IN RE PACIFIC INVESTMENT MANAGEMENT CO., 77295024 (TTAB 1-5-2011)
Serial No. 77295024United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: January 5, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Julie Dalke of Latham Watkins, LLP for Pacific Investment Management Co., LLC.
Lindsey H. Rubin,[fn1] Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney).
[fn1] The above application originally was examined by another examining attorney, but subsequently was reassigned to the attorney whose name is shown.Before Seeherman, Cataldo and Ritchie, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
An application was filed by Pacific Investment Management Co., LLC to register on the Principal Register the mark ASPIRE FUND in standard characters for
Financial services, namely, investment management, investment advice, funds investment, investment consultation and investment of funds for others,Page 2
in International Class 36.[fn2]
The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as intended to be used in connection with applicant’s services, so resembles the marks shown below,
and
both previously registered by the same entity on the Principal Register for
Financial and insurance services, namely, annuities, pensions, financial consultation services; investment advisory services; investment of funds for others; investment management services; securities broker-dealer services; financial planning, namely, providing assistance to others in planning for retirement and in the management of employee benefits; trust services, namely, investment and trust company services; underwriting and administration of life, health, accident, group, and long-term carePage 3
insurance; administration of employee benefit plans; financial consultation, namely, providing consultation to employers in the administration of employee benefit plans, 457 plans, 401K plans, 412i plans, IRA’s and SEP-IRA’s,
in International Class 36,[fn3] as to be likely to cause confusion.
When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs on the matter under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I.du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (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, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. SeeFederated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 192 USPQ 24 (CCPA 1976). SeePage 4also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Services
We begin by comparing applicant’s proposed services with those of registrant. In making our determination under the seconddu Pont factor, we look to the services as identified in the involved application and cited registrations. SeeOctocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”)See also Paula Payne Products v. Johnson PublishingCo., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”)
In this case, applicant’s “investment management,” “investment advice,” and “investment of funds for others” are identical to registrant’s “investment management services,” “investment advisory services,” and “investmentPage 5
of funds for others.” Thus, on the face of their respective recitations, applicant’s services are identical in part to those of registrant. In addition, applicant’s “funds investment” services are essentially identical to registrant’s “investment of funds for others” and applicant’s “investment consultation” services are presumed to be included among registrant’s more broadly identified “financial consultation services.”
Based upon the services recited in the challenged application and the cited registrations, we find that applicant’s proposed services are identical in part to those provided by registrant. As such, this du Pont factor weighs heavily against applicant.
We are not persuaded by applicant’s argument that because “Applicant’s services are relating to `investment advice and investment of funds’ it is clear that Applicant specialized in services for that niche” (brief, p. 11) whereas “the Cited Marks are for services relating to `insurance’ geared toward retirement planning and employee benefits plans” (Id.
at 11-12). As identified, registrant’s services are not limited to “financial and insurance services”; that phrase is used only in connection with the first type of service listed in the identification. The identification in the registrationsPage 6
also, as we have stated, includes “investment management services,” without any limiting prefatory phrasing, and is not limited solely to insurance as applicant suggests. Thus, the services as identified in the involved application and the cited registration do not contain any of the “niche” limitations suggested by applicant. As noted above, we base our determination, as we must, upon the recitations of services in the involved application and the cited registrations. SeeOctocom Systems, Inc. v. Houston Computers Services Inc.,supra. As a result, we may not read into either applicant’s or registrant’s identification of services limitations that are not recited therein.
Channels of Trade
Further, inasmuch as the recitations of services in the involved application and cited registrations are not limited to any specific channels of trade, we must presume that they would be offered in all ordinary trade channels for these services and to all normal classes of purchasers. See In re LinkvestS.A., 24 USPQ2d 1716 (TTAB 1992). As noted above, applicant’s and registrant’s services, as identified, are legally identical in part. When identical goods or services are recited in an application and registrations with no limitations as to their channels ofPage 7
trade or classes of consumers, such channels of trade and classes of consumers must be considered to be legally identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”).
Applicant argues that it is “one of the largest specialty fixed income managers in the world” (brief, p. 13), managing “assets for a wide and diverse client base, ranging from central banks to multinational corporations to individual investors” (Id.) whereas “Registrant, on the other hand, appears to be based in Texas, and primarily doing business as “Clintsman Financial Planning.'” (Id.) However, even if applicant could establish that it and registrant operate at different scales or in distinct geographic areas, this would not support a conclusion of no likelihood of confusion when applicant and registrant havePage 8
a geographically unrestricted application and registrations.[fn4] In re Infinity BroadcastingCorp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (“Given that registrant’s registrations encompass nationwide rights, and that applicant is seeking a geographically unrestricted registration, applicant’s argument is unavailing”); and Inre Integrity Mutual Insurance Co., 216 USPQ 895, 896 (TTAB 1982) (“Inasmuch as applicant is seeking a geographically unrestricted registration, the Board is constrained to evaluate similarities in terms of potentially nationwide markets”).
As such, the du Pont factor of the channels of trade also weighs against applicant.
Conditions of Sale
The next du Pont factor discussed by applicant is that of the conditions of sale. Applicant asserts thatPage 9
purchasers of its services are sophisticated and will exercise care due to the importance of selecting an investment institution. Although we agree that consumers seeking investment management services will exercise care in choosing the provider of such services, given the legally identical services, and the similarity of the marks, as discussedinfra, even careful consumers are likely to assume that applicant’s and registrant’s services emanate from the same source. As such, this du Pont factor appears to be neutral.
The Marks
As discussed above, the services, channels of trade, and purchasers must be deemed to be, in part, the same. So we move on to consider whether the marks are similar or dissimilar in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. VeuveClicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
In this case, applicant’s mark is ASPIRE FUND and the marks in both cited registrations, displayed below:
and Page 10
consist of the wording ASPIRE FINANCIAL GROUP DREAM. PLAN. ACHIEVE. in the same fonts and a geometric design, displayed with the design above the wording in Registration No. 3247092 and with the wording and design side by side in Registration No. 3247093.
The term ASPIRE, common to applicant’s and registrant’s marks, is distinctive as used or intended to be used with both applicant’s and registrant’s services. In this connection, we note that there is no evidence of record of third-party use or registration of marks including this term. ASPIRE is also the dominant part of applicant’s mark and of registrant’s marks. The disclaimed term FUND in applicant’s mark clearly is descriptive of several of applicant’s recited services. Similarly, the disclaimed wording FINANCIAL GROUP in registrant’s marks is descriptive. Thus, these terms have little or no source distinguishing quality and are subordinate to ASPIRE. Further, the wording DREAM. PLAN. ACHIEVE. in registrant’s marks, which has also been disclaimed, is presented in much smaller size than the rest of the wording in registrant’s marks. Finally, the relatively minor and abstract geometric design in registrant’s marks is less significant than the wording therein. This is because when a mark comprises both wording and a design, the wording isPage 11
normally accorded greater weight because it would be used by customers to request the identified goods or services.See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these reasons, we consider ASPIRE to be the dominant feature of both applicant’s mark and the registered marks.
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. See In reNational Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, we note that ASPIRE, the word which the marks share in common, is the only distinctive word element in applicant’s mark and the only word that is not disclaimed in the marks in the cited registrations. Furthermore, ASPIRE is also the first word in all of the marks. Presto Products,Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“. . .[it is] a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”).See also Palm Bay Imports Inc. v. Veuve Clicquot PonsardinMaison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strongPage 12
distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”).
ASPIRE, the dominant portion of applicant’s mark as well as those of registrant, is identical in appearance and sound in both applicant’s and registrant’s marks. In addition, to the extent the term has any significance as applied to the services identified thereby, there is no evidence in the record to suggest that ASPIRE would not be identical in meaning in both applicant’s mark and registrant’s marks, particularly inasmuch as the services identified thereby are, in part, identical. Despite the additional wording in applicant’s mark and the additional wording and design in registrant’s marks, the marks convey the same overall commercial impression.
We note applicant’s contention regarding differences between its mark and registrant’s marks. Nevertheless, because of the descriptiveness of FUND and FINANCIAL GROUP and the limited impact of the words DREAM. PLAN. ACHIEVE. and the design element of registrant’s marks, as discussed above, these differences do not serve to differentiate the marks. It is the dominant element, ASPIRE, that consumers will give the most source-identifying weight when viewingPage 13
applicant’s and registrant’s marks. Therefore, we find that, when the marks are compared in their entireties, they are sufficiently similar in appearance, sound, connotation and commercial impression. As such, this du Pont factor also weighs against applicant.
We further note that, on page 8 of its brief, applicant cites to examples of marks in third-party registrations as support for its position that similar marks have been allowed to register for assertedly related goods or services. We find such examples to be unpersuasive. First, Trademark Rule 2.142(d) provides, in part, that the record should be complete prior to the appeal and that the Board will ordinarily not consider evidence submitted after the appeal is filed. Second, a mere reference to third-party registrations is insufficient to make them of record. See In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of registrations is insufficient to make them of record.”) See also TBMP ? 1208.02 (2d ed. rev. 2004) and the authorities cited therein. Thus, we agree with the examining attorney that applicant’s referred-to registrations are not properly of record. See Id.
We also point out that we are not bound by the decisions of examining attorneys in making determinationsPage 14
of registrability with respect to other, different marks.In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); and In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
Actual Confusion
Finally, applicant argues that it is not aware of any instances of actual confusion arising from use of its mark in connection with its services and registrant’s mark for its services. We do not accord significant weight to applicant’s contention. First, applicant’s application is based on an assertion of its bona fide intention to use, and we have no information about how long applicant has been using its mark, or the geographic area of such use, that would show that there has been an opportunity for confusion to occur. More importantly, the Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood ofPage 15
confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context.
Majestic Distilling, 65 USPQ2d at 1205.
Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not as compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of evidence of actual confusion that confusion is not likely to occur.
As such, we find this du Pont factor to be neutral.
Summary
Neither applicant nor the examining attorney has discussed any of the remaining du Pont factors. We note, nonetheless, that none seems to be applicable, inasmuch as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers familiar with registrant’s services sold under its above-referenced marks would be likely to believe, upon encountering applicant’s services rendered under its mark that the services originated with or are associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
[fn2] Application Serial No. 77295024 was filed on October 3, 2007, based upon applicant’s allegation of a bona fide intent to use the mark in commerce. In response to a requirement by the examining attorney, applicant disclaimed the exclusive right to use “FUND” apart from the mark as shown. [fn3] Registration Nos. 3247092 and 3247093 both issued on May 29, 2007 with disclaimers of the exclusive right to use “FINANCIAL GROUP” and “DREAM, PLAN, ACHIEVE.” apart from the mark as shown. [fn4] Applicant further argues that “it appears that [registrant] does not make any use of the mark as registered, but merely uses the tagline DREAM. PLAN ACHIEVE.” (brief, p. 13). However, Section 7(b) of the Trademark Act provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registrations. See In re Dixie Restaurants,105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In rePeebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). Thus, we have given no consideration to applicant’s remarks in this regard.