MONEY CORP. v. TTT MONEYCORP LTD., 92045081 (TTAB 5-5-2011)

MONEY CORP. v. TTT MONEYCORP LTD., 92045081 (TTAB 5-5-2011)

Money Corp. v. TTT Moneycorp Limited

Cancellation No. 92045081United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: May 5, 2011Page 1

[EDITOR’S NOTE: This case is unpublished as indicated by the issuing court.] THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.

Vernon P. Squires of Bradley Riley PC for Money Corp.

James L. Vana of Perkins Coie LLP for TTT Moneycorp Limited.

Before Bucher, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Moneycorp Limited (“petitioner”) seeks to cancel the three registrations set forth below owned by TTT Moneycorp Limited (“respondent”) on the ground of likelihood of confusion.

1. Registration No. 2396878 for the mark TTT MONEYCORP, in typed drawing form, for “foreign currency services,” in Class 36;[fn1]

2. Registration No. 2399042 for the mark MONEYCORP, in typed drawing form, for “foreign currency services,” in Class 36:[fn2] andPage 2

3. Registration No. 2463593 for the mark MONEYCORP, in typed drawing form, for the goods set forth below.

Printed matter, namely, maps; books and newspapers, all relating to foreign exchange, currency and related financial matters; printed periodical publications, namely, magazines, newsletters, all relating to foreign exchange, currency and related financial matters; unmounted photographs; stationery; writing instruments; traveler’s checks; playing cards, greeting cards, note cards; flip charts, printed charts and score charts; blank paper tapes and cards for the recording of computer programs and data; diagrams for foreign exchange and currency information; drawing pads; envelopes; document cards and paper files; paper flags; file folders for papers, graphic art prints; graphic art reproductions; note books; writing pads; writing paper, carbon paper, computer and craft paper and packaging paper; paper for recording machines; pictures; printed signs of paper and cardboard; paper place mats; printed plans; postcards; posters; printed signboards of paper and cardboard; printed instructional, educational and teaching materials in the area of foreign exchange, currency and related financial matters; printed tickets; paper control tokens for foreign exchange, currency and related financial matters; writing and drawing books, in Class 16.[fn3]

Petitioner alleged that it has used the mark MoneyCorp since May 16, 1989 in connection with unidentified goods orPage 3
services and that the registration of respondent’s marks is likely to cause confusion.

Respondent denied the salient allegations in the petition for cancellation. Registrant also alleged laches as an affirmative defense, but because it did not refer to that affirmative defense in its brief, we have considered it waived.

The Record
By operation of the rules, the record includes the pleadings and the files of respondent’s registrations. The record also includes the following testimony and evidence introduced by the parties:[fn4]

A. Petitioner’s Evidence.

1. Excerpts from the discovery deposition of Gary Young, petitioner’s President, with attached exhibits;

2. Respondent’s responses to petitioner’s first set of interrogatories;

3. Respondent’s supplemental responses to petitioner’s interrogatories;

4. Respondent’s responses to petitioner’s first set of document requests; and

5. Affidavit of petitioner’s counsel authenticating printouts from the websites of the parties.Page 4

B. Respondent’s Evidence.

1. Petitioner’s responses to respondent’s first set of interrogatories;

2. Petitioner’s responses to respondent’s requests for admission;

3. Petitioner’s responses to respondent’s request for production of documents;

4. Declaration of Matthew Cook, respondent’s solicitor;

5. Excerpts from the discovery deposition of Gary Young;[fn5]

6. Dictionary definitions of the words “financial” and “money” and the Wikipedia entry for “financial services”;

7. Printouts from the electronic records of the USPTO for various reasons;

8. Excerpts from respondent’s 2008 annual report; and 9. An excerpt from petitioner’s website.

Standing
Gary Young, petitioner’s President, testified that petitioner manages business operations and administration for financial professionals, primarily insurance agents. Petitioner’s services include accounting, clerical,Page 5
equipment, marketing support, office equipment, office management, office space and training. Petitioner renders these services under the mark MoneyCorp.[fn6] Respondent does not challenge petitioner’s standing. In view of the foregoing, we find that petitioner has shown that it has a reasonable belief of damage and a real interest in this proceeding. Therefore petitioner is not a mere intermeddler, and it has established its standing. Lipton Industries,Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

Priority
Gary Young testified that petitioner has been using the mark MoneyCorp to identify its accounting, marketing and clerical services since 1989, petitioner’s equipment services since 1991, and petitioner’s office management and office space services since 1992.[fn7] Respondent did not contest petitioner’s priority and did not introduce any evidence regarding respondent’s use of its marks prior to petitioner’s use of its mark. Respondent filed two of its applications for registration on January 11, 2000 and one on February 7, 2000. In view of the foregoing, petitioner has proven priorPage 6
use of its mark in connection with managing business operations and administration for financial professionals.

Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. Inre E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re MajesticDistilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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/or services. SeeFederated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by ? 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”).

A. The similarity or dissimilarity of the marks in theirentireties as to appearance, sound, connotation and commercialimpression.

We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours Co., 177 USPQ at 567. Petitioner’s mark isPage 7
MoneyCorp and respondent’s marks are MONEYCORP and TTT MONEYCORP. For our purposes the marks are identical.

B. The similarity or dissimilarity and nature ofpetitioner’s services and the goods and services described inthe registrations, the similarity or dissimilarity oflikely-to-continue trade channels and classes ofconsumers.

Petitioner uses the mark MoneyCorp to identify managing business operations and administration for financial service professionals.[fn8] Gary Young testified that the mark MoneyCorp means “an organization that provided high-quality products for insurance agents to use and innovative marketing strategies and support for business organization and structure of their business.”[fn9] In other words, “infrastructure that could help them do their job more efficiently.”[fn10] Specifically, petitioner’s management and administration of business operations for financial service professionals include the following activities:

1. Accounting includes payroll and general bookkeeping;[fn11]

2. Clerical includes filing, database management, correspondent, letters and dictation;[fn12]Page 8

3. “Equipment would be things like copiers, scanners, telephone systems, the computer systems in general ? along with office supplies”[fn13]

4. “Marketing support is use of client databases and design ? ? assistance with the design of marketing materials, brochures, fliers, letters, you know, everything that has to do with marketing and where we can support them”;[fn14]

5. “Office equipment is similar to equipment above”;[fn15]

6. “Office management has to do with the structure and organization of them, anything from simple office organization and setting up a flow of work all the way to providing coordination with things like E-Myth Management, which is a complete three-year program to structure their offices and staffing and marketing and pricing and everything else”;[fn16]

7. “Office space is just that, facilitating office space where they may sublet space that we have when it’s hard for them to get a small enough space. We can also provide them with reception services and the equipment soPage 9
that they don’t have to go out and do it on their own”;[fn17] and

8. “Training systems has to do with marketing concepts and teaching representatives how to use certain marketing concepts to improve their overall sales of particular products.”[fn18]

Petitioner renders its services to financial service professionals[fn19] and has no plans to “market beyond those financial service professionals” although it is “always open to providing services to other people.”[fn20] The financial service professionals to whom petitioner markets are insurance agents.[fn21]

What we established [MoneyCorp] to mean was an organization that provided high-quality products for insurance agents to use and innovative marketing strategies and support for business organization and structure of their business.[fn22]

Respondent uses the marks TTT MONEYCORP and MONEYCORP for foreign currency services. It also uses the mark MONEYCORP for printed periodical publications, namely, newsletters relating to foreign exchange, currency andPage 10
related financial matters.[fn23] In its website, respondent describes its services as follows:[fn24]

For over a quarter of a century, TTT Moneycorp Limited has been providing a wide range of foreign exchange and related services for both individual and corporate customers.

* * * Commercial foreign exchange[fn25]

Trading as Moneycorp ? providing foreign exchange services for individual and corporate customers requiring spot and forward delivery and fast worldwide payments.

* * * Wholesale currency services[fn26]

Trading as TTT Moneycorp Whole Currency services ? with a banknote dealing room and separate cash centre, both in Central London. Providing bulk currencies and cash services to corporations, banks, bureaux de change, travel companies and private clients.

In addition, respondent assists people who have to make regular currency transfers. Such payments might include overseas mortgage payments, pension payment transfers or any other regular currency payments.[fn27]Page 11

“The actual or intended customers for [respondent’s] goods and services are (for the MONEYCORP mark): corporations and individual private clients; (for the TTT MONEYCORP mark): banks and currency dealers.”[fn28]

Finally, Mr. Young testified that people using foreign exchange services would not encounter petitioner’s mark or services.[fn29]

We find that petitioner’s services of managing business operations and administration for financial service professionals are not related to respondent’s foreign currency services or printed periodical publications, namely, newsletters relating to foreign exchange, currency and related financial matters or any other printed matter in the field of foreign exchange, currency and related financial matters. Also, we find that the respondent’s goods and services and petitioner’s services are sold to different consumers. Accordingly, the same consumers will not encounter respondent’s goods and services and petitioner’s services under circumstances that are likely to lead those consumers to the mistaken belief that the goods and services of the parties emanate from the same source.Page 12

C. Balancing the factors.

Although the marks are identical, because the goods and services of the parties are not related and are sold to different consumers, there is no likelihood of confusion.

Decision: The petition for cancellation is dismissed.

[fn1] Issued October 24, 2000; renewed. [fn2] Issued October 31, 2000; renewed. [fn3] Issued June 26, 2001; cancelled for failure to file a Section 8 declaration of use during the pendency of this proceeding. Nonetheless, on March 12, 2010, petitioner notified the Board that it still wanted to pursue the petition for cancellation on the grounds of likelihood of confusion. [fn4] The parties filed a stipulation as to the admissibility of the testimony and evidence. [fn5] It appears that the resulting combination of excerpts from the parties makes up the entire deposition of Gary Young. [fn6] Young Dep., pp. 34-47; Exhibits 4 and 6. [fn7] Young Dep., p. 47. [fn8] Young Dep., Exhibits 4 and 6. [fn9] Young Dep., pp. 34 ? 35. [fn10] Young Dep., p. 35. See also Young Dep., p. 37 (petitioner focuses on “the training, infrastructure and creative marketing system for the professionals”). [fn11] Young Dep., p. 42. [fn12] Young Dep., p. 42. [fn13] Young Dep., p. 42. [fn14] Young Dep., p. 42. [fn15] Young Dep., p. 42. [fn16] Young Dep., pp. 42-43. [fn17] Young Dep., p. 43. [fn18] Young Dep., p. 43. [fn19] Young Dep., pp. 45 and 49 (“Financial service professionals is our primary target market”). [fn20] Young Dep., p. 50. [fn21] Young Dep., p. 34. See also petitioner’s response to respondent’s interrogatory No . 6 (“The actual and intended customers are financial services professionals (primarily insurance agents) and through the services provided and supervised, indirectly, their clients and vendors”). [fn22] Young Dep., p. 34. [fn23] Respondent’s response to petitioner’s interrogatory No. 4. [fn24] Respondent’s response to petitioner’s request for production of documents. [fn25] Advertised in connection with the MONEYCORP mark. [fn26] Advertised in connection with the TTT MONEYCORP mark. [fn27] A brochure submitted as part of respondent’s response to petitioner’s request for production of documents [fn28] Respondent’s supplemental response to petitioner’s interrogatory No. 5. [fn29] Young Dep. pp. 56-57.