Swift Prepaid Solutions, Inc.

Trademark Trial and Appeal Board

Jan 5, 2021

88466535 (T.T.A.B. Jan. 5, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Swift Prepaid Solutions, Inc.
_____

Serial No. 88466535
_____

Erik M. Pelton of Erik M. Pelton & Associates, PLLC,
for Swift Prepaid Solutions, Inc.
Alina Morris, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____

Before Cataldo, Wolfson, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Swift Prepaid Solutions, Inc. (Applicant) seeks registration on the Principal
Register of the mark DAVINCI PAYMENTS (standard characters, PAYMENTS
disclaimed) for “Financial services for business, namely, electronic payment
processing services; Financial services for businesses, namely, processing and
disbursement of payments to consumers, employees and businesses for others;
Issuing prepaid credit cards and debit cards for businesses; Pre-paid purchase card
Serial No. 88466535
- 2 -
services for businesses, namely, processing electronic payments through pre-paid
cards” in International Class 36.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the services identified in the application, so resembles the registered mark
DAVINCI FINANCIAL DESIGNS (standard characters, FINANCIAL disclaimed) for
“Financial planning and investment advisory services; Financial planning
consultation; Financial planning, namely, wealth management, financial portfolio
selection and management and insurance planning and consultation; Financial
services, namely, wealth management services,” in International Class 36 on the
Principal Register, as to be likely to cause confusion, to cause mistake, or to deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We affirm the
refusal to register.

1 Application Serial No. 88466535 filed June 10, 2019 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
References to the application are to the downloadable .pdf version of documents available
from the TSDR (Trademark Status and Document Retrieval) database. The TTABVUE
citation refer to the Board’s electronic docket, with the first number referring to the docket
entry and the second number, if applicable, referring to the page within the entry.
2 Registration No. 4680594 issued February 3, 2015; Trademark Act Section 8 filing accepted.
The registration includes services in International Class 35, but these services were not cited
as a bar to registration.
Serial No. 88466535
- 3 -
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each relevant
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 or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 28 (CCPA 1976).
A. Similarity or Dissimilarity of the Marks DAVINCI PAYMENTS
and DAVINCI FINANCIAL DESIGNS
We consider the similarity or dissimilarity of the marks DAVINCI PAYMENTS
and DAVINCI FINANCIAL DESIGNS in their entireties as to appearance, sound,
connotation, and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
Serial No. 88466535
- 4 -
2018), aff’d mem., (No. 18–2236) (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)).
We take judicial notice that the dictionary defines “DAVINCI” as a biographical
name referring to Leonardo DaVinci, the “1452–1519 Italian painter, sculptor,
architect, and engineer.”3 The record includes a Wikipedia entry which describes
Leonardo DaVinci as the Italian polymath of the Renaissance, who became famous
in his lifetime and has never ceased to be famous.4 We find the term DAVINCI has
no obvious association on this record with either Applicant’s payment services for
business or Registrant’s financial planning and wealth management services, and so
is arbitrary when used in connection with the services. Cf. Nautilus Grp., Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (An
arbitrary mark is a “known word used in an unexpected or uncommon way.”).5

3 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-
webster.com/dictionary/Vinci%2C%20da. Accessed Dec. 30, 2020. The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. 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).
4 August 14, 2019 Office Action, TSDR 10-18. Because there are inherent limitations to
information derived from the collaborative Internet resource, the Board will permit evidence
from Wikipedia to be made of record when timely introduced so the non-offering party has
an opportunity to submit rebuttal evidence, a condition which was met in this case. See In re
Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB 2016); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 710.01(b) (October 2018).
5 The record also includes four third-party registrations for marks with a variant of DAVINCI
for goods and services which include the word “financial.” May 26, 2020 Response TSDR 9-
16. While Applicant does not refer to this evidence in its brief, we note that, even if the
services were identical, four registrations are insufficient to curtail the registered mark’s
strength based on extensive third-party use of similar marks with similar services. See Jack
Wolfskin Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1135-1136 (Fed. Cir. 2015).
Serial No. 88466535
- 5 -
As stated, the term FINANCIAL is disclaimed in the registered mark DAVINCI
FINANCIAL DESIGNS for financial planning and wealth management services. The
record includes a definition for DESIGN as a noun meaning “a plan or protocol for
carrying out or accomplishing something (such as a scientific experiment).”6 We find
that the term FINANCIAL DESIGNS is highly suggestive, if not wholly descriptive,
of financial planning and wealth management services which may feature, or result
in, a “design” for each client. While the term DESIGNS is not disclaimed in the
registration, the absence of a disclaimer does not mean that a word or phrase in a
registration is distinctive in the registered mark, so that that part of the mark must
be treated the same as an arbitrary feature. See In re Detroit Athletic Co., 128
USPQ2d at 1050 (“[T]he record evidence shows that, regardless of whether ‘Co.’ and
‘Club’ were disclaimed, they do not serve source-identifying functions). See also In re
Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“In
general, disclaimed or descriptive terms are considered less significant features of the
mark.”). In the registered mark DAVINCI FINANCIAL DESIGNS for financial
planning and wealth management services, we find that the term DAVINCI creates
the dominant commercial impression.
In comparing the marks, we find that the identical term DAVINCI also forms the
dominant commercial impression of Applicant’s mark DAVINCI PAYMENTS. The
term PAYMENTS is highly descriptive or generic when used in connection with
Applicant’s payment services for business, and has been disclaimed. We acknowledge

6 November 13, 2019 Response TSDR 31 (citing Merriam-Webster.com).
Serial No. 88466535
- 6 -
that the registered mark comprises three words, and Applicant’s mark only two
words. Moreover, we acknowledge that the terms added to DAVINCI, FINANCIAL
DESIGNS and PAYMENT, do not resemble each other in appearance or sound.
However, we find that these differences do not outweigh the similarities created by
each term beginning with the identical term DAVINCI inasmuch as each is followed
by a term descriptive or highly suggestive of the services with which the mark is used.
See In re American Beauty Products Company, Inc., 223 USPQ 828, 828 (TTAB 1984)
(confusion likely, “The marks herein involved consist of the term REJUVA which is
common to both marks to which has been added the word NAIL (by registrant) and
CURL (by appellant). Each of the latter terms is merely descriptive of the product to
which it is applied.”). Moreover, as the first term in each mark, it is most likely to be
remembered by consumers. See In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d
1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is
particularly significant because consumers typically notice those words first.”).
Because Applicant’s argument relies in part on extrinsic evidence, and because
“DAVINCI” brings to mind the well-known artist, we disagree with Applicant’s
argument that the term DAVINCI has different connotations in the marks DAVINCI
PAYMENTS and DAVINCI FINANCIAL DESIGNS:
Applicant’s mark playfully conveys that its electronic payment processing
services are revolutionized and forward thinking like Leonardo da Vinci’s
inventions and paintings. Alternatively, Applicant’s DAVINCI PAYMENTS
mark suggests that Applicant’s service provides businesses with a method of
rewarding their employees, customers, contractors, and channel partners with
prepaid electronic debit cards. In contrast, the term “DAVINCI” in Registrant’s
Serial No. 88466535
- 7 -
mark is an ode to its logo, which uses the Leonardo da Vinci anatomical
drawing (i.e., the Vitruvian Man).7

Our analysis of the marks is based on the marks as depicted in the respective
application and registration, without regard to whether the marks will appear with
other elements when used. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690 n.4 (Fed. Cir. 1993) (indicating that applicant’s assertions that the applied-for
mark would appear with applicant’s house mark were not considered in the
likelihood-of-confusion determination); In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1186 (TTAB 2018) (“[W]e do not consider how Applicant and Registrant actually
use their marks in the marketplace, but rather how they appear in the registration
and the application. We must compare the marks as they appear in the drawings,
and not on any labels that may have additional wording or information.”). To the
extent that Applicant contends that the term DAVINCI suggests invention and
innovative thinking reminiscent of the famed renaissance artist and visionary, we
find the connotation is the same as applied to either Applicant’s services or the
registered services. See Stratus Networks, Inc. v. UBTA-UBET Communs. Inc., 955
F.3d 994, 2020 USPQ2d 10341, *1 (Fed. Cir. 2020) (“The Board relied on dictionary
definitions of the terms ‘stratus’ and ‘strata’ to evaluate similarities in the
connotation of each mark.”). Finally, both marks appear in standard characters,
which means that the way in which they are displayed may increase their
similarities. Trademark Rule 2.52(a); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d

7 6 TTABVUE 16.
Serial No. 88466535
- 8 -
1905, 1909 (Fed. Cir. 2012). At a minimum, the marks are not distinguished by
differences in how the literal elements are displayed.
In sum, we find that the term DAVINCI forms the dominant part of both marks,
and the addition of the descriptive or highly suggestive terms PAYMENTS and
FINANCIAL DESIGNS does not change the commercial impression created by the
term DAVINCI. Considered as a whole, we find the marks DAVINCI FINANCIAL
DESIGNS and DAVINCI PAYMENTS are so similar in meaning and overall
commercial impression that the changes in appearance and sound created by the
additional descriptive terms do not prevent the marks from being confusingly similar.
We find that this factor strongly weighs in favor of finding confusion likely.
B. Similarity or Dissimilarity of the Services and Channels of
Trade
We turn to the DuPont factors regarding the similarity or dissimilarity of the
respective services and channels of trade. We must determine whether the degree of
relatedness of the services rises to such a level that consumers would mistakenly
believe the respective services emanate from the same source. We make our
determination regarding the similarities between Applicant’s services and the
registered services based on how they are identified in the application and
registration. Octocom Sys. Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Moreover, registration must be
refused in a particular class if Applicant’s mark for any of its identified services in
that class is likely to cause confusion with the Registrant’s mark for any of its
Serial No. 88466535
- 9 -
identified services. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-
39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a
finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if
there is likely to be confusion with respect to any item that comes within the
identification of goods or services in the application or registration).
It is sufficient that the services of Applicant and Registrant 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. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000) (“[A]lthough the services are different,
it is reasonable to believe that the general public would likely assume that the origin
of the services are the same”). “Evidence of relatedness may include news articles or
evidence from computer databases showing that the relevant goods and services are
used together or used by the same purchasers; advertisements showing that the
relevant goods and services are advertised together or sold by the same manufacturer
or dealer; or copies of use-based registrations of the same mark for both the
applicant’s services and the goods listed in the cited registration.” In re Country Oven,
Inc., 2019 USPQ2d 443903, *4-5 (TTAB 2019).
Because the recitations are somewhat lengthy, we present them side by side:
Applicant’s services Registered services
Serial No. 88466535
- 10 -
Financial services for business, namely,
electronic payment processing services;
Financial services for businesses, namely,
processing and disbursement of payments to
consumers, employees and businesses for
others; Issuing prepaid credit cards and
debit cards for businesses; Pre-paid
purchase card services for businesses,
namely, processing electronic payments
through pre-paid cards
Financial planning and investment advisory
services; Financial planning consultation;
Financial planning, namely, wealth
management, financial portfolio selection
and management and insurance planning
and consultation; Financial services,
namely, wealth management services

For the purpose of discussing the services more efficiently, because each of
Applicant’s four distinct services is specified to be for business, and to facilitate
payment either directly or through prepaid cards, we will refer to Applicant’s services
as payment services for business. Likewise, because three of the four distinct
registered services are specified to be for financial planning, and the last for wealth
management, we will refer to Registrant’s services as financial planning and wealth
management services.
The record includes pages from the websites of different financial institutions
(Bank of America, Chase, BB&T, BECU, Black Ridge Bank, Citi, Key Bank, PNC,
Tompkins Financial Advisors, and Wells Fargo) showing that they offer both payment
services for business such as those offered by Applicant, and financial planning and
wealth management services such as those offered by Registrant.8 The record also
shows that most of the financial institutions offer these services to the same end
consumer, a business seeking both payment services and financial planning and/or
wealth management services.

8 August 14, 2019 TSDR 19-26; November 26, 2019 Office Action TSDR 17-75.
Serial No. 88466535
- 11 -
BB&T offers both “simple and more secure payment options for clients” for small
business, and wealth management services including “optimizing business wealth.”9
Similarly, BECU offers both “all-in-one point-of-sale system that can help transform
your business with payment processing and business management solutions,
customized just for you” and “investment business solutions” through which “We’ll be
an advocate as you build and maintain your business.”10 Black Ridge Bank offers
banking services, including credit and debit cards, which “electronically debit/credit
your customer’s or employee’s account using ACH” and “BlackRidgeINSURANCE has
you covered with comprehensive insurance policies for individuals and businesses.”11
Citi offers “cash management services [which] include local and foreign currency
accounts, payments, receivables, and convenient access via electronic banking
systems” and services to “assist you in developing risk management strategies and
implementing financial solutions that span a broad range of asset classes, including
currencies, commodities, and interest rates.”12 Key Bank offers “efficient,
customizable paper and electronic payment services” and for businesses and
institutions, “investment and liquidity management” including “Automated
Investment Sweep (AIS).”13 PNC offers “a full array of commercial card solutions to

9 November 26, 2019 Office Action TSDR 17, 21.
10 November 26, 2019 Office Action TSDR 23, 28.
11 November 26, 2019 Office Action TSDR 30-31. While we have abbreviated references to
registrant’s services, we note that they include “Financial planning, namely, wealth
management, financial portfolio selection and management and insurance planning and
consultation.”
12 November 26, 2019 Office Action TSDR 32.
13 November 26, 2019 Office Action TSDR 42, 45.
Serial No. 88466535
- 12 -
help you increase efficiencies and optimize all aspects of the procure-to-pay process,
including employee purchasing cards, corporate travel cards, and cards for
automating AP vendor payments” and “business continuity and succession
planning.”14 Tompkins Financial Advisors offers “business credit cards” and
“business succession planning to ensure the longevity of your company.”15 Wells
Fargo offers “merchant services payment processing,” and small business services to
“put your savings to work A business savings account … can be a versatile, practical
financial management tool.”16
Applicant contends that this evidence of the same entity offering both parties’
services lacks probative value because the services may be offered under different or
multiple marks.17 We disagree because there is not just one relationship sufficient to
support a finding of likelihood of confusion. The use of different marks by the same
entity does not detract from the relationship between the services established by the
services emanating from a single source. Similarly, the fact that the entity specifies
that the services are offered in partnership or affiliation with a related entity also
does not undermine the fact that the different services are obtained through the same
financial institution. In addition, the use of the financial institution’s name and a
product mark to differentiate services offered by the financial institution may support
the relatedness of the respective services, because they are offered under the

14 November 26, 2019 Office Action TSDR 53, 62.
15 November 26, 2019 Office Action TSDR 64, 66.
16 November 26, 2019 Office Action TSDR 68, 74.
17
Serial No. 88466535
- 13 -
umbrella of a house mark, which identifies a common source. See Amica Mutual Ins.
Co. v. R. H. Converse Corp., 204 USPQ 155, 161 (TTAB 1979) (“[A] house mark serves
as an umbrella for all of the product marks and merchandise emanating from a single
source.”). In this regard, we note that many of the “different marks” asserted by
Applicant comprise the financial institution name or house mark plus a generic term,
i.e. payment options available from “PNC” and financial planning options available
from “PNC Investments,” and it is not clear how this use of different marks would
undermine the relationship between the services offered.18
The record shows that the services involved here are not unrelated services within
a large financial services industry but related by their availability through the same
source and their use by the same business customer. To the extent that Applicant
submits pages from its own and Registrant’s websites, and argues that the evidence
demonstrates that the parties’ “services operate within their own distinct niches,”
with Applicant transacting with business users and Registrant transacting with
individual users, Applicant mistakes the relevant inquiry. Like our analysis of the
similarity or dissimilarity of the services, we assess similarities in the channels of
trade based on the recitation of services in the application and the cited registration.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F3d 1317, 110 USPQ2d
1157, 1161-62 (Fed. Cir. 2014). As a result, we may not consider evidence of how
Applicant and Registrant are actually offering their services in the marketplace. Id.;
In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018).

18 6 TTABVUE 13-14.
Serial No. 88466535
- 14 -
More specifically, while Applicant’s services are limited on their face to business
users, there is no similar restriction in the cited registration. Based on the
unrestricted recitation of “Financial planning and investment advisory services;
Financial planning consultation; Financial planning, namely, wealth management,
financial portfolio selection and management and insurance planning and
consultation; Financial services, namely, wealth management services,” we address
all trade channels for the average purchaser of financial planning and wealth
management services, both individual and business purchasers. It does not matter
that neither Applicant nor Registrant are large financial institutions which appeal to
both types of consumers. Registrant’s choice to broadly word its services means that,
whether or not Registrant actually does so, its services could include financial
planning and wealth management services for businesses, including the same
businesses seeking Applicant’s payment services. More is not necessary to show the
relationship between the services.
Applicant’s submission of third-party registrations showing “the same, or very
similar, mark is used or registered by one entity for services in the field of finance
and is also used or registered by a different entity for financial services” largely has
no relevance to our comparison of Applicant’s and Registrant’s services.19 As evidence
that confusion is not likely based on the differences between the services, the Board
will consider “sets of third-party registrations to suggest … that the Office has
registered the same mark to different parties for the goods at issue.” In re G.B.I. Tile

19 6 TTABVUE 18 (argument); May 26, 2020 Response TSDR 14-77 (evidence).
Serial No. 88466535
- 15 -
and Stone, 92 USPQ2d 1366, 1369 (TTAB 2009). Accord J. Thomas McCarthy, 3
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 24:63 (5th ed) (“[I]f
there are a significant number of registrations for other marks similar to each other
for the two different sets of goods and services involved in the present case, this is
evidence that businesses in those two different markets believe that confusion is not
likely when the same mark appears on those different goods or services.”). The
probative value of the evidence lies in the registrations involving similar marks for
the same services being compared, in this case Applicant’s payment services for
business and Registrant’s financial planning and wealth management services.
Applicant’s pairs of third party registrations showing the same mark registered for
services different than the services involved here has minimal probative value in
countering the evidence that the services involved here are related.
For example, it is not enough to detract from the relationship between the services
at issue here that one paired registration includes “Financial services, namely,
financial and investment planning and research, financial consultation, and assisting
others with the completion of financial transactions for stocks, bonds, securities and
equities,” which we regard as equivalent to the registered “Financial planning and
investment advisory services,” because the second paired registration does not
include any equivalent to Applicant’s “Financial services for business, namely,
electronic payment processing services; Financial services for businesses, namely,
processing and disbursement of payments to consumers, employees and businesses
for others; Issuing prepaid credit cards and debit cards for businesses; Pre-paid
Serial No. 88466535
- 16 -
purchase card services for businesses, namely, processing electronic payments
through pre-paid cards,” but lists “underwriting life insurance.”20 Conversely, it is not
enough to detract from the relationship between the services at issue here that one
paired registration includes “Bill payment services,” which we regard as equivalent
to Applicant’s “Financial services for business, namely, electronic payment processing
services,” because the second paired registration does not include any equivalent to
the registered “Financial planning and investment advisory services; Financial
planning consultation; Financial planning, namely, wealth management, financial
portfolio selection and management and insurance planning and consultation;
Financial services, namely, wealth management services,” but lists “Payment
services, namely, online portal offering patients and prospective patients scheduling
and processing of payments for healthcare appointments correlated to procedure
and healthcare provider.”21 See In re Thor Tech, Inc., 90 USPQ2d 1634, 1637 (TTAB
2009) (“The third-party registrations do not support applicant’s contention for two
reasons. First, none of the registrations are for trailers per se. Therefore, there are
no registrations for trailers and recreational vehicles, including travel trailers or fifth
wheel trailers. “). See also Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100
USPQ2d 1213, 1221 (TTAB 2011) (“[I]n order to find that goods and services are
related, there must be more of a connection than that a single term, in this case
‘financial field,’ may be used to generally describe them.”).

20 May 26, 2020 Response TSDR 15-16.
21 May 26, 2020 Response TSDR 50, 52.
Serial No. 88466535
- 17 -
We list below the single pair of registrations which could be considered to include
both a listed service from the subject application (or their equivalent) in one
registration and a listed service from the cited registration (or their equivalent) in
the other.

Registration 1
Mark
Registration 1
Services
Registration 2
Services
Registration 2
Mark

No. 469277622

GENIUS
electronic payment
processing services
No. 511370223

GENIUS ADVISOR

providing financial
counseling and
consulting in the
field of student loan
benefits and
repayment options

Suffice it to say, a single pair of registrations has very little, if any, probative
value. Having considered the totality of this evidence, we find it insufficient to show
that confusion is not likely when the same or closely similar marks appear in third-
party registrations for services similar to both Applicant’s and the registered services.
In sum, we find that Applicant’s payment services for business and the registered
financial planning and wealth management services are related because the services
may be offered by the same financial institution, may be directed to the same end
user, and so may be encountered in the same channels of trade.

22 May 26, 2020 Response TSDR 42.
23 May 26, 2020 Response TSDR 44.
Serial No. 88466535
- 18 -
We find that the similarity of the respective services and channels of trade weigh
in favor of finding a likelihood of confusion.
C. Sales Conditions
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant contends that the consumers of both its and registrant’s
services are “highly sophisticated.24 The record indicates that the decision to become
a customer of Applicant would be a decision intended to improve a business, and the
decision to become a customer of Registrant would be a decision to improve financial
well-being. In neither case would the decisions be made on impulse. However, even
sophisticated purchasers exercising care in their purchases may be confused by
highly similar marks. See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1273-74
(TTAB 2009) (even sophisticated hospital purchasers could be confused by marks
TITAN and VANTAGE TITAN on ultrasound and MRI diagnostic apparatus,
respectively). To the extent Applicant’s mark and the registered mark include the
identical term DAVINCI, “careful purchasers who do notice the difference in the
marks will not necessarily conclude that there are different sources for the [services],
but will see the marks as variations of each other, pointing to a single source.” In re
Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
We find that this factor is neutral.

24 6 TTABVUE 22.
Serial No. 88466535
- 19 -
D. Balancing the Factors
In conclusion, we have considered all of the arguments and evidence of record, and
all relevant DuPont factors. We find that Applicant’s mark DAVINCI PAYMENTS
shares the same arbitrary term DAVINCI with the registered mark DAVINCI
FINANCIAL DESIGNS, that the addition of descriptive or highly suggestive terms
does not alter the commercial impression created by the term DAVINCI, that the
marks convey the same meaning and commercial impression, that the services may
be offered by the same financial institutions and may be directed to the same business
consumer, and may be encountered in the same channels of trade. While the services
of both Applicant and Registrant are not impulse purchases, this is the only factor
which does not weigh in favor of finding a likelihood of confusion, and in view of the
strong similarity between the marks and the related nature of the services, we
conclude that confusion is likely to occur between Applicant’s DAVINCI PAYMENTS
mark for its services and Registrant’s DAVINCI FINANCIAL DESIGNS mark for its
services.
II. Decision
The refusal to register Applicant’s mark DAVINCI PAYMENTS is affirmed.