Waves Licensing, LLC

Trademark Trial and Appeal BoardSep 30, 2013

No. 85437501 (T.T.A.B. Sep. 30, 2013)

Mailed: September 30, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Waves Licensing, LLC ________ Serial No. 85437501 _______ Roberta Jacobs-Meadway and Candace Lynn Bell of Eckert Seamans Cherin & Mellott, LLC for Waves Licensing LLC. Michele-Lynn Swain, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Bucher, Lykos and Masiello, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On October 3, 2011, Waves Licensing, LLC (“applicant”)1 filed an application to register on the Principal Register the mark SFG in standard character format for services ultimately identified as “providing financial intermediation services to institutional investors with respect to securities and other financial instruments and products, namely, brokerage in the field of securities, trading of and investments in securities and financial instruments and products; financial 1 As explained in applicant’s appeal brief, applicant “holds and licenses intellectual property” and is a member of the Susquehanna International Group of Companies. Susquehanna Financial Group, LLLP is the institutional broker dealer member of SIG. This Opinion is Not a Precedent of the TTAB Serial No. 85437501 2 exchange; investment funds transfer services to institutional investors; providing financial market news and commentary to institutional investors” in International Class 36.2 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered composite mark SFG A Legacy of Trust and Innovation displayed below for “financial planning services” in International Class 36, that when used on or in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive:3 The registration is owned by Schultz Financial Group Inc. and includes the following description of the mark: “The mark consists of the mark SFG A Legacy of Trust and Innovation along with four ship steering wheel designs, each with either a Parthenon design, a heart inside a hand design, a chair design, and a Knight chess piece design located within the ship steering wheels.” 2 Application Serial No. 85437501, filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging December 31, 1998 as the date of first use anywhere and in commerce. 3 Registration No. 3311403, issued October 16, 2007, alleging December 1, 2006 as the date of first use anywhere and in commerce. The examining attorney also refused registration Serial No. 85437501 3 In an attempt to circumvent the refusal, applicant amended its recitation of services in its request for reconsideration to limit the provision thereof to “institutional investors.” Following the institution of this appeal and subsequent denial of applicant’s request for reconsideration, applicant filed a request for remand seeking to further amend the recited services to delete the following wording: “financial and investment consulting, brokerage in the field of commodities, investment banking, money management and investment advisory services.” The examining attorney accepted the amendment but maintained the refusal to register. For the reasons explained below, we affirm the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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). These factors and the other relevant du Pont factors are discussed below. based on Registration No. 3582979; however, following applicant’s request for reconsideration, the refusal was withdrawn. Serial No. 85437501 4 I. Comparison of The Marks First we consider the du Pont likelihood of confusion factor regarding the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “[T]he test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant argues that although the marks share a common element, the term SFG, overall the marks engender distinct commercial impressions. As applicant maintains, the first element of the registered mark is the design, followed by the term SFG and ending with the slogan “A Legacy of Trust and Innovation.” According to applicant, the additional design element and slogan render registrant’s mark dissimilar in sound and appearance when compared to the applied-for mark. In addition, applicant contends that the term SFG as used in applicant’s mark is neither arbitrary nor distinctive since consumers will recognize the term as an Serial No. 85437501 5 acronym for the name of registrant (Schultz Financial Group). As such, applicant maintains that the commercial impression of the involved marks is different. Applicant’s arguments are unconvincing. We find that the slogan appearing in the registrant’s mark is merely ancillary to the dominant commercial impression created by the term SFG. While acknowledging the distinctions noted above by applicant, we find that applicant overemphasizes the effect of the addition of the slogan in registrant’s mark. The slogan appears in much smaller size lettering than the term SFG, and is suggestive of registrant’s financial planning services. It is more likely that prospective consumers will overlook the slogan and instead confuse the marks as identifying the same services from the same source, given that the term SFG as it appears in the registered mark is positioned in the center in larger, stylized font. As to the additional design element in registrant’s mark, we find that, in this particular case, it fails to mitigate the highly similar appearance, sound, and connotation of the respective SFG literal portions of the involved marks. The design in registrant’s mark appears to the side of the term SFG which is in large, stylized lettering. Applicant is reminded of the often recited principle that when a mark consists of a literal portion and a design portion, the literal portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the literal portion is normally accorded greater weight in determining whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, Serial No. 85437501 6 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). Moreover, because applicant has applied to register its mark in standard format, if registered it might be used in any stylized display or color scheme, including one that is identical to the special form drawing of the term SFG in the registration. See Trademark Rule 2.52(a). Lastly, we disagree with applicant’s argument that the registered mark SFG is not arbitrary when applied to registrant’s identified services. As previously recognized by the Board in Edison Brothers Stores, Inc. v. Brutting E.B. Sport- International GmbH, 230 USPQ 530, 533 (TTAB 1986), “…[c]onfusion is more likely between arbitrarily arranged letters than between other types of marks. … We think that it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words, or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.” Unless the company name is “sufficiently well known,” the fact that the letters are derived from a company’s trade name does not obviate the likelihood of confusion. See id. In any event, even if we agree with applicant’s position, this does not change the fact that both applicant’s and registrant’s marks are comprised, either in whole or in part, of the term SFG. We therefore find that applicant’s mark and registrant’s mark are highly similar in appearance, sound, connotation and commercial impression. This first du Pont factor weighs in favor of finding a likelihood of confusion. Serial No. 85437501 7 II. The Services/Trade Channels/Prospective Consumers Next we turn to the services, channels of trade and prospective consumers. Applicant argues that the involved services are not closely related. In connection therewith, applicant contends the amendments made to the recitation of services restricting the types of services offered, trade channels, and class of prospective purchasers obviate any likelihood of confusion. More specifically, applicant maintains that because its services are limited to institutional investors (e.g., banks, insurance companies, pension funds), the same consumers would not ordinarily encounter both applicant’s and registrant’s services, given that the record shows that registrant’s financial planning services are aimed toward high net worth individuals. We are not persuaded. It is well established that the respective services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion; rather, it is sufficient that the respective services are related in some manner, or the conditions surrounding their marketing must be such that the goods will be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). We acknowledge that the parties are providing different types of financial services. Nonetheless, the record shows that applicant’s and registrant’s services are complementary in nature, and are commonly offered by Serial No. 85437501 8 the same entities and encountered at the same time by the same prospective purchasers. The examining attorney has made of record copies of use-based, third- party registrations identifying services offered by both applicant and registrant. See for example the following: Registration No. 4077619 for the mark MERCER WEALTH SOLUTIONS for “Financial analysis and consultation; financial planning; financial portfolio management; financial research; financial risk management relating to projected outcomes; mutual funds investment, distribution and brokerage; mutual fund brokerage; financial services, namely, investment funds transfer and transaction services;” Registration No. 4279432 for the mark ValuesCentric for “Capital investment consulting; Capital investment services; Financial consulting; Financial investment in the field of private equity; Financial planning and investment advisory services; Financial planning consultation; Information, advisory, consultancy and research services relating to finance and investments; Investment advisory services; Investment consultancy; Investment management; Private equity fund investment services;” Registration No. 3282961 for the mark UIB CAPITAL INC. (with design of a unicorn head) for “Financial affairs, namely, financial planning, financial research, capital investment consultation and management; monetary affairs, namely, funds investment, investment funds transfer and transaction services, investment banking services, investment brokerage;” Registration No. 4229872 for the mark OLSON MOBECK INVESTMENT ADVISORS for “Brokerage services for stocks and bonds; Financial planning and investment advisory services; Financial portfolio management; Financial services, namely, wealth management services; Investment management; Mutual fund brokerage; Providing financial services with respect to securities and other financial instruments and products, namely, money management services;” and Registration No. 4056114 for the mark SHEARSON for “Securities brokerage, investment brokerage, financial and investment consulting, and investment banking services; investment of funds for others; Serial No. 85437501 9 investment management; financial portfolio management; financial asset management; financial planning for retirement; financial administration of retirement plans; and financial services, namely, estate asset acquisition and estate settlement services.” Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). In addition, the examining attorney also submitted Internet evidence showing that in the financial services sector, other entities offer both financial planning services to individuals as well as financial and investment services to large institutional investors. See for example excerpts from the websites of Morgan Stanley, Merrill Lynch and Raymond James. Denial of Request for Reconsideration (March 5, 2013). We hasten to add that applicant’s amendment to restrict its channels of trade and category of consumers to institutional investors is of no avail. Applicant, relying on the case of In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990), urges the Board to consider extrinsic evidence that registrant’s financial planning services are promoted to and purchased by high net worth individuals rather than institutional investors. However, as that case makes clear, resort to extrinsic evidence is appropriate only in instances where the description of the goods or services is vague, for example due to their technical nature. See id. By contrast, in this instance, because the nature of the services is definite, we apply the more general principle that we compare the services as identified, rather than by any extrinsic evidence. See, e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Serial No. 85437501 10 Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). Because the recitation of the involved registration is unrestricted as to trade channels and consumers, we must presume that registrant’s “financial planning services” will travel in the same ordinary trade and distribution channels as applicant’s more specific services and will be marketed to the same potential consumers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). As reflected in the record, firms offering financial planning services sell their services directly to their customers via trained professionals. We find this to be the ordinary trade channel for such services. Such consumers include both institutional investors as well as individuals. As discussed above, the evidence shows financial institutions such as Morgan Stanley and Merrill Lynch offering financial planning and investment services to both individuals and institutional investors. Hence, the complementary nature of the services coupled with overlapping trade channels and consumers weigh in favor of finding a likelihood of confusion. III. Scope of Protection The sixth du Pont factor requires consideration of any evidence pertaining to the number and nature of similar marks in use in the marketplace in connection with similar services. See Nat'l Cable Television Ass'n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). Applicant argues that Serial No. 85437501 11 registrant’s mark SFG is weak, and therefore entitled to a lesser scope of protection. In support thereof, applicant has made of record evidence obtained from the Internet that fifteen entities in the financial services industry use the term SFG as either a trade name or part of a trade name. In the absence of data regarding the exposure of such third-party uses to consumers, however, applicant’s evidence is of limited probative value. We therefore cannot find that the cited mark is weak, diluted or entitled to only a narrow scope of protection. Even assuming that SFG is shown to be “weak,” the Board has previously recognized that marks deemed “weak” are still entitled to protection against the registration by a subsequent user of a similar mark for closely related services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). As such, we deem this du Pont factor neutral. IV. Sophistication of Consumers/Conditions of Sale Applicant maintains that the sophistication of the consumers favors a finding of no likelihood of confusion. That is, applicant contends that because the prospective consumers of applicant’s services are institutional investors, who typically have a fiduciary duty to make only prudent financial decisions, they will exercise a higher degree of care, thereby making confusion unlikely between applicant’s and registrant’s marks. We agree with applicant that institutional investors are not engaged in casual or impulsive purchasing decisions. Nonetheless, due to the unrestricted nature of the registrant’s financial planning services, applicant’s argument is Serial No. 85437501 12 flawed. As acknowledged by applicant, the relevant class of consumers of registrant’s services may include individuals, i.e., members of the general public. When the relevant consumers include both professionals and members of the general public, the standard of care for purchasing the services is that of the least sophisticated purchaser. See Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). The record fails to support a finding that members of the general public, even high net worth individuals are sufficiently sophisticated to distinguish the very similar marks given their use in connection with highly related services. Moreover, even if we assume that the purchasers of both applicant's and registrant's services are limited to institutional investors who are highly knowledgeable and sophisticated, it is settled that even sophisticated purchasers are not immune from source confusion. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing 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 Decombe, 9 USPQ2d 1812 (TTAB 1988). The similarities between the marks and services offered thereunder outweigh any benefit of sophisticated purchasing decisions. 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 Serial No. 85437501 13 also Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not automatically eliminate the likelihood of confusion because “[i]t must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over a long period of time that even subtle differences are likely to result in recognition that different marks are involved”). We thus find this du Pont factor is neutral. To the extent that there are any other relevant du Pont factors, we treat them as neutral. After considering all of the evidence of record and argument pertaining to the du Pont likelihood of confusion factors, we find that because the marks are similar in commercial impression, the services are related, and the purchasers overlap, confusion is likely between applicant's mark for its identified services and the mark in the cited registration. To the extent there are any doubts, we resolve them, as we must, in registrant's favor. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004); and In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). DECISION: The refusal to register under Section 2(d) is affirmed.