Sisung Investment Manage-ment Services, Inc.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 75107548 (T.T.A.B. Dec. 28, 1999)

Paper No. 11
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sisung Investment Management Services, Inc.
________
Serial No. 75/107,548
_______
Seth M. Nehrbass of Garvey, Smith, Nehrbass & Doody, LLC
for Sisung Investment Management Services, Inc.
Patricia A. Horrall, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney)
_______
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sisung Investment Management Services, Inc. has
appealed from the refusal of the Trademark Examining
Attorney to register EPIC as a mark for “mutual fund
investment management services; mutual fund investment
consultant services; and mutual fund investment advising
Ser. No. 75/107,548
2
services."1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant’s mark so resembles the marks
EPIC ASSET MANGEMENT (with “Asset Management” disclaimed)
for “asset and investment management services, real estate
and property management services, and brokerage services,
namely real estate”2, owned by John Stephanus, and EPICS for
“financial services in the nature of an investment
security,”3 owned by Bear, Stearns & Co. Inc., that if used
on applicant’s identified services it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed briefs
on the case. An oral hearing was not requested.
In any determination of likelihood of confusion, two
key factors are the similarity of the marks and the
similarity of the goods. Turning first to the marks,
applicant’s mark is virtually identical to the registered
mark EPICS. The only difference between them is that the
registered mark is the plural form of EPIC, but this slight
difference is not sufficient to distinguish the marks.

1 Application Serial No. 75/107,548, filed May 21, 1996, and
asserting a bona fide intention to use the mark in commerce.
2 Registration No. 1,935,977, issued November 14, 1995.
3 Registration No. 2,034,112, issued January 28, 1997.
Ser. No. 75/107,548
3
They are substantially the same in appearance, sound, and
connotation, and convey the same commercial impression. As
for the registered mark EPIC ASSET MANAGEMENT, again this
mark conveys the same commercial impression as EPIC.
Although marks must be compared in their entireties, it is
well established that there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). In this case, EPIC is the dominant part of the mark
EPIC ASSET MANAGEMENT, the disclaimed term “asset
management” being descriptive of the services.
Turning to the services, applicant’s identified mutual
fund investment management, consultant and advising
services are encompassed within the “asset and investment
management services” identified in the registration for
EPIC ASSET MANAGEMENT. Thus, we must consider applicant’s
and this registrant’s services to be, in part, legally
identical. Moreover, the evidence of record shows that
these services, even if considered to be different, are
related. The Examining Attorney has made of record third-
party registrations showing that a single mark has been
registered for, inter alia, investment management services
Ser. No. 75/107,548
4
and mutual fund investment services.4 As for the financial
services in the nature of an investment security identified
in the registration for EPICS, the Examining Attorney has
also submitted evidence to show that these services and
those identified in applicant’s application are related.
Specifically, the Examining Attorney has made of record
third-party registrations which show that a single mark has
been registered for financial services in the nature of an
investment security and for, inter alia, mutual fund
investment services.5 Although third-party registrations
are not evidence that the marks shown therein are in
commercial use, or that the public is familiar with them,
nevertheless third-party registrations which individually
cover a number of different items and which are based on
use in commerce may have some probative value to the extent
that they serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Applicant argues that the customers who utilize the
services of applicant and of the owners of the cited

4 See, for example, Registration Nos. 1,972,186; 1,853,818;
1,969,379; and 2,078,379.
5 See, for example, Registration Nos. 1,853,818; 2,040,086; and
2,052,150.
Ser. No. 75/107,548
5
registrations are relatively sophisticated, and will not be
confused as to the source of the services because they know
the difference between these different types of services.
Applicant also asserts that applicant’s services are only
available to customers who are able to invest $100,000 or
more.
There are several problems with applicant’s position.
First, the question is not whether consumers will recognize
that there are differences among the services, but whether
they are likely to believe that applicant’s services
emanate from the same source as either of those in the
cited registrations. Second, although applicant may
require its consumers to make a $100,000 investment, such a
requirement is not reflected in the identification of
services. Thus, we must consider applicant’s services to
be available to anyone with a need for mutual fund
investment management services, mutual fund investment
consultant services, or mutual fund investment advising
services. Third, although consumers of the services
identified in the two registrations and the application may
be said to be careful, we cannot accept applicant’s
position that they are sophisticated. Many Americans, such
as those who are able to take advantage of employment
retirement plans, invest in various financial tools,
Ser. No. 75/107,548
6
including mutual funds; such investments are not limited to
the wealthy or highly sophisticated investor.
Applicant also asserts that confusion is not likely
because four registrations for marks containing the word
EPIC have issued to four different entities. Applicant did
not provide registration numbers for, or copies of, these
registrations,6 but apparently the Examining Attorney was
able to locate pertinent information about them. As the
Examining Attorney has pointed out, two of the
registrations are the ones which have been cited against
applicant’s application, one has expired, and the fourth is
for “brokerage services in the field of exportation of wood
products,” services which are very different in nature from
the services identified in applicant’s application and the
cited registrations.
Thus, the only relevant registrations for EPIC marks
are the two which have been cited against applicant’s
application. The fact that EPICS was registered despite
the existence of the registration for EPIC ASSET MANAGEMENT

6 Ordinarily a mere listing of marks and services, as applicant
has provided, would not be sufficient to make them of record.
However, because the Examining Attorney did not object, but
treated them of record, we will deem them to have been stipulated
into the record. Nevertheless, because applicant did not provide
registration numbers the Board must rely on the information
provided by the Examining Attorney as to the status of the
registrations.
Ser. No. 75/107,548
7
does not prove that applicant’s mark EPIC can coexist with
these registrations and not be likely to cause confusion.
We do not have the file of the EPICS registration before
us, and therefore cannot ascertain what factors went into
the Examining Attorney’s decision to approve that
application. For example, there may have been a consent by
the owner of the EPIC ASSET MANAGEMENT registration. In
any event, the fact that there are two registrations for
EPIC/EPICS marks for various financial services does not
persuade us that EPICS and EPIC ASSET MANAGEMENT are such
weak marks that applicant’s use of EPIC for mutual fund
investment management services, mutual fund investment
consultant services, and mutual fund investment advising
services is not likely to cause confusion.
Decision: The refusal of registration is affirmed
with respect to both of the cited registrations.
E. J. Seeherman
B. A. Chapman
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board