Arcus Capital Partners, LLC

Trademark Trial and Appeal Board

Oct 26, 2012

No. 77566330 (T.T.A.B. Oct. 26, 2012)

Mailed:
October 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Arcus Capital Partners. LLC
_____

Serial Nos. 77566329 and 77566330
_____

Michael D. Hobbs of Troutman Sanders LLP for Arcus Capital Partners, LLC.

Wendy Goodman, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing
Attorney).
_____

Before Bucher, Zervas and Taylor, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Arcus Capital Partners, LLC (“applicant”) has filed applications to register on the
Principal Register the standard character marks ARCUS CAPITAL MANAGEMENT
(CAPITAL MANAGEMENT disclaimed)1 and ARCUS CAPITAL PARTNERS (CAPITAL
PARTNERS disclaimed),2 both for “Financial planning and consulting, namely wealth and
capital management services” in International Class 36.
Registration has been refused in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks, when used on or in connection

1 Application Serial No. 77566329, filed September 10, 2008, and claiming a bona fide intention to use
the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
2 Application Serial No. 77566330, filed September 10, 2008, and claiming a bona fide intention to use
the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77566329 and 77566330

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with the identified services, so resemble the mark in Registration No. 3674631, ARCUS
FINANCIAL BANK (in standard character form, “FINANCIAL BANK” disclaimed) for
“banking services; financial services, namely, administration and management of health savings
accounts” in International Class 36, as to be likely to cause confusion, to cause mistake or to
deceive.
When the refusal in each application was made final, applicant appealed and requested
reconsideration of the final refusal. The request for reconsideration was denied in each
application, and each proceeding resumed on October 24, 2011. The appeals have been fully
briefed. Because they involve similar issues of law and fact and similar records, we are deciding
both appeals in this single decision.3
Our determination of the issue of likelihood of confusion is based on an analysis of all 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We turn first to a comparison of applicant's marks ARCUS CAPTIAL MANAGEMENT
and ARCUS CAPITAL PARTNERS with registrant's mark ARCUS FINANCIAL BANK. In
determining the similarity or dissimilarity of the marks, we must consider them in their entireties
in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The 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 their entireties that confusion as to the source of the
services offered under the respective marks is likely to result.

3 We also note that the evidence and briefs in each application are virtually identical. Accordingly,
unless otherwise stated, specific arguments and evidence are taken from the record of application Serial
No. 77566329.
Serial Nos. 77566329 and 77566330

3

Applicant contends that when the respective marks are compared in their entireties, its
marks do not create a likelihood of confusion with the cited mark, and that it is a violation of the
“anti-dissection rule” to focus upon the “prominent” feature of a mark, while ignoring all other
elements of the mark. Applicant further explains that its use of the words “CAPITAL
MANAGEMENT” and “CAPITAL PARTNERS” distinguishes applicant’s marks (and the
services offered under the marks) from the words “FINANCIAL BANK” used in the cited mark.
We agree that the similarity or dissimilarity of the marks must be determined based on
the mark in their entireties, and accordingly, the analysis cannot be predicated on dissecting the
marks into their various components. However, one feature of a mark may have more
significance than another, and in such a case there is nothing improper in giving greater weight
to the more significant feature. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). (“[T]here 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
consideration of the marks in their entireties. Indeed, this type of analysis appears to be
unavoidable.”). For instance, “[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 a mark….” Id. Furthermore, the 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 that confusion as to the source of the
goods and/or services offered under the respective marks is likely to result.
Applying these principles to the marks at issue, we conclude that applicant’s marks are
highly similar to the cited mark. The term “ARCUS” is the dominant portion of the mark in the
cited registration because the term “FINANCIAL BANK” is indicative of the nature of the
Serial Nos. 77566329 and 77566330

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registrant’s services, i.e., banking and financial services, and would not be looked upon as a
source-identifying element.
Likewise, the term “ARCUS” is the dominant portion of applicant’s mark because the
terms “CAPITAL MANAGEMENT” AND “CAPITAL PARTNERS” are generic and merely
descriptive, and “ARCUS” is arbitrary with respect to banking and financial services. The term
“CAPITAL MANAGEMENT” is indicative of the nature of applicant’s services (i.e., capital
management services) and the term “CAPITAL PARTNERS” is descriptive when viewed in
connection with applicant’s entity type. Moreover, applicant disclaimed the exclusive right to
use “CAPITAL MANAGEMENT” and “CAPITAL PARTNERS” at the request of the
examining attorney, thereby conceding the unregistrable and generic/descriptive nature of those
terms as applied to applicant’s services.4 See, for example, In re DNI Holdings Ltd., 77 USPQ2d
1435, 1442 (TTAB 2005); Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1072). Therefore, the name “ARCUS” is accorded more weight
than the terms “FINANCIAL BANK,” “CAPITAL MANAGEMENT” and “CAPITAL
PARTNERS” in our comparison of the marks. National Data Corp., 224 USPQ at 751.
Additionally, the significance of the word “ARCUS” as the dominant element of both
applicant’s marks and the registered mark is further reinforced by its location as the first part of
each mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[I]t 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 Ponsardin,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of

4 While the disclaimers were entered by Examiner’s Amendments without discussion, the examining
attorney indicated in her briefs, and applicant did not state otherwise, that the terms “CAPITAL
MANAGEMENT” and “CAPITAL PARTNERS” were disclaimed, respectively, as generic and merely
descriptive.
Serial Nos. 77566329 and 77566330

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the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
For these reasons, even though applicant’s and registrant’s marks contain different
wording, because of the generic or descriptive nature of the terms CAPITAL MANAGEMENT
and CAPITAL PARTNERS in applicant’s marks and the term FINANCIAL BANK in the
registered mark, and the lesser weight to which these terms are entitled as we compare the marks
in their entireties, applicant’s marks and the registered mark are substantially similar in sound,
appearance, connotation and commercial impression.
Thus, the factor of the similarity of the marks strongly favors a finding of likelihood of
confusion.
We are not persuaded otherwise by applicant’s assertion that because the cited mark is
not famous, it is entitled to an “extremely” narrow scope of protection. While evidence
establishing the fame of the prior registered mark would weigh heavily in support of a finding of
likelihood of confusion, the absence of such evidence does not weigh against a finding of
likelihood of confusion. Moreover, the fame of the cited registered mark is usually not a factor
in ex parte cases such as this; evidence of such fame (sales and advertising figures) is not readily
available to the trademark examining attorney.
In addition, there is no evidence of third-party use of ARCUS or any other evidence that
would lead us to the conclusion that the cited mark is not a strong mark and thus entitled to a
greater, rather than a lesser, degree of protection.
Serial Nos. 77566329 and 77566330

6

We turn then to the relationship between the services, keeping in mind that the services
must be considered as they are described in the application and cited registration, rather than in
light of what the services may actually be. See 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 (Fed. Cir. 1987). As identified, applicant's
services are "financial planning and consulting, namely wealth and capital management services"
and registrant's services are banking services; financial services, namely, administration and
management of health savings accounts.”
The examining attorney contends that applicant’s services are related to those of the
registrant, specifically maintaining that the “banking services” recited in the identification in
registrant’s registration and which may be defined as “the business of a bank,”5 is broad enough
to include the more narrowly defined “wealth management services” recited in applicant’s
application. In support of her position, the examining attorney has made of record web pages
from the websites of several large national banks, i.e., Citi, PNC, Wachovia, Chase and
SUNTRUST BANK and smaller local banks, i.e., Sandy Spring Bank of Maryland and Burke &
Herbert Bank of Virginia, demonstrating that these banking institutions offer a variety of banking
services such as the traditional banking services, including checking and savings accounts and
financial investment services, including “wealth management” under the same mark. In
addition, the webpages from PNC, Wachovia, Chase, and Sandy Spring Bank show that, in
addition to providing banking and wealth management services, they also provide management
of health savings accounts.
Excerpts from the web pages follow:

5 www.thefreedictionary.com/banking retrieved March 15, 2011 and attached to the Final Office Action
issued March 15, 1011.
Serial Nos. 77566329 and 77566330

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Banking
Banking the way it should be.
Citibank offers a wide range of checking, savings, CD and
retirement products – and all come with many free support services
including online banking, convenient account access, and 24/7
support.

Citi Personal Wealth Management
Count on Citi Personal Wealth Management to help you achieve
your financial goals – whether you choose to use a personal
advisor or manage your own investments with our support.
Citi Personal Wealth Management is committed to your long term
financial success. That’s why Citi Personal Wealth Management
offers alternative ways of investing – tailored to suit your needs.
[www.online.citibank.com]

PNC’s wide range of services can make banking easier, and more
convenient than ever. See why PNC’s the smart choice for help in
meeting your financial goals.
► Checking
► Online Banking and Bill Paying
► Savings
► Mortgages, Loans & Lines of Credit
► Credit Cards
► Investments and Wealth Management
► …
INVESTMENTS AND WEALTH MANAGEMENT
Developing and executing a comprehensive financial plan that
encompasses every aspect of your financial life can be challenging,
particularly when you have substantial assets and sophisticated
needs.
…
PNC Wealth Management and Hawthorn offer complete wealth
management solutions designed for clients with significant assets
and complicated financial lives. With the close cooperation and
guidance of an advisor, we will work with you to develop a
strategy that includes sophisticated strategies ranging from
investment management and estate planning to trust administration
and private foundation management.

Serial Nos. 77566329 and 77566330

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PNC Health Savings Account
Welcome to PNC Health Savings Accounts
[www.pnc.com and https://www.smart-hsa.com/pnc/]

BANKING
Checking: An account for every lifestyle. … Whatever you need,
we can show you the right solution. Savings & CEDs: A savings
account is a building block to a solid financial future. Check
Cards: Visa® Check Cards add banking convenience and
purchasing power to your financial life.
WEALTH MANAGEMENT CONTACTS
Wachovia Wealth Management works with individuals and
families of substantial wealth. Typically, these clients face a high
degree of complexity in managing their financial affairs, have
complex legal structures, sophisticated wealth transfer strategies,
and many different investment accounts or trusts with multiple
providers. If you are faced with many of these same challenges, let
Wachovia Wealth Management provide guidance and solutions
customized to meet your needs.
WHY CHOOSE THE WACHOVIA HEALTHADVANTAGE HSA?
With a broad range of products and services to help you save for
retirement, a child’s college education or everyday savings,
Wachovia has the right financial products to help you save when it
comes to healthcare costs too.
[www.wachovia.com]
Personal Banking
► Checking
► Credit Cards
► Savings
► CDs
► Debit Cards
► Gift Cards
► Student Center
► Online & Mobile Banking

INVEST WHERE YOU BANK
MANAGE YOUR PERSONAL WEALTH
Serial Nos. 77566329 and 77566330

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…
To learn more about our wealth management solutions, please e-
mail us or contact your local commercial banker for an
introduction to a product specialist.
More and more people are learning that a Health Savings
Account can provide a smart way to save for future healthcare
needs.
The Chase HSA features:
Convenient access to funds with the HSA debit card, Online Bill
Payment, ATM and more. …
[www.chase.com]
Banking
Simply the way you bank with SunTrust’s selection of banking
products and services. Whether you’re looking for a checking or
savings account, credit card or access to online services, our
solutions are designed to make banking fast and convenient.
Managing Wealth
Wealth is about much more than a privileged lifestyle. It provides
the means to help you realize your life’s vision and ensure the
well-being of your family. SunTrust Private Wealth Management
develops customized solutions for various life stages and
professions.
[www.suntrust.com]

Personal Banking

popular products:

• Online Banking
• Checking
• Savings
• Health Savings Accounts (HSA’s)
• Banking for Kids
• Mortgages and Loans
• Investing
• Wealth Management

Wealth Management
Serial Nos. 77566329 and 77566330

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There’s really only one way to effectively manage wealth - match
it to your unique comfort level and tolerance for financial risk.
That’s exactly what you can expect a Sandy Spring Bank, a hands-
on, approach to managing, growing and preserving your assets.
Health Savings Accounts
A Health Savings Account (HSA) is a tax-advantaged* savings
plan that is owned by an individual. … There are no restrictions on
who may contribute to your HSA. Therefore, the individual, the
employer, or any other person can make an HSA contribution on
individual’s behalf.
[www.sandyspringbank.com]

Personal Banking
Personal baking is about more than offering baking products, it’s
about offering personal service. … That’s why we offer a full
range of products to suit your banking needs, from children’s
savings accounts and everyday checking accounts to retirement
accounts, while offering highly competitive features, rates and
rewards.
Investment Accounts & Services
Overview

Slow and steady wins the race. … And this is based on our
conservative fiscally responsible approach to financial growth and
wealth management.
…
When you’re ready to have your assets managed by a trusted
advisor, you can trust our knowledge, discipline and foresight to
help build, grow and manage your financial future.
[www.burkeandherbert.com]

In addition, the examining attorney submitted various use-based, third party registrations
showing, in each instance, that the same mark has been registered for both applicant’s and
registrant’s types of services. The registrations include, by way of example: Reg. No. 3319600
(GREEN BRANCH) for, inter alia, “financial services, namely, banking services featuring
checking, savings and investment account services” and “financial wealth management”; Reg.
No. 3091741 (CAPITAL MULTIPLIER) for, inter alia, “Financial investment services … all in
Serial Nos. 77566329 and 77566330

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the fields of … capital management” and “banking services”; Reg. No. 3306508 (THE
PRIVATE BANK) for, inter alia, “Personal money management services, namely, checking
account services, savings account services, … on-line banking services” and “wealth
management services”; Reg. No. 3473751 (NEW ANSWERS IN BANKING) for, inter alia,
“Financial and monetary affairs in the nature of banking services” and “wealth management for
individuals, corporations and others …”; Reg. No. 3255487 (MIDDLEBURG BANK WE
KNOW MONEY MATTERS.) for, inter alia, “banking services” and “wealth management
services, namely cash and asset management services”; Reg. No. 3363763 (PHYSICIANS’
FINANCIAL CARE) for “banking” and “wealth management services”; Reg. No. 3593262
TRADING CENTRAL MARKETS NEVER SLEEP) for, inter alia, “capital management” and
“banking services”; Reg. No. 3573299 (WELLS FARGO BENEFITS) for, inter alia, “banking
services ...administration of health savings accounts” and “investment management services”;
Reg. No. 3769238 (THE POWER TO GET MORE OUT OF YOUR MONEY. THE POWER
OF FIRST NIAGARA) for, inter alia, “Banking services” and “cash management accounts”;
Reg. No. 3279515 (W (stylized)) for, inter alia, “banking services …[and] providing medical
savings account services, namely, administration of medical savings accounts” and “cash
management services …[and] financial management services”; and Reg. No. 3314410
(FIDELITY TOTAL HR ADVANTAGE) for, inter alia, “administration of health savings plans”
and “Financial services, namely, investment management services.”6
Third-party registrations that individually cover different items and that are based on use
in commerce serve to suggest that the listed goods and services are of a type that may emanate
from a single source. See Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)

6 We have not relied on Registration Nos. 2970701 and 2931323 because they have been cancelled, or on
Registration Nos. 3464424, 3322534, 3889110 and 3283998 because they do not show use on services of
a types identified in both applicant’s applications and registrant’s registration.
Serial Nos. 77566329 and 77566330

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(Although third-party registrations are “not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to suggest that such goods or services are of a
type which may emanate from a single source”). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993).
Based on the third-party registrations and internet materials introduced by the examining
attorney, we find that the examining attorney has established that banks traditionally provide
services of the types identified in both applicant’s applications and the cited registration such that
consumers would expect that these types of services, i.e., “capital and wealth management
services,” “banking services” and “administration of health savings accounts,” would emanate
from the same source under a common mark. We thus find the evidence sufficient to establish
that applicant’s and registrant’s services are related for purposes of our likelihood of confusion
analysis.
Applicant’s arguments to the contrary are not persuasive. Notably, the gist of applicant’s
argument is that its marks and the cited mark identify different non-competing services. In
making this argument, applicant has focused on the administration and management of health
savings accounts in the cited registration, maintaining that the registrant does not appear to
provide any wealth management services or any services that are not tied to healthcare plans.
Pointing to registrant’s website, applicant particularly contends that “the services provided by the
Cited registrant were not in fact banking services or financial services, but rather should have
been classified as healthcare insurance services.” App. Br. P. 11. Applicant then explains that it
is not a health plan provider and that its services are in no way related to health plans; instead,
applicant is “an investment advisor … serving high net worth individuals, foundations,
Serial Nos. 77566329 and 77566330

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endowments and retirement plans that seek a disciplined but innovative approach to investment
management.” Id.
In making this argument, applicant has disregarded the “banking services” recited in the
cited registration. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), 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 right to use the
mark in connection with the goods or services identified in the certificate. In considering the
scope of the cited registration, we look to the registration itself, not to extrinsic evidence about
the registrant’s actual goods or services, customers, or channels of trade. See e.g., In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (An applicant may not restrict the scope
of the goods covered in the cited registration by argument or extrinsic evidence). As such,
applicant’s extensive arguments regarding the particular nature of both applicant’s and
registrations services are irrelevant. While we agree that the services are not the same, as is
often stated, the services need not be identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that the services are related in some manner or
that some circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which would give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are in some way associated with the
same producer or that there is an association between the producers of each parties’ services.
Albert Trostel & Sons, 29 USPQ2d at 1785.
For the reasons explained above, the du Pont factor of relatedness of the services favors a
finding of likelihood of confusion.
Serial Nos. 77566329 and 77566330

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Applicant makes similar arguments with respect to the channels of trade and classes of
consumers. Applicant again ignores the banking services listed in the identification of the cited
registration and accordingly limits registrant’s services to customers seeking health plan
solutions which it claims travel in trade channels with other health insurers; and further limits its
own services to management of high sums of capital which it states are sold face to face.
However, in the absence of any limitations to the recitation of services in applicant’s applications
as to channels of trade and classes of purchasers, we must presume that applicant’s capital and
wealth management services move in all usual channels of trade which, as the evidence
demonstrates, may include large and small banking institutions, and are offered to all normal
potential purchasers, which may include ordinary consumers with modest net worth seeking
capital and wealth management services. In re Elbaum, 211 USPQ 639 (TTAB 1981). The
record also reflects that services provided by banking institutions may include the administration
of health savings accounts. As such, the channels of trade and classes of purchasers overlap.
Accordingly, the du Pont factors of the similarity of the channels of trade and classes of
purchasers also favor a finding of likelihood of confusion.
Applicant next argues that consumers who purchase services identified by applicant’s
marks and the cited registered mark are sophisticated and will make very deliberate decisions
because they are seeking services for specific purposes. Applicant particularly contends with
respect to its customers that they must have amassed over $5 million in liquid assets or be
professional money managers, and that these “extremely sophisticated investors intimately and
closely examine the financial services being provided to them.” App. Br. p. 17. While that may
be so, we are constrained to consider applicant’s services as they are recited in its applications.
As just stated, because the recitations do not so limit applicant’s consumers, we must presume
Serial Nos. 77566329 and 77566330

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that applicant also provides its wealth and capital management services to consumers of modest
means who would not be so sophisticated or who would not examine the financial services
provided to them as closely. Nonetheless, we acknowledge that the purchasers of both
applicant’s and registrant’s services would be somewhat sophisticated and exercise at least some
degree of care in selecting the respective services. However, even careful purchasers can be
confused as to source under circumstances where, as here, very similar marks are used in
connection with related services. 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 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 neutral.
It appears that applicant is also arguing that registrant has abandoned the mark in the
cited registration due to non-use. To the extent applicant is challenging the validity of the cited
registration, such a challenge constitutes an impermissible collateral attack on those registrations.
See Section 7(b) of the Act, 15 U.S.C. § 1057(b); TMEP § 1207.01 (d)(iv). During ex parte
prosecution, including an ex parte appeal, an applicant will not be heard on matters that
constitute a collateral attack on the cited registration (e.g., applicant’s claim of non-use in
connection with the identified services). In re Dixie Restaurants, Inc. 105 F.3d 1405, 41
Serial Nos. 77566329 and 77566330

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USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5
(TTAB 1992). See TMEP § 1207.01(d)(iv)(5th ed. 2007).
As its last argument, applicant maintains that there has been no actual confusion between
applicant’s marks and the cited mark over three years of simultaneous use, despite applicant’s
prominent and extensive use of its applied-for marks. As applicant points out, it is not necessary
to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc.
v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). The lack of actual
confusion carries little weight, especially in an ex parte context. J.C Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960 144 USPQ 435, 438 (CCPA 1965). Moreover, in this ex parte
proceeding, we have had no opportunity to hear from the registrant as to whether it has
encountered any instances of confusion. As the Board previously stated in In re General Motors
Corp., 23 USPQ2d 1465, 1470 (TTAB 1992):
We recognize, of course, that the above [evidence of an absence of
actual confusion] is one-sided inasmuch as it provides only
applicant’s experience in the marketplace and not that of registrant.
Normally, in the absence of a detailed consent agreement, the
registrant has no opportunity to be heard in an ex parte proceeding
of this type and the Board, therefore, is not in a position to
meaningfully assess whether the claimed period of
contemporaneous use had provided ample opportunity for
confusion to have arisen. …The asserted evidence of actual
confusion, especially over a relatively short period of years, has
thus often been asserted to be of “limited influence” or of “dubious
probative value”. [citations omitted]
Thus, applicant’s assertion of the absence of actual confusion is of little probative value
in our determination on the issue of likelihood of confusion and that du Pont factor is neutral.
Finally, applicant throughout its brief has relied on numerous cases to support its
arguments in support of registration. We remind applicant that, as often noted by the Board and
the Courts, each case must be decided on its own merits. The determination of registrability of a
Serial Nos. 77566329 and 77566330

17

mark in another case cannot control the merits in the case now before us. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also, In re Kent-Gamebore
Corp., 59 USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001). Based on
the evidence in these proceedings bearing on the relevant du Pont factors, we find that
applicant’s marks ARCUS CAPITAL MANAGEMENT and ARCUS CAPITAL PARTNERS
for the identified services is likely to cause confusion with the mark in the cited registration
ARCUS FINANCIAL BANK. We conclude so principally due to the similarity of the marks,
the relatedness of the services, and the overlapping channels of trade and classes of consumers.
Decision: The refusals to register under Section 2(d) in application Serial Nos. 77566329
and 77566330 are affirmed.