SmartMo-ney

Trademark Trial and Appeal Board

Sep 30, 2002

No. 75904311 (T.T.A.B. Sep. 30, 2002)

September 30, 2002
Oral Hearing: Paper No. 15
August 1, 2002 GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
_______
In re SmartMoney
_______
Serial No. 75/904,311
_______
Vincent N. Palladino and Kristen L. Fancher of Fish & Neave for
SmartMoney.
Branden Richie, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______
Before Quinn, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
SmartMoney has filed an application to register the
mark "SMARTMONEY" for "computer software for providing
investment, business and financial news and information via the
global computer network, via local computer networks, and for use
on personal computers, excluding programs designed for academic
use for students."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
1 Ser. No. 75/904,311, filed on January 27, 2000, based on an
allegation of a bona fide intention to use such mark in commerce. On
December 19, 2000, applicant amended the application to identify the
goods as set forth above and, by an amendment to allege use, claimed a
date of first use anywhere and first use in commerce of January 25,
2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/904,311
2
applicant's mark, when used in connection with its goods, so
resembles the mark "SMART MONEY," which is registered for
"interactive computer programs for educational use, and
instructional manuals sold as a unit therewith,"2 as to be likely
to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), two key considerations in any
likelihood of confusion analysis are the similarity of the goods
and the similarity of the marks.3 Additionally, as reflected in
this case by the implied consent to registration arising from the
detailed provisions of a prior settlement agreement, the market
interface between applicant and the owner of the mark which is
the subject of the cited registration, namely, Beneficial
Franchise Company, Inc. ("Beneficial"), is a factor which is
entitled to "substantial weight ... as evidence that likelihood
2 Reg. No. 2,095,401, issued on September 9, 1997, which sets forth a
date of first use anywhere and first use in commerce of September
1991.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/904,311
3
of confusion does not exist." In re Four Seasons Hotels Ltd.,
987 F.2d 1565, 26 USPQ2d 1071, 1074 (Fed. Cir. 1993).
Turning first to consideration of the respective marks
and goods, we agree with the Examining Attorney that applicant's
"SMARTMONEY" mark is identical, as a practical matter, to
registrant's "SMART MONEY" mark in sound, appearance, connotation
and overall commercial impression. The Examining Attorney
argues, in view thereof, that the relationship between the goods
at issue "need not be as close to support a finding of likelihood
of confusion as might apply where differences exist between the
marks," citing Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981) and TMEP §1207.01(a).
In any event, as his principal argument, the Examining
Attorney further contends that in light of the definition of
record of the term "educational" in The American Heritage
Dictionary of the English Language (3rd ed. 1992) as an adjective
meaning, inter alia, "2. Serving to educate; instructive: an
educational film," registrant's registration "encompasses all
types of computer programs for 'educational use'" in that it
"includes any type of software that serves an instructive
purpose." Likewise, the Examining Attorney asserts, applicant's
computer software "is instructive in nature" because it "is for
providing investment, business and financial news and
information" (italics in original).4 Thus, according to the
4 The Examining Attorney, in support of his position, additionally
insists that the copies of 26 third-party registrations which he has
made of record "show that software for educational use frequently
contains informational functions." Specifically, the Examining
Attorney urges that the language "computer software for providing
Ser. No. 75/904,311
4
Examining Attorney, "[s]oftware that provides information is
instructive in nature and certainly falls within the scope of the
registrant's software for 'educational use.'"
As to applicant's limitation of the identification of
its goods by "excluding programs designed for academic use for
students," the Examining Attorney maintains that "this exclusion
does not eliminate the likelihood of confusion inasmuch as:
Computer programs "for academic use for
students" are only one type of educational
software. The registration is not limited to
any one type of educational software, but
rather encompasses all computer software for
any and every type of "educational use." The
registrant's identification is not limited to
software for academic use for students.
Because software for providing business,
investment and financial information is
within the broad category of software for
"educational use," the limitation at the end
of the applicant's amended identification of
goods does not overcome the likelihood of
confusion.
investment, business and financial ... information" in the
identification of applicant's goods "encompasses software for
providing educational information about finances, investments and
business" and that "[m]any of the attached third-party registrations
describe the function of those software programs as ... 'for providing
educational information.'" However, as applicant persuasively notes
in its reply brief (italics in original):
[T]hird[-]party registrations which use the term
"providing educational information do not show that
SmartMoney's (information) programs encompass Beneficial's
(educational) programs, as the Trademark Attorney contends
.... All they show is that certain third parties have
registered marks for products (some of which are not even
computer programs) that provide "educational information."
....
If the "educational information" registrations show
anything, it is that "information" need not be
"educational." If all information were "educational,"
there would be no need to specify that the information in
the registrations is "educational" information (as opposed
to some other kind of information).
Ser. No. 75/904,311
5
Applicant, on the other hand, argues among other things
that (italics in original):
Even if the Trademark Attorney's
approach were sound, it would not establish
that SmartMoney's programs are identical to
Beneficial's programs. Although he has
supplied a dictionary definition that (i)
equates "educational" with "instructive," he
has not provided a dictionary definition that
(ii) equates "instructive" with
"information," as his own reasoning requires.
Moreover, if his reasoning were sound,
it would demonstrate that SmartMoney's
computer programs are not identical to
Beneficial's computer programs for
"educational use," because SmartMoney's
programs provide "news" and there is no
evidence that a dictionary defines
"educational" as "news." Given this , it is
no wonder that the Trademark Attorney has not
tried to apply this approach to the "news"
aspect of SmartMoney's programs.
We are constrained to agree with the Examining Attorney
that to the extent that applicant's software provides investors
and others who are not students with investment, business and
financial news and information which is of general educational
value, there is some limited overlap between applicant's goods
and the interactive computer programs for educational use offered
by registrant. The definition of the term "educational" which is
of record from The American Heritage Dictionary of the English
Language (3rd ed. 1992) lists such word as an adjective which, we
note, also means "1. Of or relating to education." In addition,
we judicially notice that the same dictionary, in a later version
(4th ed. 2000), defines "instructive" as an adjective meaning
"[c]onveying knowledge or information; enlightening" and sets
forth "academic" as an adjective signifying, in relevant part:
Ser. No. 75/904,311
6
"1. Of, relating to, or characteristic of a school, especially
one of higher learning. 2a. Relating to studies that are
liberal or classical rather than technical or vocational. b.
Relating to scholarly performance: a student's academic average.
.... 5. Based on formal education."5 However, in view thereof,
it is clear that while applicant's goods have some incidental
educational or possibly even instructive use, they primarily
provide news and information on various investment, business and
financial topics and specifically exclude the kinds of
pedagogical or instructive computer programs offered by
registrant, which by their interactive nature are plainly
designed chiefly for providing education which is academically
oriented towards students. Consequently, while the respective
goods are both computer programs or software, their educational
purposes or uses are for the most part quite different.
This brings us to consideration of the remaining factor
herein, which is, the market interface between applicant and
registrant as reflected by the implied consent to registration
arising from the detailed provisions of their prior settlement
agreement. By way of background, applicant has made of record
evidence consisting of the declaration, with an exhibit, of Sari
B. Granat, who is "Counsel of Dow Jones & Company, Inc. ..., a
partner in applicant partnership," and the declaration, with
5 It is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Ser. No. 75/904,311
7
exhibits, of Vincent N. Palladino, who is one of its attorneys
herein.
The Granat declaration states, among other things, that
applicant's "SMARTMONEY trademark has been used in connection
with the goods covered by [the instant] application Serial No.
75/904,311 since at least as early as January 25, 2000"; that
applicant "is not aware of any instance in which the use of
SMARTMONEY for the goods covered by this application have [sic]
given rise to any confusion"; that applicant "has not received
any objection or other communication from Beneficial Franchise
Company, Inc. regarding its use of SMARTMONEY for the goods
covered by the application"; that applicant "previously filed an
application to register SMARTMONEY, application Serial No.
74/557,947, for computer programs providing investment, business
and financial news and information, the same description of goods
that [originally] appeared in this application"; that "[t]he
Trademark Attorney assigned to that application did not find
Beneficial's application, or any other application or
registration, was confusingly similar to the SMARTMONEY
application"; that "Beneficial opposed the SMARTMONEY
application, as well as two other SMARTMONEY applications"; that,
as shown by the copy thereof attached as Exhibit 1, "Beneficial
withdraw [sic] its oppositions with prejudice after applicant
amended the goods covered by its applications"; and that, in
particular, "[t]he goods covered by application Serial No.
74/557,947 were amended to: computer programs providing
Ser. No. 75/904,311
8
investment, business and financial news and information,
excluding programs designed for academic use for students." As
evidenced by Exhibit 1, the pertinent portion of which is
reproduced below, Beneficial's withdrawal of its oppositions
(Opposition Nos. 99,181, 99,257 and 99,641) to applicant's
involved applications was specifically conditioned upon
applicant's amendment of the identification of goods therein:
Opposer, Beneficial Franchise Company,
Inc., hereby withdraws with prejudice the
above identified oppositions, in light of the
amendments to the identification of goods
filed by Applicant in the applications at
issue, which has been approved and entered by
the Board.
The Palladino declaration adds, in relevant part, that
"[i]n the opposition Beneficial brought against applicant's
application Serial No. 74/557,947, discovery showed that the
goods in what became Beneficial's Registration No. 2,095,401 were
actually 'an interactive computer game to help high school
students learn about money management'"; that "[a]ttached as
Exhibit 3 is promotional material for that game"; that "[a]fter
reviewing that evidence," Mr. Palladino "wrote to Beneficial's
counsel on August 8, 1996," stating that, as shown by the copy
thereof attached as Exhibit 4 (underlining in declaration):
... Beneficial's and SmartMoney['s]
goods, services and prospective customers are
different .... As you know, our client
publishes the well known SMARTMONEY magazine,
which I understand Beneficial does not
consider confusingly similar to Beneficial's
mark. The goods and services in the
applications filed by our client are
essentially extensions of the magazine.
SmartMoney's prospective customers are
sophisticated, financial investors who are
familiar with the magazine. By contrast,
Ser. No. 75/904,311
9
Beneficial's application is for "interactive
computer programs for educational use, and
instructional manuals sold as a unit
therewith", and the documents produced by
Beneficial show that the product is a
computer program for students which teaches
them how to budget money[;]
and that in such letter, Mr. Palladino also "suggested that the
dispute might be resolved by an amendment of applicant's goods."
In particular, besides explicitly stating applicant's view that
"[t]here ... is no likelihood of confusion between Beneficial's
mark and SmartMoney's mark," the August 8, 1996 letter from
applicant's counsel to registrant's attorney contains the
following suggestion, based upon the reality of the marketplace,
as to resolution of the issue of likelihood of confusion:
Considering these differences, it would
appear that there should be some way to
revise the description of goods and services
in the applications, which would allow the
parties' marks to coexist on the Register.
Although SmartMoney is confident of the
outcome of these proceedings, it is raising
the possibility of resolving this dispute
along these lines before the parties invest
more time, effort and money.
The Palladino declaration continues by stating that,
"[f]ollowing a conversation with Beneficial's attorney, another
attorney [for applicant] ..., Lisa Cristal, wrote to Beneficial's
counsel on September 12, 1996, concerning such an amendment," as
demonstrated by the copy of such letter attached as Exhibit 5;
that "[o]n September 18, 1996, Beneficials's counsel replied to
Ms. Cristal's letter, stating" that, as set forth in the copy
thereof attached as Exhibit 6:
Our client has accepted SmartMoney's
proposals for amending the description of the
goods and services in its applications, as
Ser. No. 75/904,311
10
suggested in your letter of September 12,
1996.
Accordingly, we will withdraw the
oppositions to your client's applications,
with prejudice, as soon as the amendment to
the specifications of goods and services of
your client's applications has been entered
by the Trademark Office[;]
and that, "[i]n response, Ms. Cristal sent Beneficial's counsel a
copy of the amendment on September 25, 1996," as shown by the
copies of such documents attached as Exhibit 7. That exhibit, it
is noted, indicates that Ms. Cristal's September 25, 1996 letter
to Beneficial's counsel states in particular that: "Your
September 18, 1996 letter set forth the terms by which the
parties have agreed to resolve the ... matter."
Applicant asserts in its main brief that by its present
application it has simply reapplied to register its "SMARTMONEY"
mark for what are the same goods as it and registrant agreed upon
as part of their settlement of the oppositions involving
applicant's prior applications. Specifically, applicant insists
in such brief that (footnote omitted):6
6 Although applicant also maintains in its main brief that, "[w]hen
filed, SmartMoney's current application Serial No. 75/904,311
inadvertently failed to incorporate the modified description of goods
that Beneficial had agreed to in dismissing its opposition," applicant
accurately points out that "in prosecuting the current application,
SmartMoney ... requested that its application be amended to
incorporate this modified description," including the limitation
"excluding programs designed for academic use for students."
Moreover, while the Examining Attorney required applicant to amend the
application to identify the manner or method by which its computer
software provides investment, business and financial news and
information, we observe that there is no contention by the Examining
Attorney, nor would such an assertion be well taken, that the addition
to the identification of goods of the language "via the global
computer network, via local computer networks, and for use on personal
computers" in any way affects the substantive merits and legal effect
of the settlement agreement reached by applicant and registrant in the
prior oppositions.
Ser. No. 75/904,311
11
SmartMoney's time to file a Statement of
Use in connection with application Serial No.
74/557,947 expired on January 28, 2000.
Believing it could not provide evidence of
use of SMARTMONEY by January 28, 2000,
SmartMoney filed the current intent-to-use
application Serial No. 75/904,311 to register
SMARTMONEY on January 27, 2000 and allowed
its earlier application Serial No. 74/557,947
to become abandoned. The description of
goods in the current application paralleled
the ... description in application Serial No.
74/557,947 [as amended]. ....
In fact, SmartMoney later discovered
that it had actually begun to use its mark at
least as early as January 25, 2000. ....
Had SmartMoney realized this earlier, it
could have filed a Statement of Use in
connection with its earlier application,
which would have resulted in a registration
without any need to file the current
application.
Applicant argues, inter alia, that "[i]t is well
settled that agreements between parties concerning one party's
right to register a mark should be accorded 'great weight,'"
citing Amalgamated Bank v. Amalgamated Trust and Savings, 842
F.2d 1270, 6 USPQ2d 1305, 1307 (Fed. Cir. 1988) and the cases
cited therein.7 The settlement agreement reached in the prior
7 Applicant, in its main brief, also asserts that "[w]hen an opposition
is dismissed with prejudice, [the] opposer is estopped from seeking to
resurrect this claim" and that consequently "[t]hat principle would
preclude Beneficial from opposing SmartMoney's current application."
In particular, applicant urges in its reply brief that "Beneficial's
estoppel has a direct and critical bearing on SmartMoney's right to
register SMARTMONEY" and that the Examining Attorney has improperly
dismissed such contention in his brief as "irrelevant" because
"[w]hether or not the registrant has the right to oppose the
applicant's mark has no bearing on whether the relevant consumers are
likely to be confused as to the origin of the applicant's computer
programs." However, applicant's "estoppel" argument, rather than
meriting separate consideration under the du Pont factor which
considers the equitable defenses of "laches and estoppel attributable
to [the] owner of [a] prior mark and indicative of lack of confusion,"
is more properly viewed under the du Pont factor which, as discussed
Ser. No. 75/904,311
12
opposition proceedings, by which "SmartMoney and Beneficial
agreed that excluding 'programs designed for academic use for
students' from the description of goods in SmartMoney's prior
application would eliminate a likelihood of confusion and, thus,
warrant dismissal with prejudice of Beneficial's opposition to
that application," likewise requires a finding of no likelihood
of confusion when such agreement is given proper weight,
applicant contends (underlining in original). The reason why
above, deals with "agreement provisions designed to preclude
confusion."
In addition, applicant contends in its main brief that "[i]t is
well settled that the position a party takes regarding the likelihood
of confusion between marks should weigh heavily against it if it later
seeks to take a position that is inconsistent with its original
position." Based upon certain other facts, as set forth in the
Palladino declaration and supporting documents attached thereto,
applicant maintains that (footnote omitted; underlining in original):
That principle would effectively preclude Beneficial
from successfully opposing SmartMoney's current
application. After Beneficial filed the application that
resulted in Registration No. 2,095,401 of SMART MONEY,
Security Pacific National Bank ("Security Pacific")
opposed, asserting that it owned rights in its registered
SMART MONEY mark for "banking services, namely checking,
savings and credit reserve loan account services" and that
Beneficial's mark was likely to cause confusion. .... In
its answer, Beneficial denied that there was a likelihood
of confusion, and took the position that Security Pacific
was estopped from opposing Beneficial's application because
Security Pacific's registration already coexisted with
other SMART MONEY marks. Beneficial's Registration No.
2,095,401 was subsequently granted.
Applicant, in view thereof, concludes that Beneficial, by "[h]aving
denied that its SMART MONEY mark was confusingly similar to Security
Pacific's SMART MONEY mark for financial services, ... is effectively
precluded from turning around and arguing that its SMART MONEY mark is
confusingly similar to SMARTMONEY for SmartMoney's goods, which
provide information regarding investment, business and financial news
[and information]." However, even if, notwithstanding the difference
between applicant's goods and Security Pacific's services, such were
to be the case, suffice it to say that the Examining Attorney, who
obviously was neither a party to the prior proceeding involving
Security Pacific nor in privity with Beneficial, is not precluded
thereby from citing Beneficial's registration as a possible bar under
Ser. No. 75/904,311
13
such should be so, applicant explains, is that based upon
discovery in the prior proceedings, it is plain that
"[m]arketplace realities -- including the difference between
Beneficial's and SmartMoney's goods and customers -- underlie the
agreement between Beneficial and Smartmoney, which resulted in
SmartMoney's amendment of the description of goods in its prior
application and Beneficial's dismissal of its opposition to that
application" (underlining in original). Thus, according to
applicant, because the refusal to register "fails to take account
of the marketplace realities" reflected by the settlement
agreement, such refusal should be reversed.
The Examining Attorney, in response, takes the position
that:
[N]owhere in the applicant's documents is
there a statement by the registrant that it
believes that there is no likelihood of
confusion between the registrant's mark and
the applicant's mark. In addition, there
exists no consent agreement on record between
the parties that clearly explains that the
parties do not believe there is a likelihood
of confusion. Furthermore, the fact that the
registrant withdrew its opposition to the
applicant's prior application does not show
that the registrant does not believe that
confusion is likely in the present
application. For example, the registrant may
have known that the applicant could not show
use for the prior application and may have
withdrawn [the] opposition for that reason.
Because there exists no consent agreement and
because there is no record of the registrant
stating that confusion is not likely
concerning the marks, the Examining Attorney
must maintain the refusal to register the
applicant's mark under Section 2(d) of the
Trademark Act.
Section 2(d) of the Trademark Act to the registration which applicant
seeks.
Ser. No. 75/904,311
14
TMEP §1207(d)(viii), which is entitled "Consent
Agreements," sets forth the following basic guidelines:
The term "consent agreement" generally
refers to an agreement in which a party
(e.g., a prior registrant) consents to the
use and/or registration of a mark by another
party (e.g., an applicant for registration of
the same mark or a similar mark), or in which
each party consents to the use and/or
registration of the same mark or a similar
mark by the other party.
A consent agreement may be submitted by
the applicant to overcome a refusal of
registration under §2(d) of the Act ....
When a consent agreement is submitted, the
examining attorney will consider the
agreement, and all other evidence in the
record, to determine likelihood of confusion.
....
Consents come in different forms and
under circumstances in infinite variety.
They are, however, but one factor to be taken
into account with all of the other relevant
circumstances bearing on the likelihood of
confusion referred to in §2(d). In re N.A.D.
Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir.
1985).
....
The Court of Appeals for the Federal
Circuit has made it clear that consent
agreements should be given great weight, and
that the Office should not substitute its
judgment concerning likelihood of confusion
for the judgment of the real parties in
interest without good reason, that is, unless
the other factors clearly dictate a finding
of likelihood of confusion. Amalgamated Bank
of New York v. Amalgamated Trust & Savings
Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir.
1988); Bongrain International (American)
Corp. v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In
re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969
(Fed. Cir. 1985).
....
Ser. No. 75/904,311
15
The examining attorney should give great
weight to a proper consent agreement. The
examining attorney should not interpose his
or her own judgment concerning likelihood of
confusion when an applicant and registrant
have entered into a credible consent
agreement and, on balance, the other factors
do not dictate a finding of likelihood of
confusion.
Contrary to the Examining Attorney's unsupported
position that, in this case, "there exists no consent agreement
on record between the parties that clearly explains that the
parties do not believe there is a likelihood of confusion," we
find that the settlement agreement entered into between applicant
and registrant in resolution of the prior oppositions plainly
constitutes the kind of detailed settlement agreement which,
because it is based upon marketplace realities and is designed to
avoid a likelihood of confusion, is entitled to great weight. As
the documented circumstances surrounding the settlement agreement
plainly demonstrate, discovery in the opposition proceedings
revealed that the "interactive computer programs for educational
use, and instructional manuals sold as a unit therewith," with
which registrant was actually using its "SMART MONEY" mark were
limited to an interactive computer game and associated workbooks
to help high school students learn about money management. In
view thereof, one of applicant's attorneys wrote a letter to
registrant's counsel and, after noting that applicant considered
the goods and services set forth in its opposed applications to
be "essentially extensions" of applicant's "well known SMARTMONEY
magazine, which ... Beneficial does not consider confusingly
similar to Beneficial's mark" (emphasis added), pointed out the
Ser. No. 75/904,311
16
differences in purchasers and their level of sophistication as to
the goods and services at issue in the oppositions. "Considering
these differences," it was also suggested in such letter that "it
would appear that there should be some way to revise the
description of goods and services in the applications, which
would allow the parties' marks to coexist on the Register"
(emphasis added). Plainly, counsel for applicant was endeavoring
to reach a settlement, in light of marketplace realities, by
which the parties would agree to the use and registration of
their respective marks and which concomitantly would avoid a
likelihood of confusion from the contemporaneous use thereof.
Ultimately, insofar as the issue of likelihood of
confusion herein is concerned, applicant offered to amend its
prior application to register its "SMARTMONEY" mark for "computer
programs providing investment, business and financial news and
information" by adding to the identification of such goods the
restriction "excluding programs designed for academic use for
students." Registrant, as the opposer and owner of the mark
"SMART MONEY" for "interactive computer programs for educational
use, and instructional manuals sold as a unit therewith,"
accepted such offer and agreed, in consideration for applicant's
amendments to the involved applications, to withdraw the
oppositions with prejudice once such amendments were entered.
Clearly, there was a meeting of the minds of the parties to avoid
a likelihood of confusion, resulting in, as memorialized by their
exchange of letters, a legally binding settlement agreement.
Ser. No. 75/904,311
17
While, as argued by the Examining Attorney, it is true
that "nowhere in the applicant's documents is there a statement
by the registrant that it believes that there is no likelihood of
confusion between registrant's mark and the applicant's mark," it
is plain from the parties' actions in resolving their differences
that they mutually believed that, by such actions, there would be
no likelihood of confusion from contemporaneous use of their
respective marks in connection with the goods and services at
issue; applicant would receive the registrations which, as
amended, it was seeking; registrant, as the opposer, would retain
its registration without any amendment thereto; and the
oppositions would be dismissed with prejudice. Furthermore, by
registrant's agreement that, among other things, applicant is
entitled to use and register the mark "SMARTMONEY" for goods
identified in its prior application as "computer programs
providing investment, business and financial news and
information, excluding programs designed for academic use for
students," registrant implicitly consented to the use and
registration by applicant of the same mark for the legally
identical goods set forth in applicant's present application,
namely, "computer software for providing investment, business and
financial news and information via the global computer network,
via local computer networks, and for use on personal computers,
excluding programs designed for academic use for students."
Moreover, we find untenable the Examining Attorney's
assertion that "the fact that the registrant withdrew its
opposition to the applicant's prior application does not show
Ser. No. 75/904,311
18
that the registrant does not believe that confusion is likely in
the present application." It is clear from the evidence
submitted by applicant that registrant's action was predicated on
the belief that there would be no likelihood of confusion if
applicant amended its prior application as provided in the
parties' settlement agreement and applicant's present application
is fully in accords with the provisions of such agreement. That
it must be the case that registrant continues to believe that
there is no likelihood of confusion herein and considers itself
bound by the parties' settlement agreement is evidenced by the
fact that the Granat declaration, filed almost 11 months after
applicant commenced actual use of its "SMARTMONEY" mark for the
goods identified in the present application, states that
applicant "has not received any objection or other communication
from Beneficial ... regarding its use of SMARTMONEY for the goods
covered by the [present] application."
Finally, we regard as unwarranted speculation the
Examining Attorney's contention that, "[f]or example, the
registrant may have known that the applicant could not show use
for the prior application and may have withdrawn [the] opposition
for that reason." How registrant could be reasonably certain
that, following withdrawal of the opposition to applicant's prior
application and issuance of a notice of allowance, applicant
would not commence use of its mark and file a statement of use
within the maximum possible three years time is not explained.
In any event, it would have been exceedingly risky for registrant
to have counted on such an assumption. This is because, as
Ser. No. 75/904,311
19
asserted by applicant in its main brief, even though its time for
filing a statement of use expired on January 28, 2000, had it not
later realized that it had indeed begun use of its "SMARTMONEY"
mark for the goods identified in its prior application as of
January 25, 2000, there would have been no reason to have filed
the present application if it had submitted a statement of such
use by the January 28, 2000 deadline.
Accordingly, in the absence of any other du Pont
factors which on balance clearly dictates a finding of likelihood
of confusion, it is our view that the parties' settlement
agreement, with the implied consent therein by registrant to the
use and registration of the mark applicant seeks to register
herein, is sufficient to tilt the scales of evidence in favor of
registration. As set forth in du Pont, supra at 568 (emphasis by
the court):
The weight to be given more detailed
agreements of the type presented here should
be substantial. It can be safely taken as
fundamental that reputable businessmen-users
of valuable trademarks have no interest in
causing public confusion. ....
Thus when those most familiar with use
in the marketplace and most interested in
precluding confusion enter agreements
designed to avoid it, the scales of evidence
are clearly tilted. It is at least difficult
to maintain a subjective view that confusion
will occur when those directly concerned say
it won't. A mere assumption that confusion
is likely will rarely prevail against
uncontroverted evidence from those on the
firing line that it is not.
Likewise, as set forth in In re Four Seasons Hotels Ltd., supra:
The parties themselves have determined that
confusion of the public by concurrent use of
their marks is unlikely and intend to abide
Ser. No. 75/904,311
20
by their contractual agreement. .... There
is no reason to ignore their assessment of
likelihood of confusion and not give
substantial weight to their agreement as
evidence that likelihood of confusion does
not exist.
While, as noted previously, the marks "SMARTMONEY" and
"SMART MONEY" are identical as a practical matter, we further
observe that when respectively used in connection with
applicant's and registrant's goods, it is obvious that the marks
nevertheless are highly suggestive of products which relate to
intelligent monetary management.8 As such the marks are
considered "weak" marks which, generally speaking, are entitled
only to a narrow scope of protection. Although, as the Examining
Attorney correctly points out, it is also generally the case
that, as set forth for instance in In re Textron Inc., 180 USPQ
341 (TTAB 1973), "even 'weak' or highly suggestive marks are
entitled to protection against the identical mark for goods used
for related purposes," here the goods at issue are computer
software or programs which, as we have previously found, have
quite different educational purposes or uses. Applicant's goods
specifically exclude "programs designed for academic use for
students," which is the field in which registrant's goods are
principally sold and used.
8 In addition to the previously noted registration by Security Pacific
for the mark "SMART MONEY" for "banking services, namely checking,
savings and credit reserve loan account services," the record contains
several other third-party registrations for marks which consist of or
include the term "SMART MONEY" for various financial and/or banking
services. These registrations, while not evidence of actual use of
the subject marks, nonetheless may properly be given some weight to
show the meaning of a mark in the same way that dictionaries
definitions would be so used. See, e.g., Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976).
Ser. No. 75/904,311
21
Thus, while there is still some limited overlap with
registrant's interactive computer programs and instructional
manuals for educational use in that, as noted earlier, the
investment, business and financial news and information provided
by applicant's goods have some incidental educational or possibly
even instructive use, it is also the case that, as in du Pont,
supra at 568: "The fact that the goods of one party 'could be
used' in the field of the other is too conjectural and too widely
applicable to form the sole basis of decision, particularly
where, as here, the parties have agreed to avoid ... such cross-
use." Moreover, as our principal reviewing court has repeatedly
cautioned:
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 & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from
Witco Chemical Co., Inc. v. Whitfield Chemical Co., Inc., 418
F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969).
We therefore conclude that, on this record, there are
no other du Pont factors which on balance are indicative of a
likelihood of confusion and that the implied consent of
registrant, as reflected in the detailed provisions of a prior
settlement between applicant and registrant, to the registration
applicant seeks is entitled to controlling weight. Confusion is
accordingly not likely to occur from the contemporaneous use by
Ser. No. 75/904,311
22
applicant of the mark "SMARTMONEY" for "computer software for
providing investment, business and financial news and information
via the global computer network, via local computer networks, and
for use on personal computers, excluding programs designed for
academic use for students," and the use by registrant of the mark
"SMART MONEY" for "interactive computer programs for educational
use, and instructional manuals sold as a unit therewith."
Decision: The refusal under Section 2(d) is reversed.