Riskwise L.L.C.

Trademark Trial and Appeal Board

Aug 6, 2004

No. 76007040 (T.T.A.B. Aug. 6, 2004)

Hearing:
May 12, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Riskwise L.L.C.
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Serial No. 76007040
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Carla C. Calcagno of Rothwell, Figg, Ernst & Manbeck.
Catherine Pace Cain, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Hanak, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Riskwise L.L.C. (applicant) seeks to register in typed
drawing form CHARGEBACK DEFENDER for “providing credit
verification and risk assessment services, namely,
providing information on the likelihood of a credit card
transaction being charged back to a merchant.” The
application was filed on March 22, 2000 with a claimed
first use date of January 1, 1999.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB
8-6-2004
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applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with three marks owned by the
same entity. The first is BANKRUPTCY DEFENDER (2,352,406)
registered for “financial forecasting services, financial
research services and providing financial information
regarding the likelihood of individuals declaring
bankruptcy.” The second is COLLECTIONS DEFENDER
(2,379,978) registered for “financial forecasting,
financial research, and financial information services to
card issuers regarding the likelihood of future payments on
delinquent accounts.” The third is ATTRITION DEFENDER
(2,496,603) registered for “providing financial
forecasting, financial research, and financial information
services by electronic means to card issuers regarding the
likelihood that particular card holders will drop from the
issuer’s portfolio.”
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs and were present at a hearing held on
May 12, 2004.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
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1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
Considering first the marks, obviously there is some
similarity in that all four marks contain the word
DEFENDER. However, this is the only point of similarity.
Each of the four marks begin with words which are very
different in terms of visual appearance, pronunciation and
meaning. This is “a matter of some importance since it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”
Presto Products v. Nice-Pak Products, 9 USPQ2d 1895, 1897
(TTAB 1988). In short, there is only limited similarity
between applicant’s mark and the three registered marks.
At pages 11 and 12 of her brief, the Examining
Attorney makes the following comments: “It is assumed that
consumers of the services provided under the mark
COLLECTIONS DEFENDER would also be aware of the services
under ATTRITION DEFENDER and vice versa … [and that] it is
also assumed that these consumers would be aware of the
services provided with BANKRUPTCY DEFENDER.” (emphasis
added). Continuing, the Examining Attorney surmises that
because registrant owns registrations for three marks each
Ser. No. 76007040
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containing the word DEFENDER that “therefore consumers are
likely to think that [applicant’s] mark CHARGEBACK
DEFENDER, for financial forecasting services, is used by
the registrant to target another market sector.” (Examining
Attorney’s brief page 12). (emphasis added). While never
using these words, the Examining Attorney is in essence
making a “family of marks” argument. This doctrine holds
that “even though [an applicant’s] mark may not be that
close to any one member of the [registrant’s] family, it
[applicant] may have used the distinguishing [registrant’s]
family ‘surname’ or characteristic so as to be likely to
cause confusion.” 3 J. McCarthy, McCarthy on Trademarks
and Unfair Competition, Section 23:61 at page 23-137 (4th
ed. 2002). However, in order to prove the existence of
registrant’s purported family of marks, the Examining
Attorney would have to establish that registrant’s family
members have been so extensively used and advertised
together such that the family surname, in this case
DEFENDER, “is recognized by consumers as an identifying
trademark [or service mark] in and of itself when it
appears in a composite.” Id. In this case, the Examining
Attorney has utterly failed to prove that registrant has a
family of marks. Examining Attorney has not proven that
any one of registrant’s three marks is in use. Moreover,
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the Examining Attorney has certainly not proven that any
one of registrant’s three marks has been extensively used
and advertised. Finally, the Examining Attorney has most
certainly not proven that registrant’s three marks have
been extensively used and advertised together such that the
family surname DEFENDER is recognized as a service mark in
and of itself. Indeed, the Examining Attorney concedes
this total failure of proof when in her argument she merely
states that it is assumed that consumers would be aware of
all of registrant’s three marks.
We now turn to a consideration of the relationship
between applicant’s services and registrant’s services.
The record reflects that the users of registrant’s services
are credit card issuers who seek information on the
likelihood of individuals declaring bankruptcy, being
delinquent in payments or discontinuing use of issuers’
cards. Indeed, the registrations for COLLECTIONS DEFENDER
and ATTRTITION DEFENDER specifically state that the
services are provided “to card issuers.”
On the other hand, applicant’s customers are not card
issuers, but rather are merchants who accept credit cards.
Applicant provides to merchants information regarding the
likelihood of whether a credit card holder will charge back
to the merchant a credit card purchase.
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In short, there is little if any overlap between
registrant’s customers and applicant’s customers. Without
any meaningful overlap, there simply can be no likelihood
of confusion. Indeed, our primary reviewing Court found
that there was no likelihood when the virtually identical
marks (EDS and E.D.S.) were used on goods and services that
were marketed to the very same companies because opposer
had failed to prove that the same individuals in these
companies purchased both opposer’s goods and applicant’s
services. Electronic Design & Sales v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388, 1391. (“Thus,
although the two parties conduct business not only in the
same fields but also with some of the same companies, the
mere purchase of goods and services of both parties by the
same institution does not, by itself, establish similarity
of trade channels or overlap of customers.”). To the
extent that the registration for BANKRUPTCY DEFENDER does
not contain explicit language limiting the users of the
services to credit card issuers, by the same token, the
Examining Attorney has failed to prove that there is
customer overlap between providing financial information
regarding the likelihood of individuals declaring
bankruptcy (BANKRUPTCY DEFENDER) and providing information
on the likelihood of a credit card transaction being
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charged back to a merchant (CHARGEBACK DEFENDER). To the
extent that there may be some slight customer overlap
involving the services associated with these two marks, we
note that our primary reviewing Court has stated that “we
are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.” Electronic
Design, 21 USPQ2d at 1391 (emphasis added).
Given the fact that applicant’s mark is only slightly
similar to registrant’s three marks, and the fact that
there is little if any customer overlap, we find that there
exists no likelihood of confusion. This is particularly
true given the fact that both registrant’s services and
applicant’s services are not provided to ordinary
consumers, but rather are provided to sophisticated credit
card issuers and merchants. As has been said repeatedly,
purchaser “sophistication is important and often
dispositive because sophisticated consumers may be expected
to exercise greater care.” Electronic Design, 21 USPQ2d at
1392.
Decision: The refusal to register is reversed.
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