UBS AGv.UFS Securities, L.L.C.

Trademark Trial and Appeal Board

Jan 30, 2004

No. 91150775 (T.T.A.B. Jan. 30, 2004)

Mailed: January 30, 2004
Paper No. 20
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
UBS AG
v.
UFS Securities, L.L.C.
_____
Opposition No. 91150775
to application Serial Nos. 76203687 and 76203688
filed on February 2, 2001
_____
Paul W. Kruse, Kevin Kramer, James R. Menker and Thomas P.
Feddo of Pillsbury Winthrop for UBS AG.
Denise C. Mazour of Thomte, Mazour & Niebergall for UFS
Securities, L.L.C.
______
Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
UFS Securities, L.L.C. (a Nebraska limited liability
company) has filed applications to register the marks UFS
SECURITIES (typed drawing) and UFS SECURITIES as shown
below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91150775
2
both for “securities brokerage services.”1
Opposer, UBS AG, a Swiss corporation, filed a notice of
opposition to registration of applicant’s marks, alleging
priority of use and likelihood of confusion under Section
2(d) of the Trademark Act, as ground for opposition.
Opposer specifically alleges that it is the owner of a
registration for the mark UBS for “banking, investment
banking, and securities brokerage services;”2 that it, along
with its predecessor, is the prior user of the mark UBS for
such services; that opposer has built up extensive and
valuable goodwill and consumer recognition in the mark UBS;
and that applicant’s marks, if used in connection with the
identified services, so resemble opposer’s mark as to be
likely to cause confusion, to cause mistake, or to deceive.
Applicant filed an answer wherein it denied the
allegations of the notice of opposition.
1 Serial Nos. 76203688 and 76203687, respectively, filed February
2, 2001 and alleging a bona fide intention to use the mark in
commerce. In each application, the word “SECURITIES” is
disclaimed apart from the mark as shown.
2 Registration No. 1,573,828 issued December 26, 1989; Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
Opposition No. 91150775
3
The record consists of the files of the involved
applications; the testimony deposition of opposer’s witness
Neil Gluckin (with exhibits); and opposer’s notices of
reliance on printed publications. Applicant did not take
testimony or otherwise offer any evidence on its behalf.
Both opposer and applicant filed briefs on the case.
An oral hearing was not requested.
The record shows that opposer UBS AG offers financial
services, including banking, investment banking, and
securities brokerage services. Opposer is one of the
largest financial services companies in the world and has
offices throughout the United States and North America.
Opposer is the fourth largest stockbroker for individuals in
the United States; one of the top five traders of shares on
the NYSE; and one of the top ten traders of shares on the
NASDAQ.
Opposer has used the UBS mark in connection with its
services since 1962. Opposer has spent substantial sums on
advertising and promoting its services.3 Opposer advertises
by way of print media, direct marketing, sponsorship of
events and its web site. For well over ten years, opposer
has advertised in such magazines and newspapers as The
Economist, Fortune, Baron’s, Harvard Business Review, The
New York Times Sunday Magazine, The Wall Street Journal and
Opposition No. 91150775
4
3 Opposer’s advertising/promotional figures have been made of
record under seal.
Opposition No. 91150775
5
The Financial Times. In addition, opposer has organized and
conducted numerous seminars and conferences wherein it has
provided investment information to investment professionals
and potential investors.
Inasmuch as applicant failed to take testimony or
submit any other evidence, what we know about applicant is
the information in the application. Applicant is a limited
liability company of Nebraska located in Lincoln, Nebraska.
Because opposer, during its testimony period, submitted
status and title copies of its pleaded registration, there
is no issue with respect to opposer’s priority. King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E. I.
du Pont deNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key
factors to be considered are the
similarities/dissimilarities between the marks and the
similarities/dissimilarities between the goods and/or
services.
Turning first to the services, we find that opposer’s
securities brokerage services and applicant’s securities
Opposition No. 91150775
6
brokerage services are identical.4 Further, there being no
limitations in the recitation of services in either
opposer’s registration or applicant’s applications, it must
be presumed that opposer’s and applicant’s services would
travel in all the normal channels of trade for such services
and be offered to all the usual purchasers.
We turn next to a consideration of the similarity or
dissimilarity of the marks, in their entireties, as to
appearance, sound, connotation and commercial impression.
At the outset, we note that “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp., v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992). Further, although the marks at issue must be
considered in their entireties, it is well 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. Disclaimed or otherwise descriptive mater is
generally viewed as a less dominant or significant feature
of a mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Finally, as noted by the
4 Although opposer’s pleaded registration covers banking and
investment services, in its brief on the case, opposer’s
Opposition No. 91150775
7
Board in Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16
USPQ2d 1597, 1602 (TTAB 1990), where as here, the marks
consist of unpronounceable letter combinations, “they may be
inherently difficult to remember and thus more susceptible
of confusion or mistake than are word marks… .”
Applying the above principles to the marks at issue, we
find that applicant’s marks, UFS SECURITIES and UFS
SECURITIES and design, are substantially similar to
opposer’s mark UBS in sound, appearance and overall
commercial appearance. In comparing the marks, it is
appropriate to give more weight to the UFS portion of
applicant’s marks because of the descriptive nature of the
word SECURITIES. Indeed, it is the UFS portion of
applicant’s marks that customers would likely use to refer
to applicant’s services. The UFS portion of applicant’s
marks and opposer’s UBS mark differ by only the middle
letter. The letter combinations UFS and UBS are
unpronounceable and are inherently difficult to remember.
Although the UFS portion of one of applicant’s marks is
depicted in a stylized format, this does not serve to
distinguish the marks to avoid a likelihood of confusion.
Further, opposer’s evidence of the length and extent of
use of its UBS mark, along with the advertising thereof,
establish that opposer’s UBS mark is a strong mark in the
likelihood of confusion argument centers on its securities
Opposition No. 91150775
8
field of securities brokerage services. Thus, it is
entitled to a wide scope of protection. Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 784 F.2d 669, 223
USPQ 1281, 1284 (Fed. Cir. 1984). Applicant’s marks, which
consist of a very similar combination of letters, come too
close to the zone of protection to be accorded opposer’s
mark.
In view of the foregoing, we find that applicant’s
marks UFS SECURITIES and UFS SECURITIES and design are so
similar to opposer’s mark UBS that, if used in connection
with services that are identical (securities brokerage
services), confusion is likely to result. See, e.g., Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); [confusion found likely in
contemporaneous use of TMM and TMS, both for software
systems]; Dere v. Institute for Scientific Information,
Inc., 420 F.2d 1068, 164 USPQ 347 (CCPA 1970) [confusion
found likely in contemporaneous use of I.A.I. for indexes to
books and literature and ISI for publications]; Chemetron
Corp. v. N.R.G. Fuels Corp., 157 USPQ 111 (TTAB 1968)
[confusion found likely in contemporaneous use of NCG for
compressed gases and NRG for liquefied petroleum, etc].
Decision: The opposition is sustained as to each of
the involved applications.
brokerage services.
Opposition No. 91150775
9