Agis Capital LLC

Trademark Trial and Appeal Board

Dec 10, 2015

No. 86182582 (T.T.A.B. Dec. 10, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Agis Capital LLC
_____

Serial No. 86182582
_____

G. Mathew Lombard and Darren M. Geliebter of Lombard & Geliebter LLP,
for Agis Capital LLC.
Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Bucher, Lykos and Kuczma,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Agis Capital LLC (“Applicant”) seeks registration on the Principal Register of
the mark for services ultimately identified as:1

1 Application Serial No. 86182582, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging September 1, 2013 as the date of first use anywhere and in commerce.
The description of the mark is as follows: “The mark consists of the literal element ‘AgIS
Capital’ in which the top loop of the lower case ‘g’ is represented by the design of a leaf.”
Color is not claimed as a feature of the mark. Applicant has disclaimed the word “Capital”
apart from the mark as shown.
Applicant asserts in its main brief that it amended its services to add the following
exclusionary language: “excluding financial services in the nature of investment securities.”
Applicant’s Appeal Brief, p. 23; 5 TTABVUE 30. The Examining Attorney correctly points
out that no such amendment to Applicant’s services was previously offered or accepted. At
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“Advisory and financial management services relating to investments
in farmland, land used for agricultural production, water rights,
mineral rights and companies operating in the agricultural field;
providing investment advisory and investment management services,
all in the fields of agriculture, water rights and mineral rights; real
estate investment and management, all in the fields of agriculture,
water rights and mineral rights; investment services, namely, asset
acquisition, assessment, consultation, development, disposition and
management services, all in the fields of agriculture, water rights and
mineral rights; real estate investment services, namely, formation,
structuring and management of private real estate investments, all in
the agricultural field” in International Class 36.
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 mark AEGIS VALUE FUND
(standard characters) on the Principal Register for “[i]nvestment services, namely,
financial services in the nature of an investment security” in International Class
362 that, when used on or in connection with Applicant’s identified services, it is
likely to cause confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration,
and the appeal was resumed. After the appeal was fully briefed, the Board allowed

this stage of the appeal, the proper procedure for consideration of an amendment to the
identification of services would have been a request for remand with the requisite showing
of good cause. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1209.04
(2015) and cases cited therein. In any event, Applicant’s proposed amendment would not
have altered our opinion herein.
2 Registration No. 3518705, registered October 21, 2008, Sections 8 and 15 affidavits
accepted and acknowledged, with a disclaimer of the words “Value Fund” apart from the
mark as shown.
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supplemental briefing to address an evidentiary objection raised by Applicant. For
the reasons set forth below, we affirm the refusal to register.
I. Evidentiary Issues
On August 27, 2015, the Board sustained Applicant’s objection that much of the
Internet evidence (both text and URL’s) submitted by the Examining Attorney in
support of the refusal was illegible when viewed in non-PDF3 format and gave
Applicant additional time to review said evidence from the USPTO Trademark
Status & Document Retrieval (“TSDR”) system in PDF format and submit a
supplemental brief addressing the evidence. In turn, the Examining Attorney also
was afforded the opportunity to submit a responsive brief. Applicant now renews its
objection, contending that upon viewing the evidence in both PDF and non-PDF
format, the evidence remains unreadable. In support thereof, Applicant reproduced
in its supplemental brief “undoctored, unchanged” screenshots of blurred evidence
from the Examining Attorney’s second office action.4 In response, the Examining
Attorney maintains that when she “zooms in” on the web sites and URL’s in PDF
format noted in Applicant’s supplemental brief, the materials are legible. As

3 PDF is defined as “a computer file format for the transmission of a multimedia document
that is not intended to be edited further and appears unaltered in most computer
environments; also : a document that uses this format.” The Merriam-Webster Dictionary
(www.merriam-webster.com). The Board may take judicial notice of dictionary definitions
from references that are the electronic equivalent of a print reference work. See University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91
USPQ2d 1332, 1334 n.1 (TTAB 2009).
4 Applicant’s Supplemental Brief, pp. 1-2; 21 TTABVUE 4-5.
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evidence, she has reprinted screenshots showing that the websites and URL’s
referenced by Applicant in its supplemental brief are legible.5
The Board agrees with the Examining Attorney that the evidence from TSDR is
entirely readable in PDF format. The fact that Applicant may have to “zoom in” on
each webpage or URL does not amount to an obfuscation of the evidence. In the
digital age, we must presume a certain level of competence when it comes to use of
the USPTO’s electronic resources. This is especially so given that virtually all
evidence in Board proceedings is submitted in electronic form. Accordingly,
Applicant’s continued objection is overruled.
Applicant in its supplemental brief also asserts numerous substantive objections
to the evidence submitted by the Examining Attorney, most of which pertain to the
correct pronunciation of the double vowel “ae.” For example, Applicant objects to
evidence from the website entitled “PronounceNames” on the basis that the
contributor’s credentials are unauthenticated and the website “Stuff.co.uk” on the
ground that the site originates from the United Kingdom. Any evidence submitted
by the Examining Attorney from foreign websites or discussing the pronunciation of
the diphthong “ae” in any language other than modern U.S. English (for example,
Old English, Classical Latin) is irrelevant to our analysis; Applicant’s objections on
these grounds are therefore sustained. That being said, none of the remaining
evidence Applicant seeks to exclude is outcome determinative. As such, we see no
reason to address each of the remaining objections separately. Although we have

5 Examining Attorney’s Brief in Response to Applicant’s Supplemental Brief, 23 TTABVUE
6.
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considered all the evidence and arguments, as explained more fully below, in
reaching our determination we have not relied on any of the other evidence to which
Applicant objected.
II. Applicable Law
We now direct our attention to the substantive refusal before us. 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 Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and 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 or services. See Federated Foods,
Inc. v. Fort Howard 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 [or services] and differences in the
marks.”).
A. The Marks
We commence with the first du Pont likelihood of confusion factor which involves
an analysis of 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, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The
Serial No. 86182582
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proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Our
analysis cannot be predicated on dissection of the involved marks. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties. Id.
See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. Stone Lion, 110 USPQ2d at 1161.
Applicant argues that the marks are visually different because the cited mark
contains three literal terms, AEGIS VALUE FUND, whereas its applied-for mark
has only two: AgIS Capital. Applicant also contends that the Examining Attorney
has discounted the importance of the non-distinctive wording “capital” and “value
Serial No. 86182582
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fund” which distinguish the connotation and meaning of each mark. Applicant
further submits that because “aegis” is an actual word in the dictionary pronounced
as “ee-jis,” it is not likely to be confused with Applicant’s coined term AgIS which is
pronounced with the long letter “a” vowel sound as either “ag-is” or “ag-iz.” Along
with other evidence, Applicant relies on the following definition from
Dictionary.com which is based on The Random House Dictionary (2014):6
ae-gis [ee-jis]
1. Classical Mythology. The shield or breastplate of Zeus or Athena,
bearing at its center of the head of the Gorgon.
2. protection; support: under the imperial aegis.
3. sponsorship; auspices: a debate under the aegis of the League of
Women Voters.

The Examining Attorney, on the other hand, maintains that the terms “AgIS”
and “AEGIS” could be pronounced in the same manner because the word “aegis” is
frequently mispronounced. She relies on the principle there is no correct
pronunciation of a trademark, and that consumers may pronounce a mark
differently than intended by the brand owner as recognized in In re Viterra Inc., 101
USPQ2d at 1912 (upholding the Board’s affirmance of a Section 2(d) refusal to
register XCEED for agricultural seed based on a likelihood of confusion with the
registered mark X-SEED and design, SEED disclaimed, for identical goods).7

6 Office Action Response dated September 18, 2014, Ex. A; TSDR p. 23.
7 For additional case law illustrating this principle, see for example Interlego AG v.
Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (finding similarity
between LEGO and MEGO, despite the applicant’s contention that consumers would
pronounce MEGO as “me go”); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d
1698, 1701 (TTAB 2006) (acknowledging that “there is no correct pronunciation of a
trademark” and finding ISHINE (stylized) and ICE SHINE, both for floor finishing
preparations, confusingly similar); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB
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Applicant counters that the “no-correct-pronunciation” rule only applies to coined
marks and not to marks comprised of actual words found in the dictionary.
Applicant bases its assertion on the rationale that it is possible to predict how
consumers will say a commonly recognized word as opposed to an invented mark.
We find that the coined term “AgIS” is the dominant portion of Applicant’s mark,
given that it is the initial term (see Palm Bay, 73 USPQ2d at 1692) and that the
remaining word “capital” is disclaimed. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[t]hat a particular feature is descriptive
or generic with respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of the mark.”). The stylization of the
letter “g” in Applicant’s mark to resemble a leaf does little to overcome the
dominance of the literal element “AgIS.” See In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553,
1554 (TTAB 1987). Similarly, we find AEGIS, as the first term in the cited mark, to
be the dominant element. See id. The addition of the highly descriptive wording
“VALUE FUND” in Registrant’s mark, which has been disclaimed, is not sufficient

1987) (“[C]orrect pronunciation as desired by the applicant cannot be relied upon to avoid a
likelihood of confusion” between TURCOOL and TRUCOOL); Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (holding SEYCOS and design for watches,
and SEIKO for watches and clocks, likely to cause confusion); In re Great Lakes Canning,
Inc., 227 USPQ 483 (TTAB 1985) (holding CAYNA (stylized) for soft drinks, and CANA for,
inter alia, canned and frozen fruit and vegetable juices, likely to cause confusion); In re
Energy Telecomms. & Elec. Ass’n, 222 USPQ 350 (TTAB 1983) (holding ENTELEC and
design for association services relating to telecommunications and other electrical control
systems for use in the energy related industries, and INTELECT for promoting, planning,
and conducting expositions and exhibitions for the electrical industry, likely to cause
confusion); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (holding CRESCO and design
for leather jackets, and KRESSCO for hosiery, likely to cause confusion).
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to distinguish the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting National Data, 224
USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression.”). This is because both “capital” and “value fund”, while having distinct
meanings, both fall under the realm of financial or investment vocabulary. The
record shows “capital” defined as “[w]ealth in the form of money or other assets
owned by a person or organization or available or contributed for a particular
purpose such as starting a company or investing;”8 and “fund” defined as “an
organization created to administer or manage a fund, as of money invested or
contributed for some special purpose”9 Thus, the overall connotation and
commercial impression of each mark is highly similar.
As to Applicant’s argument that the terms “AgIS” and “AEGIS” are pronounced
differently, the record shows otherwise. We point to the definition of “aegis”
submitted by the Examining Attorney from the online version of The Merriam-
Webster Dictionary (www.merriamwebster.com) displaying two alternative

8 Oxford Dictionaries (www.oxforddictionaries.com/us/definition/american_english/capital)
attached to Office Action dated May 15, 2014.
9 Dictionary.com (http://dictionary.reference.com/browse/fund?s=t) attached to Response to
Office Action dated September 18, 2014, Ex. C.
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pronunciations as either “\ˈē-jəs” or ˈ\ā- jəs.”10 Standing alone, this evidence
unequivocally establishes that the word “aegis” may be correctly pronounced in
modern U.S. English commencing either with the long letters “e” or “a” vowel
sounds.11 Hence, the first and dominant portions of each mark which are more
likely to be remembered by consumers are phonetic equivalents. And because these
components in each mark are differentiated by only a single letter, they are visually
similar as well.
Even assuming, arguendo, that, as Applicant maintains, “AgIS” is pronounced
differently from AEGIS, and that the “no-correct-pronunciation” rule only applies to
coined terms and not to terms comprised of actual words, we would find that both
“AgIS” and “AEGIS” are highly similar in sound. However, we have reliable
dictionary evidence to the contrary that both terms may be pronounced by
prospective consumers in the same manner and therefore need not rely on this
reasoning.

10 aegis
noun ae·gis \ˈē-jəs also ˈā-\
: the power to protect, control, or support something or someone
1: a shield or breastplate emblematic of majesty that was associated with Zeus and
Athena
2a : protection
b : controlling or conditioning influence
3a : auspices, sponsorship
b : control or guidance especially by an individual, group, or system
Denial of Request for Reconsideration dated February 6, 2015.
11 For this reason, we need not consider the remaining Internet evidence submitted by the
Examining Attorney discussing the pronunciation of either “aegis” or the vowel combination
“ae” which has been objected to by Applicant.
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We find that consumers will focus on the phonetically equivalent terms Agis and
AEGIS and that the differences between the descriptive (if not generic) terms
“Capital” and “VALUE FUND” and design element in Applicant’s mark are less
significant. Thus, when comparing the marks as a whole, we find that they are
similar in sound, appearance, meaning and commercial impression. This first
du Pont factor thus favors a finding of likelihood of confusion.
B. Relatedness of the Services
We turn now to the second du Pont factor, a comparison of Applicant’s and
Registrant’s respective services as they are identified in the application and the
cited registration. See Dixie Rests., 41 USPQ2d at 1534. See also Stone Lion, 110
USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled
that it is not necessary that the respective services be identical or even competitive
in order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to the source of the
services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The respective services
need only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that [the
services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also In
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re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods/services are used together or used by the same
purchasers; advertisements showing that the relevant goods/services are advertised
together or sold by the same manufacturer or dealer; and/or copies of prior use-
based registrations of the same mark for both applicant’s goods/services and the
goods/services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d
1810, 1817 (TTAB 2014) (finding pepper sauce and agave related where evidence
showed both were used for the same purpose in the same recipes and thus
consumers were likely to purchase the products at the same time and in the same
stores).
Applicant argues that the restriction of its various services to “the fields of
agriculture, water rights and mineral rights” is sufficient to avoid a likelihood of
confusion. As Applicant maintains, its financial and investment services are
necessarily distinct from Registrant’s “[i]nvestment services, namely, financial
services in the nature of an investment security.” According to Applicant the
disclaimer of the VALUE FUND in the cited registration makes it “abundantly
clear” that Registrant offers a mutual fund that invests in companies perceived as
being a “value type of investment.”12

12 Applicant’s Appeal Brief, p. 22; 5 TTABVUE 29.
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Applicant’s characterization of Registrant’s services may indeed be accurate.
Nonetheless, the fact that Applicant has limited these services to investments in
farmland, water rights, and mineral rights, is not sufficient to overcome a likelihood
of confusion. This is because Registrant’s services contain no such limitations as to
field, and therefore could conceivably include value type investment securities such
as mutual funds investing in fields of agriculture, water rights and mineral rights.
In addition, the question before us is the relatedness of the services, not whether
they are directly overlapping. While we agree that the services are not identical, we
find them to be commercially related. The Examining Attorney submitted evidence
from third-party websites showing both Applicant’s and Registrant’s services being
offered by the same entity under the same mark. Note the following relevant
evidence:
● MetLife (www.metlife.com): An SEC-registered investment advisory company
offering “thousands” of mutual funds as well as real estate investment services.13
● New York Life (www.newyorklife.com) which offers “a broad selection of
mutual funds across multiple asset classes and investment styles” as well as real
estate investment services.14
● Northwestern Mutual (www.northwesternmutualrealestate.com), “one of the
largest real estate investors in the nation with investments in commercial
mortgages and equity investments in all major property types…” investing in
real estate directly through “acquisitions, fee developments, joint venture
development, and pre-purchases.” It also offers various investment products
such as “money market funds and stocks.15
● Prudential (www.prudential.com) offering both mutual funds and services
relating to agricultural equity investments. “The Agricultural Equity team is

13 Office Action dated October 27, 2014, pp. 39-42.
14 Id. at 43-46.
15 Id. at 47-48.
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uniquely positioned to serve institutional investors who seek portfolio
diversification into the farmland asset class. … We provide farm families and
farmland owners liquidity to settle estates or grow operations. We can create
customized portfolios for investors who seek diversification into the food, fiber
and biofuel feedstock production sectors of the U.S. agricultural economy. The
Agricultural Equity team also has the expertise to manage clients’ Agricultural
portfolio strategies including direct operations and development of permanent
plantings.” … “Prudential Agricultural Investments (“PAI”) has a unique
platform to serve investors, landowners, family farms, agribusiness firms and
timberland owners. Our experience in the agricultural debt and equity
management and real estate fields provides continuous market intelligence to
best serve clients’ needs.”16
Although the evidence cited above from the Met Life, New York Life and
Northwestern Mutual sites only generally mentions real estate investment services,
we can extrapolate that such investment services could encompass all sorts of
sectors, including farmland, water and mineral rights.
Applicant dismisses the probative value of this evidence, arguing that it is only
from a handful of the largest investment companies in the world and at most merely
establishes that “huge multinational companies may offer the same types of
investments” but not that “all investment firms offer these same types of services.”17
Applicant’s arguments reflect a misunderstanding of the evidence necessary to
establish a relationship between Applicant’s and Registrant’s services. There is no
requirement that the Examining Attorney demonstrate that all investment firms
offer both Applicant’s and Registrant’s services. Rather, it suffices to show that the
relevant consumers, which in this case include large institutional investors such as
retirement account funds and pension plans, may mistakenly believe that the

16 Id. at 49-54.
17 Applicant’s Supplemental Brief, p. 9; 21 TTABVUE 12.
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services in question originate from the same source. The aforementioned evidence
therefore supports a finding that prospective consumers may encounter both
Applicant’s and Registrant’s services offered under the same mark by the same
entity. We find this sufficient to show a commercial relationship. Thus, the second
du Pont factor also weighs in favor of finding a likelihood of confusion.
C. Trade Channels
We now discuss the similarity or dissimilarity of established, likely-to-continue
trade channels. Because the services are related and the identifications of services
in the application and cited registration contain no limitations, it is presumed that
the services identified therein move in all channels of trade normal for those
services. Stone Lion, 110 USPQ2d at 1161. See also Coach Servs., 101 USPQ2d at
1723 (absent limitation “goods are presumed to travel in all normal channels … for
the relevant goods.”). The record shows that the prospective purchasers of both
Applicant’s and Registrant’s services include institutional investors such as
insurance companies and pension plans who market their services via their own
hosted websites.18 In view thereof, the third du Pont factor also favors a finding of
likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Services
We will now consider the number and nature of similar marks in use on similar
services, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an
applicant] introducing third-party uses is to show that customers have become so

18 Id. at 43-54.
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conditioned by a plethora of such similar marks that customers have been educated
to distinguish between different such marks on the bases of minute distinctions.”
Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted).
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal
citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s
mark can come without causing a likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection.” Id. at 1676 (internal
citations omitted). See also Palm Bay Imps., 73 USPQ2d at 1693 (“Evidence of
third-party use of similar marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of protection.”).
The question before us is whether the cited mark AEGIS VALUE FUND as a
whole is descriptive or suggestive to such an extent that it may be deemed weak
and less deserving of protection. Applicant argues that the word “aegis” is a
common term when applied to investment or financial services, evoking the
connotation of a secure, shielded or protected investment. In support thereof,
Applicant points to the dictionary definition of that term as well as evidence that at
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least eleven other entities commonly use the word “aegis” as a component for their
mark in connection with services identical to or related to Registrant’s services:19
● AEGIS FINANCIAL ADVISORY a portfolio investment firm
constructing portfolios in passively managed no-load equity and bond
mutual funds (www.aegisadvisory.com).
● THE AEGIS GROUP, a network of independent planning and
investment management firms throughout the country, founded by
Pinnacle Investment Management based in Simsbury, Connecticut
(www.pinnacle-investment.net).
● AEGIS INVESTMENT MANAGEMENT a Vancouver, Canada based
franchise company offering the concept of “eatertainment” for the golf and
restaurant industries (www.aegisinvestmentmangement.com).
● AEGIS INVESTMENT PARTNERS an investment company investing
in subordinated loans, senior secured loans and equity securities of
privately held “middle-market” companies (www.aegisinvestments.com).
● AEGIS CAPITAL CORPORATION an international private equity
investment firm providing debt and equity capital to support the growth
of homeland security-related enterprises (aegiscapitalcorporation.com).

19 Office Action Response dated September 18, 2014, Ex. D.
Although not argued in its brief, during ex parte prosecution, Applicant made of record
the numerous use-based, third-party registrations to show that Registrant’s mark is
entitled to a narrow scope of protection for “[i]nvestment services, namely, financial
services in the nature of an investment security.” Third-party registrations may be used to
show that a term has a meaning or significance in the same way that dictionaries are used.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). See also
The Institut National des Appellations D’Origine v. Vintners International Co. Inc., 22
USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third party registrations show the sense in which the
word is used in ordinary parlance and may show that a particular term has descriptive
significance as applied to certain goods or services.”) (internal citations omitted). See also
Juice Generation, 115 USPQ2d at 1675. Indeed, “[t]hird party registrations are relevant to
prove that some segment of the composite marks which both contesting parties use has a
normally understood and well-recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak.” Id. (citing Tektronix, Inc. v. Daktronics,
Inc., supra.). The majority of the third-party registrations, however, are either for
dissimilar marks or for services unrelated to those at issue here. We cannot find based
solely on the existence of the third-party registrations that Registrant’s mark as a whole is
descriptive or suggestive to such an extent that it deserves less protection.
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● STERN AEGIS VENTURES a private equity banking firm
(www.sternaegis.com).
● AEGIS CAPITAL PARTNERS a global private based equity business
services firm that provides corporate strategy, finance, and business
development advisory services to private equity funds, middle market
companies and business owners (www.aegiscapp.com).
● AEGIS EQUITY LLC a boutique investment firm offering financial
advisory services to healthcare, semiconductor, digital media, banking
and the financial services industries based in Santa Monica, California
with an additional office in LaJolla (www.investingbusinessweek.com).
● AEGIS FINANCIAL GROUP INC., a Phoenix, Arizona based group with
seven offices offering securities as well as financial planning and tax
services (www.stevenelson.com).
● AEGIS CAPITAL CORP., a full service retail and institutional broker-
dealer located in New York City (www.aegiscapcorp.com).
Applicant maintains that this evidence shows that the consuming public has been
exposed to third-party use of marks comprised of the word “aegis” to identify either
the same or related services and therefore the term is weak.
The Examining Attorney however takes the position that this evidence is beyond
the scope of an ex parte appeal. Rather, as the Examining Attorney argues, the
AEGIS VALUE FUND mark is strong on the register and therefore in determining
the issue of registrability, it is entitled to a broad scope of protection.
We disagree with the Examining Attorney’s assertion that this inquiry and the
evidence presented of third-party use is irrelevant. Consistent with Board practice,
evidence of third-party use is indeed relevant in the context of an ex parte appeal.
See Trademark Manual of Examining Procedure (“TMEP”) § 1207.01(d)(iii) (October
2015) (citing Palm Bay Imps., 73 USPQ2d at 1693). While we discount the probative
value of the evidence obtained from the Canadian website, we find that the
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remaining ten websites showing third-party use sufficient to show that the term
“aegis” as used in the financial and investment sector to identify services identical
or related to Registrant’s services is highly suggestive and relatively weak. In other
words, a mark comprising the term “aegis” in whole or in part in connection with
financial and investment services is entitled only to a “restricted scope of
protection,” and as such will only bar the registration of marks “as to which the
resemblance to [Registrant’s mark] is striking enough to cause one seeing it to
assume that there is some connection, association or sponsorship between the two.”
Anthony’s Pizza & Pasta International Inc. v. Anthony’s Pizza Holding Co., 95
USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. (Fed. Cir. 2010). This sixth
du Pont factor therefore weighs against finding a likelihood of confusion.
III. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence or
argument of record. As explained above, the sixth du Pont factor does not favor a
likelihood of confusion because the word “aegis” has been widely used in service
marks identifying investment and financial services. Nonetheless, the first, second
and third factors each weigh in favor of finding a likelihood of confusion. While
there are instances where a single du Pont factor is dispositive (see, e.g., Kellogg Co.
v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)), we do not
think the sixth du Pont factor plays such a role here, given the “striking” similarity
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in the marks when compared as a whole as applied to commercially related services
in identical trade channels. See, e.g., Anthony’s Pizza, 95 USPQ2d at 1283 (“The
evidence of third-party registration and use of ANTHONY’S, although one factor
(and a significant one under the facts in this case) to be considered, does not
persuade us of a different result, because we believe that this factor is outweighed
by the other factors.”). Compare Carefirst of Maryland Inc. v. FirstHealth of the
Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) (“The differences between the highly
suggestive marks CAREFIRST and FIRSTCAROLINACARE, the crowded field of
marks featuring “care” and/or “first” in the healthcare industry, and the relatively
sophisticated decision in purchasing or even using healthcare services, all warrant a
finding of no likelihood of confusion.”). Balancing these factors, we find that
confusion is likely between Applicant’s applied for mark and the cited registration.
We emphasize that we have accorded Registrant’s mark a narrow scope of
protection as a weak mark. That being said, “likelihood of confusion is to be avoided,
as much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’
and ‘strong’ mark.” Anthony's Pizza, 95 USPQ2d at 1283 (quoting King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)).
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.