Ballast Capital Advisors LLC

Trademark Trial and Appeal Board

Oct 2, 2019

87509097 (T.T.A.B. Oct. 2, 2019)

Mailed: October 2, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ballast Capital Advisors LLC
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Application Serial No. 87509097
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Vernon P. Squires of Bradley & Riley PC for Ballast Capital Advisors LLC.

Nicholas K. D. Altree, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Zervas, Bergsman and Hudis, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Ballast Capital Advisors LLC (Applicant) seeks registration on the Principal
Register of the mark BALLAST CAPITAL ADVISORS and design, reproduced below,
for “financial planning and investment advisory services,” in Class 36.1

1 Application Serial No. 87509097 was filed on June 28, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and
first use in commerce as early as May 18, 2016.
This Opinion Is Not a
Precedent of the TTAB
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The description of the mark in the application reads as follows:
The mark consists of the stylized words “BALLAST
CAPITAL ADVISORS” and an 8-pointed star surrounded
by a circle. There is a small circle on each point of the star.
The circle goes through the middle of each point of the star.
“BALLAST” appears in dark blue upper case lettering,
with “CAPITAL ADVISORS” in italicized light blue
lettering in upper and lower case, directly under the word
“BALLAST.” The 8-pointed star appears to the left of the
words.
The color(s) dark blue and light blue is/are claimed as a
feature of the mark.
Applicant disclaimed the exclusive right to use the words “Capital Advisors.
The Examining Attorney issued a final refusal to register Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
mark so resembles the three registered marks listed below as to be likely to cause
confusion:
1. Registration No. 2989915 for the mark BALLAST POINT VENTURES (in
typed drawing form)2 and Registration No. 5060845 for the mark BALLAST
POINT VENTURES and design, reproduced below, owned by the same entity
and both registered for “financial services, namely, venture capital, financial

2 Registration No. 2989915 registered on August 30, 2005; renewed.
Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A typed mark is the legal
equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks.”).
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and investments consulting, financial and investments advice and financial
and investments banking,” in Class 36.3

The description of the mark in the registration reads as follows:
Color is not claimed as a feature of the mark. The mark
consists of the words “BALLAST POINT VENTURES”
with a star inside a circle to the left of the word
“BALLAST.”
Registrant disclaimed the exclusive right to use the word “Ventures” in both
registrations.
2. Registration No. 5348745 for the mark BALLAST (in standard character form)
for, inter alia, “real estate investment services,” in Class 36.4
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 likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor that is relevant or for which there is evidence of record. See In re Guild Mortg.

3 Registration No. 5060845 registered October 11, 2016.
4 Registered December 5, 2017.
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Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v.
M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). “[E]ach case must be decided on its own facts
and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d
1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1945-46 (Fed. Cir. 2004); Federated 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.”); see also In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but ‘may focus … on
dispositive factors, such as similarity of the marks and relatedness of the goods’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
I. BALLAST POINT VENTURES registrations
A. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register its mark for “financial planning and investment
advisory services.” The description of services in the BALLAST POINT VENTURES
registrations is “financial services, namely, venture capital, financial and
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investments consulting, financial and investments advice and financial and
investments banking.” Applicant’s “financial planning and investment advisory
services” are identical to Registrant’s “financial and investments consulting, financial
and investments advice.”
Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each activity listed in the identification of services. It is
sufficient for a refusal based on likelihood of confusion that relatedness is established
for any item encompassed by the identification of services in a particular class in the
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015),
aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification
of goods within a particular class in the application.”).
Applicant argues to the contrary insisting that the services differ substantially.5
Greg Carstensen, Applicant’s President, attested to the following:
2. [Applicant] operates in the business of providing
financial advice to investors. [Applicant] analyze[s] a given
client’s situation and goals, and then help the client decide
what might be appropriate investments, including
equities, bonds, retirement accounts, etc. [Applicant] does

5 Applicant’s Brief, p. 14 (5 TTABVUE 15).
References to the briefs on appeal refer to the Board’s TTABVUE docket system. Coming
before the designation TTABVUE is the docket entry number; and coming after this
designation are the page references, if applicable.
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not infuse capital directly into private equity investments
or related services.
3. … Ballast Point Ventures [Registrant] operates a
different business space than [Applicant]. [Registrant]
solicits investments to use for private equity, including its
own funds. This type of investment activity generally is
directed to and conducted with high net-worth accredited
investors.6
However, we analyze the similarity or dissimilarity and nature of the services
based on the services as they are described in the application and the cited
registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051
(Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput.
Servs. 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.”).
We may not read limitations into the identification of services. In re i.am.symbolic,
LLC, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent

6 Carstensen Affidavit ¶¶2-3 attached to the March 26, 2018 Response to Office Action (TSDR
71).
Citations to the examination record refer to the Trademark Status and Document Retrieval
System (TSDR), by page number, in the downloadable .pdf format.
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nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read limitations into the
registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no
authority to read any restrictions or limitations into the registrant’s description of
goods.”). In other words, we cannot resort to extrinsic evidence to restrict the breadth
of Applicant’s or Registrant’s services. See In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration).
Finally, we are required to give “full sweep” to the activities set forth in the
descriptions of services. The services are presumed to encompass all services of the
nature and type identified in the application and registration. In re Jump Designs
LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (where “there is an absence of any
restrictions as to the channels of trade and no limitation as to the classes of
purchasers, it is presumed that in scope the identification of goods encompasses not
only all the goods of the nature and type described therein, but that the identified
goods are offered in all channels of trade which would be normal therefor”); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also Stone Lion Capital Partners,
110 USPQ2d at 1162 (“An application with 'no restriction on trade channels’ cannot
be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”). Therefore, we must presume that Applicant’s “financial
planning and investment advisory services” includes all types of financial planning
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and investment advisory services, including Registrant’s “financial and investments
consulting, financial and investments advice,” regardless of what the evidence
actually shows.
We find that Applicant’s description of services and Registrant’s description of
services are in part identical.
B. Established, likely-to-continue channels of trade and classes of
consumers.
Because the services described in the application and the cited registrations are
in part identical, we presume that the channels of trade and classes of purchasers are
the same. See Viterra, 101 USPQ2d at 1908 (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d
mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services described
in the application and the cited registration are identical, we presume that the
channels of trade and classes of purchasers are the same.”); United Glob. Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
C. The similarity or dissimilarity of the marks.
We turn now to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
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elements may be sufficient to find the marks confusingly similar.” In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the services are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
“The 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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721); see also
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,
103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
As noted above, Applicant is seeking to register the mark BALLAST CAPITAL
ADVISORS and design reproduced below:
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Registrant’s marks are BALLAST POINT VENTURES in standard character form
and BALLAST POINT VENTURES and design reproduced below:

The marks are similar because they share the word “Ballast” as the first and
dominant term. The word “Ballast” is a noun that is defined as follows:
1. Nautical. any heavy material carried temporarily or
permanently in a vessel to provide desired draft and
stability.
2. Aeronautics. something heavy, as bags of sand, placed
in the car of a balloon for control of altitude and, less
often, of attitude, or placed in an aircraft to control the
position of the center of gravity.
3. anything that gives mental, moral, or political stability
or steadiness: the ballast of a steady income.
4. gravel, broken stone, slag, etc., placed between and
under the ties of a railroad to give stability, provide
drainage, and distribute loads.7
It is also a verb that is defines as follows:

7 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2019). The Board
may take judicial notice of dictionary definitions, including online dictionaries that exist in
printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d,
823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters.
Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
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1. to furnish with ballast: to ballast a ship.
2. to give steadiness to; to keep steady: parental
responsibilities that ballast a person.8
When used in connection with financial services, the word “Ballast” is an arbitrary
term that is inherently strong and accorded a broad scope of protection. See Nautilus
Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed.
Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected or
uncommon way” and observing that such marks are typically strong); see also Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong
trademarks).9
Based on use of word “Ballast” as the first term in all the marks, all the marks
engender the commercial impression of a steadying advisory influence.
The descriptive term “Capital Advisors” in Applicant’s mark has little, if any,
source-identifying significance. It is well settled that disclaimed, descriptive matter
may have less significance in likelihood of confusion determinations. See In re Detroit
Athletic Co., 128 USPQ2d at 1050 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); 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

8 Id.
9 There is no evidence regarding the number and nature of similar marks in use in connection
with similar services.
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in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc.,
41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Likewise, the descriptive term “Ventures” in Registrant’s marks has
little, if any, source-indicating significance. There is nothing improper in stating that,
for rational reasons, more or less weight has been given to a particular feature of a
mark, such as a common dominant element, provided the conclusion rests on a
consideration of the marks in their entireties. Viterra, 101 USPQ2d at 1908; In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
As we note above, further highlighting the significance of the word “Ballast” in
the respective marks is its position as the first word in the marks. We often have held
that the lead element in a mark has a position of prominence; it is likely to be noticed
and remembered by consumers and to play a dominant role in the mark. See In re
Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two
initial words is particularly significant because consumers typically notice those
words first”); Palm Bay Imps. Inc. 73 USPQ2d at 1692 (“Veuve” is the most prominent
part of 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 Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word); Presto Prods. Inc. v.
Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of
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a mark which is most likely to be impressed upon the mind of a purchaser and
remembered”).
Moreover, in the case of marks consisting of words and a design, the words are
normally accorded greater weight because the words are likely to make an impression
upon purchasers, would be remembered by them, and would be used by them to
request the services. See Viterra, 101 USPQ2d at 1908, 1911 (Fed. Cir. 2012) (citing
CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir.
1987); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
Registrant’s standard character mark BALLAST POINT VENTURES is not
limited to any particular depiction. The rights associated with a mark in typed
drawing form reside in the wording, and not in any particular display. Thus,
Registrant’s mark may be depicted in any manner, regardless of the font style, size,
or color, and might at any time in the future be displayed in a manner similar to
Applicant’s mark. Viterra, 101 USPQ2d at 1909-11; Citigroup Inc. v. Capital City
Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument
that for purposes of determining whether two marks are similar, a mark in a typed
drawing (equivalent to modern standard character format) is distinct from such mark
in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot
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legally be asserted by that party” (emphasis in original)). In other words, Registrant
may depict is mark in a manner similar to Applicant’s mark as displayed below:
BALLAST POINT
Ventures

Registrant’s mark BALLAST POINT VENTURES and design is even closer in
appearance than the mark in standard character form because the design elements
are similar. Both designs appear on the left side of the mark and consist of a circle
and stars. In Registrant’s mark, there is a four-point star while Applicant has an
eight-point star.10 While the design elements are not identical, we focus on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1438 (TTAB 2012); see also Bridgestone Americas Tire Operations, LLC v. Federal
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012) (“Exact identity is not
necessary to generate confusion as to source of similarly-marketed products.”). In this
case, the peripheral differences fail to distinguish the marks.
Applicant argues that “Ballast Point” in Registrant’s marks engenders a different
meaning and commercial impression than the word “Ballast” in Applicant’s mark.11
As [Applicant] noted in its responses to the Office Actions,
the phrase “Ballast Point” conveys an entirely different
meaning than the single word Ballast. Ballast Point
represents a geographic neighborhood near Tampa,
Florida, where the Registrant is based. Ballast Point is the
location of a famous civil war battle. Both words depend on

10 The description of the mark in Applicant’s application identifies the design element as an
8-pointed star surrounded by a circle.
11 Applicant’s Brief, p. 10 (5 TTABVUE 11).
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each other to present a unique meaning. To insist that
“Ballast” is the dominant word in the mark ignores that
our language hosts many two-word terms that create a
distinct impression, e.g. “West Point,” “Bull Run,” “Palm
Beach,” etc.12
According to the Wikipedia article that Applicant submitted, BALLAST POINT is
a neighborhood in Tampa, Florida, with a population of almost 5,000 people. “The
neighborhood is home to the Ballast Point Neighborhood Association and the City of
Tampa Police Neighborhood Watch (crime watch groups: Ballast Point Neighborhood
Watch I, II and III.”13 Although Registrant is located in St. Petersburg, Florida,
Registrant’s website does not refer to its location near the Ballast Point neighborhood
and there is no evidence regarding the renown of the Ballast Point neighborhood.
That the Wikipedia entry highlights the Ballast Point Neighborhood Association
and Neighborhood Watch Groups indicates that the Ballast Point neighborhood is not
well known outside of Tampa. To the significant number of consumers seeking
financial and investment advice that are unaware that Ballast Point is a Tampa
neighborhood, the commercial impression engendered by Registrant marks
BALLAST POINT VENTURES is the steadying influence of Registrant’s services.
We find that Applicant’s mark BALLAST CAPITAL ADVISORS and design is
similar to Registrant’s marks BALLAST POINT VENTURES in standard characters
and BALLAST POINT VENTURES and design in their entireties in terms of
appearance, sound, connotation and commercial impression.

12 Id.
13 March 26, 2018 Response to Office Action (TSDR 8).
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D. The conditions under which sales are made.
Applicant, without any evidence, argues that the respective consumers are
sophisticated and discerning.14
Accredited investors who consider the BALLAST POINT
VENTURES services will bring an exceptional degree of
sophistication to investing in private equity offerings. This
high-risk, high-reward segment of the financial industry
does not entice impulse buying.15
Applicant’s contention is just attorney argument unsupported by any evidence. As
the Federal Circuit recently reiterated, “Attorney argument is no substitute for
evidence.” Cai v. Diamond Hong, Inc., 127 USPQ2d at 1799 (quoting Enzo Biochem,
Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see
also In re DeBaun, 687 F.2d 459, 214 USPQ 933, 934 n.4 (CCPA 1982) (“we need not
evaluate the weight to be given to the attorney's declaration with respect to
statements more appropriately made by appellant.”).
The relevant activities in Registrant’s description of services are for, inter alia,
“financial and investments consulting, financial and investments advice,” without
any restriction or limitation to “accredited investors.” We cannot resort to extrinsic
evidence to restrict the conditions under which Registrant’s services are sold. See In
re Bercut-Vandervoort & Co., 229 USPQ at 764 (evidence that relevant goods are
expensive wines sold to discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or registration).

14 Applicant’s Brief, p. 17 (5 TTABVUE 18).
15 Id.
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Finally, we must consider the consumers to whom sales are made as including the
“least sophisticated consumer in the class.” Stone Lion Capital Partners, LP v. Lion
Capital LLP, 110 USPQ2d at 1163-64 (recognizing Board precedent requiring
consideration of the “least sophisticated consumer in the class”); see also In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding that all
purchasers of wine may not be discriminating because while some may have preferred
brands, “there are just as likely to be purchasers who delight in trying new taste
treats.”). Because there are no restrictions, limitations, or descriptions of the relevant
consumers in the description of services, we must presume that consumers to whom
Applicant and Registrant offer their financial and investment advice include all
consumers of such services, including unsophisticated investors who are seeking
retirement advice, assistance in paying for college, or assistance in how to finance a
home. While consumers generally may exercise more care in those activities, there is
nothing in the record to show that it rises to the level to weigh in Applicant’s favor.
We find that the degree of consumer care is neutral.
E. Conclusion
Because the marks are similar, the services are in part identical, and there is a
presumption that the services are offered in the same channels of trade to the same
classes of consumers, we find that Applicant’s mark BALLAST CAPITAL ADVISORS
and design for “financial planning and investment advisory services” is likely to cause
confusion with the registered marks BALLAST POINT VENTURES in standard
character form and BALLAST POINT VENTURES and design both for and both
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registered for “financial services, namely, venture capital, financial and investments
consulting, financial and investments advice and financial and investments banking.”
II. Registration No. 5348745 for the mark BALLAST
A. Similarity or dissimilarity of the marks.
As noted above, Applicant is seeking to register the mark BALLAST CAPITAL
ADVISORS and design reproduced below:

Registrant’s mark is BALLAST in standard character form.
The marks are similar because they share the arbitrary word “Ballast.” As
discussed above, the word “Ballast” is the dominant element in Applicant’s mark
because (i) words are the dominant part of composite marks consisting of words and
designs, (ii) the term “Capital Advisors” is descriptive and has less significance as a
source indicator, and (iii) the word “Ballast” is the first word in the name “Ballast
Capital Advisors.” Applicant concedes that “Ballast” is an important part its mark.16
Under such circumstances and where Applicant’s mark encompasses Registrant’s
entire mark, courts and the Board have found the marks to be similar. See China
Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed.
Cir. 2007) (applicant’s mark CHI PLUS is similar to opposer’s mark CHI both for
electric massagers); Coca-Cola Bottling Co. of Memphis, TN, Inc. v. Joseph E.

16 Applicant’s Brief, p. 11 (5 TTABVUE 12).
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Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark
BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause
confusion with BENGAL for gin); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ
155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and
conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic
Labs., Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC
for vitamins for hair conditioners and shampoo is likely to cause confusion with
HEAD START for men’s hair lotion and after-shaving lotion).
We find that Applicant’s mark BALLAST CAPITAL ADVISORS and design is
similar to Registrant’s mark BALLAST in terms of appearance, sound, connotation
and commercial impression.
B. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register its mark for “financial planning and investment
advisory services,” while Registrant description of services is for, inter alia, “real
estate investment services.” Because Applicant’s “investment advisory services” are
not limited or restricted in any way, they include all types of investment advice,
including real estate investment services. See Stone Lion Capital Partners,
110 USPQ2d at 1162; In re Jump Designs LLC, 80 USPQ2d at 1374; In re Elbaum,
211 USPQ at 640.
The Examining Attorney points to excerpts in Applicant’s specimen to support a
finding that financial planning and investment advisory services include real estate
investment services.
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In the market crisis of 2008, [Applicant’s President] was
given responsibility for American Equity’s MBS portfolio
selectively guiding capital into distressed MBS assets and
growing AUM from $500 million to over $2.5 billion by the
end of 2009. He was an early buyer or REMIC securities
and established numerous private fund vehicles to
capitalize on the market dislocation.17
* * *
[Applicant’s President] co-founded Aysmmetria Group
(www.asymmetriagroup.com) a private equity
management company overseeing venture capital assets
including commercial real estate.18
By touting its Principal’s experience investing in real estate to show use of the mark
BALLAST CAPITAL INVESTORS and design for “financial planning and investment
advisory services,” the Examining Attorney concludes that Applicant’s services
include real estate investment services.19
Further, the Examining Attorney submitted 25 use-based third-party
registrations based on use for “financial planning and investment advisory services”
and “real estate investment services.”20 Third-party registrations based on use in
commerce that individually cover a number of different services might have probative
value to the extent that they serve to suggest that the listed services are of a type

17 “REMIC” is a “real estate mortgage investment conduit.” It is “an entity (as a corporation,
partnership, or trust) that functions as a vehicle for investment in mortgage obligations and
especially collateralized mortgage obligations and receives favorable tax treatment by
restricting its own investment to the maintenance of cash flow and reserves and to
investment in properties acquired from foreclosure on the underlying mortgages.” Merriam-
Webster.com accessed September 25, 2019.We take judicial notice of this definition.
18 June 28, 2017 Specimen (TSDR 4).
19 Examining Attorney’s Brief (7 TTABVUE 7).
20 April 20, 2018 Office Action (TSDR 8-39) and October 29, 2018 Office Action (TSDR 7-54).
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that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). Representative
registrations, with the relevant portion of the description of services, are listed below:
MARK REG. NO. SERVICES
5MWAY 3749194 Financial planning and investment
advisory services; real estate investment
DUFFY ANDERSON 4319600 Financial and investment advisory
services; real estate investment services
EXCALIBUR PRIVATE
WEALTH
4562367 Financial planning; investment advisory
services; real estate investment services
PERPETUAL CAPITAL 3702392 Investment advisory services; real estate
investment
FOLIOMAX 3596315 Financial planning and investment
advisory services; real estate investment

Applicant argues that in response to an Office Action during the prosecution of
Registrant’s application, Registrant admitted that it does not offer any financial
services and that, therefore, the services at issue in this application do not overlap.21
There are several problems with Applicant’s argument. First, Applicant did not
submit the copy of the Office Action wherein Registrant purportedly stated that it
does not render any financial services. Therefore, Applicant’s arguments are without
evidentiary support.
In this regard, Applicant quoted from Registrant’s purported Response to an
Office Action wherein Registrant stated the following:
Applicant exclusively offers the specific management
services for residential and commercial real estate in
addition to construction services. Applicant does not offer

21 Applicant’s Brief, p. 12 (5 TTABVUE 13).
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any type of financial services nor does [Ballast Point
Ventures] provide any real estate management services.22
However, Registrant’s description of services includes “real estate investment
services,” as well as “real estate management services, as just two of many activities
comprising the description of services in Class 36. Based on the excerpt provided by
Applicant, we cannot tell if the Applicant was responding to a likelihood of confusion
refusal based on Registrant’s “real estate investment services” or “real estate
management services.” This illustrates why it is incumbent upon an Applicant to
submit evidence to support its argument.
Further, Applicant’s reliance on EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc.,
213 USPQ 597 (TTAB 1982), aff’d, 706 F.2d 1213, 217 USPQ 986 (Fed. Cir. 1983),
regarding the effect of Registrant’s purported admission is misplaced. In EZ Loader
Boat Trailers, the Board held,
It is well settled that an applicant’s prior inconsistent
statements in its application for registration or in another
proceeding do not give rise to an estoppel in subsequent
proceedings. Institutional Wholesalers v. Saxons Shoppes,
Inc., 170 USPQ 107 (TTAB 1971); Textron, Inc. v. Gillette
Co., 180 USPQ 152, 154 and cases cited therein (TTAB
1973). However, such statements constitute admissions
and may be considered as evidence, albeit not conclusive
evidence, of the truth of the assertions therein. Bakers
Franchise Corp. v. Royal Crown Cola Co., 160 USPQ 192
(CCPA 1969); Maremont Corp. v. Airlift Corp., 174 USPQ
395, 396 (CCPA 1972).
EZ Loader Boat Trailers, 213 USPQ at 599; see also Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (“That a

22 October 18, 2018 Response to Office Action (TSDR 5-6).
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party earlier indicated a contrary opinion respecting the conclusion in a similar
proceeding involving similar marks and goods is a fact, and that fact may be received
in evidence as merely illuminative of shade and tone in the total picture confronting
the decision maker. To that limited extent, a party’s earlier contrary opinion may be
considered relevant and competent. Under no circumstances, may a party’s opinion,
earlier or current, relieve the decision maker of the burden of reaching his own
ultimate conclusion on the entire record.”). Registrant’s statement that it “exclusively
offers the specific management services for residential and commercial real estate in
addition to construction services” does not preclude it from offering “real estate
investment services,” especially since those activities are part of the description of
services.
In any event, Applicant’s contention that the services do not overlap misses the
point. In determining whether the services are related, it is not necessary that the
services of the parties be similar or competitive in character to support a holding of
likelihood of confusion; it is sufficient for such purposes that the Examining Attorney
establish that the services are related in some manner or that conditions and
activities surrounding marketing of these services are such that they would or could
be encountered by same persons under circumstances that could, because of
similarities of marks used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same producer. Coach Servs,
101 USPQ2d at 1722.
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The issue here, of course, is not whether purchasers would confuse the services,
but rather whether there is a likelihood of confusion as to the source of the services.
In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis
Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc.,
223 USPQ 830 (TTAB 1984). As noted above, Applicant touts its Principal’s
experience in making real estate investments as a reason to engage its “financial
planning and investment advisory services.” In addition, the third-party registrations
indicate that “financial planning and investment advisory services” and “real estate
investment services” may emanate from a single source. Applicant has not submitted
any evidence in rebuttal.
We find that Applicant’s “financial planning and investment advisory services”
are related to Registrant’s “real estate investment services.”
C. Established, likely-to-continue channels of trade and classes of
consumers.

Applicant “believes no similarity of trade channels exist”23 because Registrant
“unequivocally admitted it does not engage in financial services. As such, there can
be no overlap of trade channels.”24 To support its argument, Applicant refers to
Registrant’s specimen of use in Registrant’s application that Applicant did not
submit.
According to the specimen of its mark submitted to support
the registration, “If you are looking for the highest quality

23 Applicant’s Brief, p. 15 (5 TTABVUE 16).
24 Id. at page 16 (5 TTABVUE 17).
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property management in San Francisco, please give us a
try.”25
The trade channels and classes of consumers concern how and to whom the
services are marketed. See In re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010)
(the goods are “likely to be seen by the same persons”); In re Binion, 93 USPQ2d 1531,
1534-35 (TTAB 2009) (“would or could be encountered by the same persons”); Motion
Picture Ass’n of Am. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1562 (TTAB 2007)
(“encountered by the same persons”); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221
USPQ 58, 61 (TTAB 1984).
There is nothing that prevents Registrant’s “real estate investment services” from
being promoted in the same channels of trade and to the same classes of consumers
as Applicant’s “financial planning and investment advisory services.” As discussed
above, because Applicant’s “investment advisory services” are not limited or
restricted in any way, they include all types of investment advice, including real
estate investment services. Moreover, it is logical that someone who has or is
interested in “real estate investment services’ may require “financial planning and
investment advisory services.” Applicant’s specimen of use, discussed above, which
touts Applicant’s Principal’s history of real estate investments as a reason to engage
Applicant’s services, demonstrates this.
Finally, as discussed above, because Applicant did not submit the specimen for
our review, there is nothing for us to consider. Nevertheless, the fact that the

25 Id.
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specimen shows use of Registrant’s mark in connection with property management
services does not preclude Registrant from rendering real estate investment services.
See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 904.01(a) (October 2018)
(“Generally, if more than one item of goods, or more than one service, is specified in
one class in an application, it is usually not necessary to have a specimen for each
product or service. When the range of items is wide or contains unrelated articles,
the examining attorney may request additional specimen(s) under 37 C.F.R. §
2.61(b).”).
We find that the established, likely-to-continue channels of trade and classes of
consumers favors finding a likelihood of confusion.
D. Conditions under which sales are made.
Applicant argues that the relevant clients will exercise a high degree of care
because they will be sophisticated and discerning. Specifically, Registrant’s clients,
“persons or entities owning apartment buildings are likely to use discretion and care
when choosing a property manager such as [Registrant].”26 The problem with this
argument is that Applicant concludes, without evidence, that consumers seeking
property management services will exercise a high degree of care, but Registrant’s
services, at issue, are “real estate investment services.”
Because there are no restrictions, limitations, or descriptions of the relevant
consumers in the description of services, we must presume that consumers to whom
Applicant and Registrant offer their financial and investment advice and real estate

26 Applicant’s Brief, p. 17 (5 TTABVUE 18).
Serial No. 87509097

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investment services include all consumers of such services, including unsophisticated
investors who are seeking retirement advice, assistance in paying for college, or
assistance in how to finance a home. While consumers generally may exercise more
care in those activities, there is nothing in the record to show that it rises to the level
of weighing in Applicant’s favor.
We find that the degree of consumer care is neutral.
E. Conclusion
Because the marks are similar, the services are related, and the services are
offered in the same channels of trade to the same classes of consumers, we find that
Applicant’s mark BALLAST CAPITAL ADVISORS and design for “financial planning
and investment advisory services” is likely to cause confusion with Registrant’s
registered BALLAST service mark for, inter alia, “real estate investment services.”
Decision: The refusal to register Applicant’s mark BALLAST CAPITAL
ADVISORS and design is affirmed.