IN RE H.D. VEST, INC., 77599306 (TTAB 1-31-2011)

IN RE H.D. VEST, INC., 77599306 (TTAB 1-31-2011)

In re H.D. Vest, Inc.

Serial No. 77599306United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: January 31, 2011Page 1

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.

Felicia J. Boyd, J. Manuel Herrera and Hae Park-Suk of Barnes Thornburg LLP for H.D. Vest, Inc.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney).

Before Quinn, Kuhlke and Cataldo, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On October 23, 2008, H.D. Vest, Inc. applied to register the standard character mark VEST FINANCIAL SERVICES (FINANCIAL SERVICES disclaimed) on the Principal Register based on a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. ? 1052(b), for services identified as “investment consultation, investment brokerage, investment banking, and investment management services; financial investment services in the fields of securities, mutual funds,Page 2
certificates of deposit, and portfolio management; estate planning services; financial planning for retirement; insurance consultation and insurance brokerage services; financial evaluation for insurance purposes; providing information in the field of financial investment and insurance services, namely, insurance brokerage, professional money management services, retirement, financial and estate planning services, financial portfolio management, and financial investment, security, commodity and stock brokerage services, all provided to tax and accounting professionals” in International Class 36.

Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used with its identified services, so resembles the registered mark shown below (FINANCIAL disclaimed) for “financial planning related to the sale of insurance and services,” in International Class 36, as to be likely to cause confusion, mistake or deception.[fn1] Page 3

Applicant has appealed the final refusal and the appeal is fully briefed. We affirm the refusal to register.

When there is a question of likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. Du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

We first consider the possible relatedness of the services. The examining attorney asserts that they are closely related in that they “both include financial and financial planning services in the field of insurance” and that because “the Identification of the Registrant’s services are broad so as to include both professionals and the general public, it is presumed that the [registration] encompasses all services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.” Br. p. 10.Page 4

In support of this argument, the examining attorney submitted third-party registrations for, inter alia, “financial planning” and “insurance consultation.” See, e.g., Reg. Nos. 3305461 (“financial planning” and “insurance consultation”), 3560591 (“financial advice and consultancy services; financial consultancy and insurance consultancy”); Reg. No. 3321860 (“financial planning” and “insurance consultation”); and Reg. No. 3430583 (“financial planning” and “insurance consultation).” In re Albert Trostel Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) (third-party registrations probative to the extent they show that the services listed therein are of a kind that may emanate from a single source). In addition, the examining attorney submitted printouts of third-party websites showing services similar to applicant’s and registrant’sidentified services being offered by the same entity on the same website. See, e.g., www.marcainc.com; www.raymondjames.com; and www.boucherplanning.com, attached to July 28, 2009 Office Action.

We begin by reiterating the well-established rule that we must evaluate the relatedness of the services as they are identified in the application and registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). SeePage 5
also Hewlett-Packard Co. v. Packard Press Inc.,281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). As identified, registrant’s “financial planning related to the sale of insurance and services,” are encompassed by and/or very closely related to applicant’s “financial planning for retirement; insurance consultation . . .; providing information in the field of financial investment and insurance services, namely, insurance brokerage, professional money management services, retirement, financial and estate planning services, financial portfolio management. . . .”

With regard to the channels of trade and classes of purchasers, as the examining attorney points out, we cannot limit registrant’s services to what any evidence shows its “actual services” to be. In re Bercut-Vandervoort Co., 229 USPQ 763 (TTAB 1986) (“It is well settled that in a proceeding such as this, the question of likelihood of confusion must be determined by an analysis of the marks applied to the goods as identified in the application vis?-vis those recited in the registration, rather than what extrinsic evidence shows those goods to be.”) However, applicant’s services are limited to “tax and accounting professionals.”Page 6

Thus, in view of the close relationship of the services and the absence of any limitations in the registration we presume that the purchasers and channels of trade for such services would overlap as to “tax and accounting professionals.” See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).

Regarding the conditions of sale, these services are obviously not impulse purchases and would be purchased with more care and thought by knowledgeable purchasers. However, as stated by our primary reviewing court, “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. ‘Human memories even of discriminating purchasers . . . are not infallible.'” In re Research and Trading Corp.,793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc. v. Hardman Holden Ltd.,434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Therefore, the fact that the purchasers may exercise care before purchasing these services does not mean there can be no likelihood of confusion. While the relative sophistication of the potential consumers and purchaser care are relevant considerations, they are not controlling in this case.Page 7

We turn now to consideration of the marks. In determining the similarity between the marks we analyze “the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. Finally, where as in the present case, the services, as identified, are so closely related, the degree of similarity between the marks which is necessary to support a finding of likelihood of confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

In comparing the marks, the examining attorney contends that VEST is the dominant feature in both marks and the marks are “essentially a transposition of the other.” The examining attorney argues that the common element VEST is the dominant feature in both marks because the other literal elements in the marks are descriptive and disclaimed. Regarding the design portion in registrant’s mark the examining attorney notes that it is secondary to the central letter V in the term VEST.

We begin by noting, that while we must consider the marks in their entireties, there is “nothing improper in stating that, for rational reasons, more or less weight hasPage 8
been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re National Data Corp.,753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

In this case, VEST is unquestionably the most dominant feature of applicant’s mark VEST FINANCIAL SERVICES. It is the first word in applicant’s mark and the following words FINANCIAL SERVICES are simply the name of the services and are not presented in any unique or incongruous manner. Palm Bay, 73 USPQ2d at 1692 (first word in the mark is the prominent feature); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988). In re Dixie Restaurants Inc.,105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (“Delta” dominant portion of “The Delta Cafe” where “cafe” disclaimed).

As to the mark in the cited registration, it clearly emphasizes the term VEST by displaying it in contrasting color with an enlarged V. The central question here is the effect of the design element in registrant’s mark and whether it is sufficient to distinguish the marks. The applicant argues that the common term VEST is weak in the field of financial planning and insurance and that the presence of the design in registrant’s mark completelyPage 9
alters the connotation and commercial impression to obviate likely confusion.

The record shows that the definition of the term VEST relevant to the involved services is “to place or give into the possession or discretion of some person or authority (and) to grant or endow with a particular authority, right or property.” Request for Reconsideration, Exh. B (excerpt from Merriam Webster online). Further, applicant submitted several third-party registrations for services in the financial and insurance fields wherein the term VEST is part of the mark. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-270 (CCPA 1973); Specialty Brands Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984). See, e.g., Reg. No. 2359832 for the mark MEDIVEST for, inter alia, “insurance services, namely, consultation, administration, and processing of health and medical care benefit claims and patient reimbursement programs”; Reg. No. 1811094 for the mark VESTMET for “financial investment management services”; and Reg. No. 1744028 for the mark VESTTRUST for, inter alia, “investment banking, portfolio and funds management services.” Applicant itself has three prior registrations, Reg. No. 2415760 for the mark VESTADVISOR, Reg. No. 2047321 for HD VEST FINANCIALPage 10
SERVICES and Reg. No. 2415762 VESTPREMIERE all for various financial services.

The dictionary definition and third-party registrations tend to show that the term VEST has, at a minimum, a suggestive meaning in the financial and insurance field of “vesting” in rights or “investing” and consumers may indeed look to other elements to distinguish the marks. AMF, 177 USPQ 268. We note, however, in all of the examples provided by applicant the registrations include different literal elements that can be used to distinguish the marks, including applicant’s mark HD VEST FINANCIAL SERVICES. Here, the additional elements are themselves nearly identical FINANCIAL and FINANCIAL SERVICES. Thus, even if the term VEST is weak, the literal elements in the marks cannot serve to distinguish them.

With regard to registrant’s design element and the transposition of the terms, applicant argues that:

Unlike Applicant’s mark, Registrant’s mark consists of a very prominent bulletproof vest to show the intended meaning of its FINANCIAL VEST mark. Thus, unlike Applicant, which uses “vest” because it is the name of Applicant’s founder, Registrant’s use of “vest” is similar to that of a bulletproof vest. In fact, there is no other meaning that can be derived from Registrant’s use of a bullet proof vest in connection with the mark FINANCIAL VEST. As a result, because the marks have completely different meanings, there is less possibility for confusion. . . . Applicant’s use of “FINANCIAL SERVICES” isPage 11
clearly intended to describe the type of services that will be offered. Consequently, when consumers see Applicant’s mark they will immediately know that the services being offered are financial services. In wide contrast, Registrant’s use of “FINANCIAL” is to describe the “vest”. As a result, when consumers see Registrant’s mark they do not know what it offers. Therefore, including “FINANCIAL SERVICES” and “FINANCIAL” in the comparison of marks is significant since they create completely different commercial impressions sufficient to avoid confusion.

Br. p. 6-7.

First, there is nothing in applicant’s mark or in the nature of the services to alert consumers that VEST is applicant’s surname. Rather, it would be perceived similar to the other VEST marks in this field to suggest the “vesting” of rights or property or to refer to “investing.” Second, although registrant’s design conveys the meaning of protective gear to registrant’s VEST, it does not eliminate the underlying meaning of vest as “vesting” or “investing” in connection with these services. Instead, it simply creates a double meaning. Therefore, the marks still share the general meaning and impression of “vesting” or “investing” relevant to the financial and insurance services. Further, consumers familiar with registrant’s FINANCIAL VEST could be confused as to source when confronted with applicant’s word mark VEST FINANCIAL SERVICES and ascribe to it the alternative meaning,Page 12
protective gear, present in registrant’s mark. We find in this case that the addition of the design element in registrant’s mark and the transposition of terms are not sufficient to distinguish the marks.

In conclusion, we find that because the marks are similar, the services are related, and the channels of trade and 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. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).

Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.

[fn1] Registration No. 2604328, issued August 6, 2002, Section 8 declaration accepted.