The Rock Creek Group, LP

Trademark Trial and Appeal Board

Oct 7, 2014

No. 85595470 (T.T.A.B. Oct. 7, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 6, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re The Rock Creek Group, LP
________

Serial No. 85595470
_______

Barbara A. Barakat of Wilmer Cutler Pickering Hale and Dorr for The Rock Creek
Group, LP.

Dominick J. Salemi, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_______

Before Quinn, Zervas, and Kuczma.
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
The Rock Creek Group, LP (“Applicant”) filed an application to register the
mark THE ROCK CREEK GROUP (in standard characters) for
individualized and personalized financial services
provided to institutional investors, namely, sovereign
wealth funds, state and local pension plans, multinational
corporations, foundations and endowments, namely,
financial management services, investment management
services, investment advisory services, asset portfolio
management services, securities trading services, creating
portfolios of emerging fund managers for investors,
developing customized portfolio solutions, providing
dynamic asset allocation services, providing risk
budgeting, risk aggregation and risk management
services, conducting fund, manager investment and
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operational due diligence, transition management
services for investors restructuring portfolios and
providing temporary use of non-downloadable computer
programs, databases and analytical tools for use in
investment and asset management, asset and risk
allocation, fund and manager due diligence, portfolio
construction, risk measurement, operations and investor
communications, all of the foregoing excluding real estate
investment, management and brokerage services (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,
when used in connection with Applicant’s services, so resembles the previously
registered mark ROCK CREEK PROPERTY GROUP, LLC (in typed form)
(“PROPERTY GROUP LLC” disclaimed),2 and the mark shown below

(“PROPERTY GROUP” disclaimed),3 both for “real estate investment, management,
and brokerage services” in International Class 36, as to be likely to cause confusion.

1 Application Serial No. 85595470, filed April 11, 2012 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging dates of first use anywhere and first use in commerce of
January 2003.
2 Registration No. 2838178, issued May 4, 2004; renewed. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (2014).
3 Registration No. 3728263, issued December 22, 2009. The registration includes the
following description of the mark: “The mark consists of a stylized ‘R’ located within a
rectangle; the wording ‘Rock Creek Property Group’ is located beneath the rectangle.”
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The registrations are owned by a single entity, namely Rock Creek Property Group,
LLC.
When the refusal was made final, Applicant appealed. Applicant
subsequently requested reconsideration based on the amended recitation of services
set forth above. When the request for reconsideration was denied, proceedings
resumed. Applicant and the Examining Attorney filed briefs.
Applicant argues that while both marks include “ROCK CREEK,” this
wording identifies a free-flowing tributary of the Potomac River in the Washington,
D.C. metropolitan area where both Applicant and Registrant are located. As such,
Applicant contends that “consumers are likely to look beyond that phrase to
determine the nature of the source of the services.” (4 TTABVue 5). Applicant also
contends that the services, trade channels and customers are different, with
Applicant providing high level financial investment and management services for a
specific type of customer; moreover, Applicant does not sell, manage or invest in real
estate, and Applicant’s customers would not contact Registrant to handle their
financial investments. To this point, Applicant asserts that there has been no actual
confusion between the marks, despite over a decade of contemporaneous use of the
marks. Further, according to Applicant, the services are highly specialized and
expensive, so the selection and purchase of both Applicant and Registrant’s services
involve a close personal contact, and individual attention to that entity’s clients.
Applicant did not introduce any evidence in support of its arguments.
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The Examining Attorney maintains that the marks are similar, and that the
services are related. In connection with the later argument, the Examining
Attorney stated that “despite the amendment to the identification of services, said
amendment does not resolve the problem as applicant’s services are still closely
related to registrant’s which are very broadly set out or identified.” (10 TTABVue 1).
In support of the refusal the Examining Attorney submitted copies of third-party
registrations showing that the same entity has registered a single mark for both
financial services and real estate services.
Our determination under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We initially turn to the first du Pont factor regarding the similarity between
the marks. Because the design features in one of the cited marks (Reg. No. 3728263)
result in additional differences with Applicant’s mark, we confine our analysis to
the issue of likelihood of confusion between Applicant’s mark and the cited
registration for the mark in typed form (Reg. No. 2838178), namely the stronger of
the two refusals. That is, if confusion is likely between those marks, there is no
need for us to consider the likelihood of confusion with the cited design mark, while
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if there is no likelihood of confusion between Applicant’s mark and the cited mark in
typed form, then there would be no likelihood of confusion with Registrant’s mark
with design elements. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears to be unavoidable.”).
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In Registrant’s mark, the generic wording “PROPERTY GROUP LLC”
(serving to identify the entity type and general subject matter of Registrant’s
services) is disclaimed.4 Thus, this wording has no source-indicating capacity. See In
re Piano Factory Grp., Inc., 85 USPQ2d 1522 (TTAB 2006). See generally TMEP §
1213.03(d) (2014). Accordingly, we view “ROCK CREEK” in Registrant’s mark to be
the dominant portion. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,”
is the dominant portion of the mark THE DELTA CAFE). Moreover, purchasers in
general are inclined to focus on the first word or portion in a trademark; in
Registrant’s mark, “ROCK CREEK” is the first portion. Presto Products, Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is likely to be impressed upon the mind of a purchaser and
remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692.
In Applicant’s mark, the presence of the word “THE” at the beginning of the
mark does not have any trademark significance. See In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE are “virtually identical”
and likely to be confused). Although the word “GROUP” is not disclaimed, it is the
last word in the mark, and is in the nature of an entity designation. As such, the

4 The word “group” is defined, in relevant part, as “a number of people who are connected by
some shared activity, interest or quality.” (). The Board may take judicial notice
of entries in standard reference works, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See In re Thomas White Int’l Ltd.,
106 USPQ2d 1158, 1160 n.1 (TTAB 2013).
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word clearly plays a subordinate source-indicating role relative to the wording
“ROCK CREEK” in Applicant’s mark.
Thus, both marks are dominated by the identical wording, namely ROCK
CREEK. We recognize, however, that the marks must be considered in their
entireties, including disclaimed wording and/or wording that lacks source-indicating
capability. The commonality of the wording ROCK CREEK in the marks THE
ROCK CREEK GROUP and ROCK CREEK PROPERTY GROUP, LLC results in
marks that are similar in sound and appearance. The presence of additional,
subordinate words in the later portion of each mark is insufficient to distinguish the
marks. As to meaning, both marks convey the same suggestion, that is, Applicant
and Registrant are located and offer their services in the Washington metropolitan
area.5 Given the similarities in sound, appearance and meaning, the marks
engender similar overall commercial impressions.
The similarity between the marks in their entireties weighs in favor of
finding a likelihood of confusion.
We next direct our attention to the second du Pont factor regarding the
similarity/dissimilarity between the services. It is well settled that the services of
Applicant and Registrant need not be identical or competitive, or even be offered

5 “Rock Creek” is the name of a creek that flows through Maryland and Washington, DC.
Rock Creek Park, through which the creek flows, is located in Washington, DC, and is one
of the largest urban parks in the nation. (). As noted earlier, the
Board may take judicial notice of entries in standard reference works. These works include
online gazetteers that exist in printed format or have regular fixed editions. See In re
Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1927 (TTAB 2004) (judicial
notice taken of The Columbia Gazetteer of North America and Merriam-Webster’s
Geographical Dictionary).
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through the same channels of trade, to support a holding of likelihood of confusion.
It is sufficient that the respective services of Applicant and Registrant are related in
some manner, and/or that the conditions and activities surrounding the marketing
of the services are such that they would or could be encountered by the same
persons under circumstances that could, because of the similarity of the marks, give
rise to the mistaken belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). The issue here, of course, is not whether purchasers would confuse the
services, but rather whether there is a likelihood of confusion as to the source of
these services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
It is settled that in making our determination regarding the relatedness of
the services, we must look to the services as identified in the application and the
cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011).
In comparing the services, we initially note two limitations in Applicant’s
recitation: 1) the “individualized and personalized financial services” are specifically
provided to “institutional investors, namely, sovereign wealth funds, state and local
pension plans, multinational corporations, foundations and endowments”; and 2)
“real estate investment, management and brokerage services” are specifically
excluded.
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Registrant’s services on the other hand are broadly worded. Because
Registrant’s “real estate investment, management, and brokerage services” have no
limitations or restrictions, it is presumed that Registrant’s services encompass all
services of the type identified, move in all trade channels normal for those services,
and are available to all classes of purchasers for those services. See Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973);
Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Thus, Registrant’s services are
construed to encompass real estate investment, management, and brokerage
services directed to institutional investors, including the specific types of
institutional investors identified in Applicant’s recitation of services.6
Given the limitation of prospective purchasers in Applicant’s recitation of
services to institutional investors, coupled with the construction of Registrant’s
recitation to include the same class of purchasers, this class comprises the relevant
purchasers for purposes of our analysis because they are the only ones who
theoretically could be exposed to both marks. Accordingly, the second du Pont factor
in this case involves a comparison of financial management and investment services
rendered to institutional investors on the one hand, and real estate investment,
management and brokerage services offered to institutional investors on the other.

6 Applicant, in its brief, points to Registrant’s website in an attempt to restrict the scope of
Registrant’s services. The referenced excerpts of the website were not submitted, but even if
they were, such submission would be untimely. Trademark Rule 2.142(d). Moreover, and in
any event, an applicant may not restrict the scope of the services covered in the cited
registration by argument or extrinsic evidence. In re Midwest Gaming & Entertainment
LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645,
1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986).
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The Examining Attorney’s evidence bearing on the relatedness of the services
comprises copies of several use-based third-party registrations which individually
cover, under the same mark, both types of services involved herein. “Third-party
registrations which cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),
aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993). The registrations include the following:
Reg. No. 2747945 of the mark FOG CUTTER for “real
estate brokerage services; real estate investment services;
real estate appraisal services; real estate listing services;
real estate management and leasing services; financial
investment services in the fields of securities,
commodities, mutual funds, and real estate; financial
management services; and consultation services in the
fields of financial and real estate investment advice,
analysis and management”;

Reg. No. 2789326 of the mark LIFE SCIENCE HOTEL for
“financial services, namely, financial consultation,
financial analysis, financial planning, financial
management, providing debt and equity capital, and
tangible and intangible asset financing; business
incubator services, namely providing equity and debt
financing to emerging and start-up companies; real estate
services, namely real estate brokerage, acquisition,
maintenance, rental, leasing, and management”;

Reg. No. 2872017 of the mark ONE GOOD
INVESTMENT IS WORTH A LIFETIME OF LABOR for
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“investment and real estate services, namely, real estate
brokerage, management and investment services,
financial management services, and investment advice
and consultation services”;

Reg. No. 4054017 of the mark DURASPACE for “real
estate management; financial services, namely, financial
consultation, financial analysis, financial planning,
financial management, financing services, providing
working capital, namely, debt and equity capital, tangible
and intangible asset financing, and financial portfolio
management; business incubator services, namely,
providing debt and equity financing to emerging and
start-up companies”;

Reg. No. 4171286 of the mark RELIABILITY, TRUST,
RESULTS for “providing real estate investment services,
real estate management services and financial portfolio
management services”;

Reg. No. 4174799 of the mark AG LOAN FUND for
“financial analysis and consultation services; real estate
consultancy and real estate management services”; and

Reg. No. 4195577 of the mark SUNGATE and design for
“financial services and monetary affairs, namely,
investment advice, financial information, financial
management and real estate management consultation
and real estate investment assessment.”

We recognize that none of the recitations in the registrations specifically limits the
services to institutional investors. However, just as in the case of Registrant’s
registration, the recitations of services are worded broadly enough to encompass
institutional investors as a prospective class of purchasers. This third-party
registration evidence supports the Examining Attorney’s position that the services
are related.
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As for the exclusion of Registrant’s services in Applicant’s recitation of
services, this constitutes an ineffective attempt to avoid a finding that the involved
services are similar. As indicated above, the services need not be identical to
support a finding of likelihood of confusion. In this case, both types of services fall
under the general category of investment services (albeit financial vs. real estate),
and they may emanate from the same source.
The similarity between the services, and the similarities in trade channels
(e.g., investment advisors) and prospective purchasers (institutional investors),
weigh in favor of a finding of likelihood of confusion.
Applicant claims that customers for Applicant’s and Registrant’s services are
sophisticated buyers who exercise due diligence prior to retention of financial or real
estate investment advisors. Despite the fact that Applicant did not introduce any
evidence regarding the degree of care exercised by customers in selecting an
investment advisor and the role played by the advisor’s service mark, we are willing
to acknowledge, based on the type of services involved herein, that institutional
investors seeking financial and real estate investment services may, in fact, be
fairly sophisticated purchasers. In view thereof, we find this factor to favor
Applicant. However, even assuming that Applicant’s and Registrant’s services may
involve a careful purchase after exercising due diligence, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and related services. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
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Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarity between the marks and the relatedness of the services rendered
thereunder outweigh any presumed sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). See also Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed. Cir. 2014).
With respect to the eighth du Pont factor, Applicant states that it is unaware
of any instances of actual confusion between its mark and Registrant’s mark,
despite over a decade of contemporaneous use. It is not necessary to show actual
confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v.
HRL Associates Inc., 14 USPQ2d at 1842-43. Applicant’s assertion, particularly in
this ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated
statements of no known instances of actual confusion are of little evidentiary
value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973) (stating that testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual
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confusion did not exist or that there was no likelihood of confusion); In re Binion, 93
USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84
USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984). In any event, the record is devoid of evidence relating to the extent of
use of Applicant’s and Registrant’s marks that would enable us to determine
whether there have been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the
length of time during and conditions under which there has been contemporaneous
use of the marks without evidence of actual confusion is considered neutral.
We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto,
including any evidence and arguments not specifically discussed in this opinion. We
conclude that purchasers familiar with Registrant’s real estate investment,
management, and brokerage services rendered under the mark ROCK CREEK
PROPERTY GROUP, LLC would be likely to mistakenly believe, upon encountering
Applicant’s mark THE ROCK CREEK GROUP for individualized and personalized
financial services provided to institutional investors, namely, sovereign wealth
funds, state and local pension plans, multinational corporations, foundations and
endowments, that the services originate from or are associated with or sponsored by
the same entity.
Decision: The refusal to register is affirmed.