ‘must be considered . . . in light of the fallibility of memory.”’ In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. Serial No. 88955564 - 6 - 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ2d 1, 3 (CCPA 1977)). While a close side-by-side comparison of the marks could reveal the slight differences between them, that is not the proper way to determine likelihood of confusion, as that is not the way customers will view the marks in the marketplace. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); see also In re Solar Energy Corp., 217 USPQ 743, 745 (TTAB 1983) and cases cited therein; see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). In terms of appearance, sound, connotation, and commercial impression, we find the similarity of the marks - considered in their entireties - outweighs their dissimilarities. In view thereof, the similarity of these marks weighs in favor of a finding of likelihood of confusion. B. Relatedness of the Goods and Services, Trade Channels, Classes of Consumers and Conditions of Sale When considering the goods and services, trade channels, classes of consumers and conditions of sale, we must make our determinations based on the goods and services as they are identified in the application and cited registration. See In re Dixie Rests. Inc., 41 USPQ2d at 1534. See also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The issue is not whether the goods and services will be confused Serial No. 88955564 - 7 - with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods [or services] in question are different from, and thus not related to, one another in kind, the same goods [or services] can be related in the mind of the consuming public as to the origin of the goods.”). It is sufficient that Applicant’s goods and services and Registrant’s services are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000). We further observe that when the marks of the respective parties are highly similar, as is the case here, the relationship between the goods and/or services need not be as close to support a finding of likelihood of confusion. Cf. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). Registrant’s services are venture capital investment firm services targeted at investments in companies in the healthcare and life sciences fields. Applicant’s goods and services are mobile applications and non-downloadable software and applications for searching, viewing, accessing, sharing, managing, providing, and completing banking, financing, loan mortgage, credit, and other financial actions. Serial No. 88955564 - 8 - The Examining Attorney argues that Applicant’s and Registrant’s goods and services are related because they “are commonly offered by the same entity and marketed using the same trademark.” 6 TTABVUE 9. Moreover, the Examining Attorney points to the lack of any restriction in Applicant’s identification of goods and services as to the function or purpose of its goods and services in particular that the software can be used for “other financial services” which would include venture capital services because venture capital investment services are a type of financial service, as well as a type of financing service. 6 TTABVUE 11. To support this proposition the Examining Attorney submitted evidence in the form of printouts of third-party websites set forth below as summarized in the brief: • National Venture Capital Association, nvca.org, showing that venture capital firms provide funding and investments to startups, companies, projects, etc. • CB Insights, cbinsights.com, defining venture capital as a “financing tool for companies and an investment vehicle for institutional investors and wealthy individuals. In other words, it’s a way for companies to receive money in the short term and for investors to grow wealth in the long term.” • Investopedia, Investopedia.com, indicating that venture capital is a “type of financing that investors provide to startup companies and small business…Venture capital generally comes from well-off investors, investment banks, and any other financial institutions.” 6 TTABVUE 12.4 4 See January 7, 2021 Response, TSDR at 15-24 (National Venture Capital Association https://nvca.org) and February 9, 2021 Final Action, TSDR at 40 (Investopedia www.investopeida.com) and 52 (CB Insights www.cbinsights.com). Serial No. 88955564 - 9 - We further take judicial notice of the following definitions for the words “financing” and “venture capital”: Financing 1 the act of obtaining or furnishing money or capital for a purchase or enterprise, 2 the funds so obtained;5 Venture Capital 1 funds invested or available for investment in a new or unproven business enterprise.6 The Examining Attorney argues that “the broadly identified function of applicant’s software is related to the registrant’s narrower venture capital investment services. These functions could all be considered an ‘other financial action’ covered by Applicant’s broad wording of its software’s functions.” 6 TTABVUE 12. The Examining Attorney relies on several third-party websites to show “companies who offer non-downloadable software and websites that provide ‘other financial actions’ such as allowing users the ability to manage, view, search, and access their venture capital accounts and funds.” 6 TTABVUE 12. They are set forth below as summarized in the brief: • Aumni Investment Intelligence, offering a non- downloadable application and software that assists in searching, viewing, tracking, and accessing venture capital investments-a function that falls under the umbrella of software that performs “other financial actions”. 5 dictionary.com/browse/financing, retrieved March 11, 2022, based on RANDOM HOUSE UNABRIDGED DICTIONARY (2022). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 6 Dictionary.com/browse/venture-capital, retrieved March 11, 2022, based on RANDOM HOUSE UNABRIDGED DICTIONARY (2022). Serial No. 88955564 - 10 - • FounderSuite, offering a website and non- downloadable software for users to raise venture capital funds-a function that falls under the umbrella of software that performs “other financial actions”. • IHS Markit, offering non-downloadable software application for venture capital portfolio management--a function that falls under the umbrella of software that performs “other financial actions”. • Backstop Solutions, offering software application that assists users in venture capital raising-- a function that falls under the umbrella of software that performs “other financial actions”. 6 TTABVUE 13.7 In addition, the Examining Attorney asserts that even if Applicant’s goods and services “were not considered to encompass venture capital related financial actions, the goods and services provided by both Applicant and Registrant are commonly provided by the same entity and marketed under the same mark. Specifically, the evidence of record shows that companies offering venture capital services, also provide websites, mobile applications, and software (both downloadable and non- downloadable) in the field of banking, financing, and other financial fields…” 6 TTABVUE 13. The Examining Attorney relies on several third-party websites and registrations set forth below as summarized in the brief: • Bank of Ann Arbor, offering venture capital services as well as a financial mobile application and website that provides users with banking services such as the ability to deposit checks, manage accounts and seek out financial consulting services, mortgage 7 February 9, 2021 Final Action, TSDR and September 13, 2020 Non-Final Action, TSDR 8- 12. Serial No. 88955564 - 11 - loans, commercial financing, private banking, and venture capital services • Capital One, offering venture capital services, as well as, a mobile application and website for users to access traditional banking services, such as mobile deposit, credit checks, managing accounts, issuing credit cards, etc. • Citi Bank, offering venture capital services, and a downloadable mobile application and website offering users the ability to online bank, open a checking or savings account, apply for a credit card, etc. • Pacific Western Bank, offering venture lending services and a downloadable mobile application and website that users can use for banking to check balances, make transfers, pay bills, deposit checks, etc. • SVB, Silicon Valley Bank, offering a downloadable mobile application and website that allows users to participate in more traditional banking services as well as providing venture capital services, and other banking needs • Wells Fargo, offering a downloadable mobile application and website for a user’s banking needs, as well as providing fund investing and venture capital services, etc. • Registration Number 4899630, for the mark “CROWDBUREAU,” identifying venture capital services and other financial services, as well as, non- downloadable software and a website that provides various financial actions • Registration Number 5609406, for the mark “GUST” identifying information services in the field of finance and assisting others in venture capital endeavors while also providing non-downloadable software and a website to assist users in managing various financial actions Serial No. 88955564 - 12 - • Registration Number 5704299, for the mark “EVERY MINUTE MATTERS,” identifying downloadable mobile applications and non- downloadable software for investment advisory services, venture capital services, and other financial actions • Registration Number 5911724, for the mark “XXOOGO.COM,” identifying a downloadable mobile application for managing bank accounts and provides venture capital financing • Registration Number 6056174, for the mark SVB SILICON VALLEY BANK, identifying downloadable mobile applications for accessing and conducting banking and financial business; banking services, venture capital financing; and online non- downloadable software for conducting banking and financial business and obtaining information in the financial field • Registration Number 5918268, for the design mark, identifying downloadable mobile applications for accessing and conducting banking and financial business; banking services, venture capital financing; and online non downloadable software for conducting banking and financial business and obtaining information in the financial field • Registration Number 6164857, for the mark “SALUDA GRADE,” identifying online banking services by means of a downloadable mobile application, mobile banking services, and venture capital services in the nature of financing • Registration Number 5561561, for the mark “LIIV BANK”, identifying online banking services, online banking services via a downloadable mobile application, and venture capital services • Registration Number 6050763, for the mark “FOUNDERLY”, identifying venture capital financing, and non-downloadable software for connecting entrepreneurs and investors for venture capital purposes Serial No. 88955564 - 13 - • Registration Number 6131290, for the mark “ALLY”, identifying banking and financing services, online banking services, online banking services via a downloadable mobile application, and venture capital services 6 TTABVUE 14-16.8 Based on the website evidence and broad definition of the word “financing” we find that “venture capital investment firm services” are encompassed by Applicant’s identifications that include “financing” and “other financial actions” as part of the purpose and function of the goods and services (i.e., use of online and mobile applications in connection with venture capital services). As the Examining Attorney explains “Applicant’s software goods and services perform multiple functions that include ‘searching, viewing, accessing, sharing, managing, providing, and completing banking, financing, loan, mortgage, credit, and other financial actions’. These other financial actions could realistically include managing one’s venture capital investments, accessing venture capital funds, providing venture capital funds.” 6 TTABVUE 20. In addition, the record shows that venture capital financing also employs the use of online and mobile applications. 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. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). 8 See February 9, 2021 Final Action, TSDR at 7-38, 63-107. Serial No. 88955564 - 14 - Moreover, because there are no limitations or restrictions as to trade channels or classes of purchasers in the respective identifications of goods and services (other than the field in Registrant’s mark, i.e., healthcare and life sciences, which is encompassed by Applicant’s identification), we presume that the goods and services are or would be marketed in all normal trade channels for such goods and services and to all normal classes of purchasers of such goods and services. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000). The third-party websites show Applicant’s and Registrant’s goods and services travel in some of the same trade channels and are offered to some of the same consumers. Applicant argues that the respective services are “narrowly tailored and there is no overlap between the two” asserting that Applicant “offers traditional banking services to physicians and other medical professionals.” 4 TTABVUE 13. However, as discussed above, Applicant’s goods and services are not limited in this manner. In addition, Applicant’s arguments regarding the actual channels of trade for Applicant and Registrant misses the mark. Actual use cannot be used to restrict the scope of the broad registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (Board must “give full sweep” to an identification of goods regardless of registrant’s actual business); In re Bercut- Vanderboort & Co., 229 USPQ 763, 764-765 (TTAB 1986) (“[T]he question of likelihood of confusion must be determined by an analysis of the marks as applied to the goods [and services] identified in the application vis-à-vis the goods [and services] Serial No. 88955564 - 15 - recited in the registration, rather than what extrinsic evidence shows those goods to be.”). Applicant takes issue with the third-party registrations contending that they “largely contain marks whose services are limited to investment services such as venture capital” and do not include “banking services.” 4 TTABVUE 14. However, some of the examples do include “banking services.” Moreover, Applicant’s identification includes goods and services that encompass more than simply “traditional banking services.” In terms of conditions of sale, Applicant argues that its identified services are not offered to the general public. In fact, Applicant’s goods and services are not limited to a specific type of consumer. However, Registrant’s identification, which are targeted to consumers for venture capital firm services in the healthcare and life sciences field, would be limited to investors and those seeking venture capital financing in those fields. Such consumers would exercise a higher level of care.9 However, given the highly similar marks and closely related goods and services, we find this factor does not outweigh the other factors. Finally, Applicant points to a non-precedential Board opinion involving “hedge funds for high net worth individuals and entities” and “commercial lending services for the commercial mortgage and financial asset management industries” where the Board reversed a refusal under Section 2(d) finding significant differences between 9 See February 9, 2021 Final Office Action, TSDR at 40 (www.investopedia.com describing venture capital investment process). Serial No. 88955564 - 16 - the nature of the services and high level of sophistication of purchasers. In re Bridger Management, LLC, Serial No. 78516349 (December 28, 2007). Non-precedential opinions are not binding on the Board; moreover, we are not persuaded by this opinion inasmuch as the facts and record in that proceeding (hedge funds v. lending) are very different from this one where Applicant’s identification includes the broad wording “financing” and “other financial actions.” In re Tapio GmbH, 2020 USPQ2d 11387, at *10 n.30 (TTAB 2020). Moreover, as is often stated, each case must stand on its own record. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits.”). II. Conclusion In sum, we hold that, despite a higher level of care in the overlapping consumers, because the marks are highly similar, the goods and services are closely related, and the trade channels and classes of consumers overlap, confusion is likely between Applicant’s mark PANACEA FINANCIAL and Registrant’s mark PANACEA VENTURE. Decision: The refusal to register Applicant’s mark is affirmed under Trademark Act Section 2(d) in each class.