Canal Holdings, LLCv.Canal Capital Inc.Download PDFTrademark Trial and Appeal BoardJun 26, 201992062198 (T.T.A.B. Jun. 26, 2019) Copy Citation ` Hearing: June 25, 2019 Mailed: June 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Canal Holdings, LLC v. Canal Capital Inc. _____ Cancellation No. 92062198 _____ Roger A. Gilcrest of Ice Miller, LLP for Canal Holdings, LLC. Anthony S. King of WPAT, PC for Canal Capital Inc. _____ Before Cataldo, Bergsman and Lynch, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Canal Capital Inc. (Respondent) is the owner of Registration No. 4484514 for the mark CANAL CAPITAL (in standard characters) for the services listed below: Business advisory services, consultancy and information; Business consultation services; Business consulting services relating to the integration of the areas of business process technology, organizational learning, change management, and operational sustainability, in Class 35; and Financial advisory and consultancy services; Financial analysis and consultation; Financial analysis, namely, This Opinion Is Not a Precedent of the TTAB Cancellation No. 92062198 - 2 - compiling and analyzing statistics, data and other sources of information for financial purposes, in Class 36.1 Respondent disclaimed the exclusive right to use the word “Capital.” Canal Holdings, LLC (Petitioner) has petitioned to cancel Registration No. 4484514 under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Respondent’s mark CANAL CAPITAL for the identified services so resembles Petitioner’s previously used mark CANAL HOLDINGS for providing capital investment services, private equity fund investment services, mezzanine fund investment services, and management of capital investment funds as to be likely to cause confusion. In addition, in the third amended petition for cancellation, Petitioner also seeks to cancel Respondent’s registration on the following grounds: (1) nonownership by Respondent’s predecessor as of the filing date of the application for the involved registration; (2) fraud by Respondent’s predecessor in naming himself as the original applicant instead of Respondent; (3) nonuse as of the filing date of the application for the involved registration; (4) invalid assignment of the involved registration from the predecessor to Respondent; (5) abandonment of the involved mark based on such invalid assignment; and 1 Registered February 18, 2014, based on application Serial No. 85971600 filed June 27, 2013. Cancellation No. 92062198 - 3 - (6) false suggestion of a connection with Petitioner under Trademark Act Section 2(a), 15 U.S.C. § 1052(a). Respondent, in its Answer, denied the salient allegations in the third amended petition for cancellation. I. Preliminary Issues A. Websites without URLs Petitioner attempted to introduce copies of Respondent’s website through a notice of reliance.2 Because the copies of the website did not include the URL or date the website was accessed, the webpages sought to be introduced are inadmissible. Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2); see also Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (objection to Internet printouts from petitioner’s website showing the dates accessed and printed and URL information on the grounds that petitioner failed to authenticate the documents by testimony overruled), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (web pages inadmissible for lack of URL and date accessed); Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1216-19 (TTAB 2011) (detailed discussion of why certain documents, accompanied by adequate authentication, were admissible and why certain other documents, lacking in specifically-addressed authentication elements, including absent URLs or dates accessed printed, were not admissible). 2 38 TTABVUE 347 and 348. Cancellation No. 92062198 - 4 - Likewise, the excerpt from Petitioner’s LinkedIn webpage is inadmissible for the same reason.3 B. Respondent’s discovery deposition Tarek Elalaily, Respondent’s designated Fed. R. Civ. P. 30(b)(6) witness, failed to appear at his noticed discovery deposition.4 Petitioner did not file a motion to compel the attendance of Mr. Elalaily after he failed to appear at the deposition. In its brief, Petitioner requests that the Board sanction Respondent for its failure to cooperate during discovery.5 However, in such circumstances, it is incumbent upon the aggrieved party to file a motion to compel. If a party that served a request for discovery receives a response thereto that it believes to be inadequate, but fails to file a motion to challenge the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 523.04 (2019); see also Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d1715, 1719 (TTAB 2008) (party that receives response it believes inadequate but fails to file a motion to test sufficiency of response, may not thereafter 3 38 TTABVUE 509. 4 38 TTABVUE 797-802. 5 Petitioner’s Brief, p. 27 (41 TTABVUE 28). Cancellation No. 92062198 - 5 - complain about its insufficiency); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (having failed to file motion to compel, defendant will not later be heard to complain that interrogatory responses were inadequate). Accordingly, the Board will not draw any adverse inferences from Tarek Elalaily’s failure to appear at his deposition. C. Email correspondence introduced through a notice of reliance. Petitioner sought to introduce email correspondence through a notice of reliance purportedly relevant to issues raised in the pleadings.6 Email correspondence is not the type of evidence admissible through a notice of reliance and, therefore, we have not given it any consideration. See Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g) (“The types of evidence admissible by notice of reliance are identified in paragraphs (d)(2) [pleaded registration of a party] and (e)(1) [printed publications and official records] and (2) [Internet materials] of this section and § 2.120(k) [discovery deposition, answer to interrogatory, admission or written disclosure].”); see also Trademark Rule 2.123(k), 37 C.F.R. § 2.123(k) (“Evidence not obtained and filed in compliance with these sections will not be considered.”). II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Respondent’s registration file.7 Only Petitioner introduced any testimony and evidence, consisting of the following: 6 39 and 40 TTABVUE. 7 Thus, it was unnecessary for Petitioner to introduce Respondent’s registration file because it was already part of the record. 38 TTABVUE 16-62, 218-219, and 367. Cancellation No. 92062198 - 6 - 1. A notice of reliance on the following items: a. The assignment of Respondent’s registration to Respondent from Tarek Mostafa Elalaily;8 b. A copy of the file for Petitioner’s application Serial No. 86447763 for the mark CANAL HOLDINGS (in standard character format) for “capital investment services; private equity fund investment services; mezzanine fund investment services; management of capital investment funds,” in Class 36;9 c. A copy of the file for Petitioner’s application Serial No. 86447767 for the mark CANAL HOLDINGS and design, shown below, for “capital investment services; private equity fund investment services; mezzanine fund investment services; management of capital investment funds,” in Class 36;10 8 38 TTABVUE 64-66. Having introduced the assignment once, Petitioner need not have introduced it a second time. 38 TTABVUE 364-365. 9 38 TTABVUE 68-140. Having introduced the application file once, Petitioner need not have introduced it a second and third time. 38 TTABVUE 221-228, 241-289, 370-377, and 390-438. 10 38 TTABVUE 142-215. Having introduced the application file once, Petitioner need not have introduced it a second and third time. 38 TTABVUE 230-239, 290-337, 379-388 and 440- 486. Cancellation No. 92062198 - 7 - d. A copy of a receipt from the Virginia State Corporation Commission to Tarek Elalaily for filing the articles of incorporation and a copy of the articles of incorporation;11 e. A copy Respondent’s 2013 Annual Report;12 f. Copies of Respondent’s website (canalcapital.me);13 g. A copy of a declaration signed by Tarek Elalaily derived from an unidentified teas.uspto.gov document;14 h. Copies of Petitioner’s website at canalholdings.us;15 i. Copies of Petitioner’s website at canalmezz.com;16 j. Copies of Petitioner’s website at canalcapital.com;17 and k. An excerpt from the LinkedIn webpage of Tarek Elalaily;18 2. Notice of reliance on Respondent’s responses to Petitioner’s first set of requests for admission;19 11 38 TTABVUE 340-342. 12 38 TTABVUE 344-345. 13 38 TTABVUE 350-360. Having introduced those webpages once, Petitioner did not have to introduce them a second time. 38 TTABVUE 511-513. 14 38 TTABVUE 362. 15 38 TTABVUE 488-490. 16 38 TTABVUE 492-501. 17 38 TTABVUE 503-507. 18 38 TTABVUE 515-517. 19 38 TTABVUE 548-566. Denials to admission requests cannot be submitted under notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497,1501 n.11 (TTAB 2015) (Board considered only opposer’s admissions, not denials, in response to applicant’s requests for admission); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014) (concurrent use defendant’s objection to submission of denial to admission request sustained; “rule does not extend to denials”); Cancellation No. 92062198 - 8 - 3. Notice of reliance on Respondent’s responses to Petitioner’s first set of requests for production of documents;20 4. Notice of reliance on Respondent’s responses to Petitioner’s first set of interrogatories;21 5. Testimony declaration of Kevin Coyne, Petitioner’s founder and Chief Executive Officer.22 III. Standing Standing is a threshold issue in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To establish standing in an opposition or cancellation proceeding, a plaintiff must prove that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (denials to requests for admission inadmissible). “[U]nlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R.Civ. P. 36(b).” See Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d at 1957 n.10. 20 38 TTABVUE 605-715. If no documents exist which are responsive to a document request, a party’s response that no documents exist may be made of record. See City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are admissible solely for purposes of showing that a party has stated that there are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102USPQ2d 1036 n.7 (TTAB 2012) (written responses to document requests indicating that no documents exist may be submitted by notice of reliance). We interpret Respondent’s statement that “[a] diligent search and reasonable inquiry has been conducted in an effort to comply with this demand. Registrant is currently unable to comply with this demand because the laptop on which these documents were stored crashed and is currently undergoing attempted data recovery” as “no documents exist.” 21 38 TTABVUE 742-782. 22 38 TTABVUE 806-840. Cancellation No. 92062198 - 9 - damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982). Respondent’s registration at issue in this proceeding has been cited as a Section 2(d) bar to the registration of Petitioner’s applications for CANAL HOLDINGS and CANAL HOLDINGS and design.23 Because the USPTO refused to register the applications for Petitioner’s marks based on a likelihood of confusion with Respondent’s registration, Petitioner has a real interest in cancelling Respondent’s registration and a reasonable belief that the registration blocking its applications is causing it damage. Petitioner therefore has a cause of action under the Trademark Act to seek cancellation of the Respondent’s registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d at 1062. Once a plaintiff shows standing on one ground, it has the right to assert any other grounds in a cancellation proceeding. See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983). 23 38 TTABVUE 75 and 149. Cancellation No. 92062198 - 10 - IV. Priority “A party claiming prior use of a registered mark may petition to cancel the registration on the basis of such prior use pursuant to section 14 of the Lanham Act. 15 U.S.C. Section 1064.” West Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches to” Respondent’s involved registration, and Petitioner, the alleged prior user, bears the burden of proving its claim of priority by a preponderance of the evidence. Id.; Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1105-06 (TTAB 2007). “To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion…. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). In the absence of evidence establishing earlier use of its mark, a party may rely for priority purposes on the filing date of the application that matured into its registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see also Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Because Respondent did not introduce any testimony or other evidence, the earliest date on which it may rely to Cancellation No. 92062198 - 11 - prove priority is June 27, 2013, the filing date for the application underlying the registration at issue. Kevin Coyne, Petitioner’s founder and Chief Executive Officer, testified that Petitioner had used the marks CANAL HOLDINGS and CANAL HOLDINGS and design in connection with its investment, management and consultation services at least as early as March 2006.24 To corroborate his testimony regarding priority, Mr. Coyne introduced copies of proposals dated May 18, 2005 and September 24, 2007, featuring the CANAL HOLDINGS marks.25 Further, Mr. Coyne authenticated the archival webpages Petitioner introduced through a notice of reliance showing use of the CANAL HOLDINGS marks as early as March 17, 2009.26 Petitioner has proven through uncontroverted testimony and evidence that it has priority of its CANAL HOLDINGS marks for its investment, management and consultation services. V. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the 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 24 Coyne Testimony Decl. ¶13 (38 TTABVUE 808). Mr. Coyne provides a detailed description of Petitioner’s services in paragraphs 9 and 10. (38 TTABVUE 807-808). 25 38 TTABVUE 823-831 26 38 TTABVUE 492. Cancellation No. 92062198 - 12 - 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 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) (internal citations removed). 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., 64 USPQ2d at 1380)). Cancellation No. 92062198 - 13 - A. The strength of Petitioner’s CANAL HOLDINGS marks, including the number and nature of similar marks in use in connection with similar services. In determining the strength of a mark, we consider both its inherent or conceptual strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899. In other words, it is similar to acquired distinctiveness. For purposes of analysis of likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted). The proper standard is the mark’s “renown within a specific product market,” id., and Cancellation No. 92062198 - 14 - “is determined from the viewpoint of consumers of like products,” id. at 1735, and not from the viewpoint of the general public. The wording “Canal Holdings” used in connection with investment, management and consultation services is an arbitrary term because it does not describe, or suggest, any quality or characteristic of those services.27 See Alberto-Culver Co. v. Helene Curtis Indus., Inc., 167 USPQ 365, 370 (TTAB 1970). The fact that a word or term may be found in a dictionary does not indicate that the word is lacking in trademark significance unless the dictionary meaning of the word is descriptive of the goods in connection with which it is used. That is, the capability of a dictionary word to function as a trademark must be determined by the simple expedient of exploring what meaning, if any, does it possess as applied to a particular product. In this regard, it must be recognized that while a word may have a meaning or descriptive significance as applied to one product, it may not have such a significance as applied to a different product. Insofar as “COMMAND” is concerned, although it may in a round about manner possess some suggestive characteristics of hair care products, it is, in essence, an arbitrary mark as applied to such goods. Id. Accordingly, Petitioner’s CANAL HOLDINGS marks when used in connection with investment, management and consultation services are inherently or conceptually strong. 27 The word “Canal” is defined “an artificial waterway for navigation, irrigation, etc.,” “a long narrow arm of the sea penetrating far inland,” “a tubular passage for food, air, etc., especially in an animal or plant; a duct,” “a channel; watercourse.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 25, 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). The definition of the word “Holdings” is discussed below. Cancellation No. 92062198 - 15 - With respect to the commercial strength of the CANAL HOLDINGS marks, Kevin Coyne testified that: 1. Petitioner has been using the marks since at least as early as March 2006;28 2. Petitioner offers its investment, management and consultation services to clients throughout the United States;29 3. Petitioner has placed “several millions of dollars in financing to a wide variety of closely-held companies”;30 4. “Petitioner has garnered substantial unsolicited referrals from existing clients for Petitioner’s Investment, Management and/or Consultation Services, or otherwise through attendance at investment conferences and word-of-mouth referrals.”;31 and 5. “All of the foregoing engagements, advertising, and publicity of Petitioner’s Investment, Management and/or Consultation Services under the CANAL HOLDINGS mark have resulted in extremely strong recognition of the CANAL HOLDINGS brand in the business finance market.”32 While Mr. Coyne’s testimony shows that Petitioner is commercially successful as corroborated by the fact that it has been rendering its services since at least 2006, it does not show that Petitioner’s marks are commercially strong. For example, in the 28 Coyne Testimony Decl. ¶13 (38 TTABVUE 808). 29 Id. at ¶24 (38 TTABVUE 810). 30 Id. at ¶27 (38 TTABVUE 810). 31 Id. at ¶30 (38 TTABVUE 811). 32 Id. at ¶31 (38 TTABVUE 811). Cancellation No. 92062198 - 16 - field of capital investment services and the management of those funds, “several millions of dollars,” while important, does not appear to be so significant as to establish the renown of Petitioner’s marks. In this regard, Petitioner has not introduced any testimony or other evidence placing Petitioner’s success in context with competitors and whether competitors limit their business development to attendance at unidentified conferences and referrals from clients. Also, Mr. Coyne provides conclusory statements regarding recognition without any corroborating evidence. Accordingly, Petitioner has failed to meet its burden of proving that its CANAL HOLDINGS marks are commercially strong. Finally, Respondent, in its brief, contends that there are a large number of similar marks in use. As indicated above, Respondent did not introduce any testimony or evidence during its testimony period and, therefore, we may not consider Respondent’s unsupported assertions. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 91 USPQ2d 1409, 1415 (Fed. Cir. 2009) (reasoning that a party’s “unsworn attorney argument … is not evidence” and thus cannot rebut record evidence); Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”); cf. In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant argued that the magazines at issue deal with unrelated subject matter, the court held that “[s]tatements in a brief cannot take the place of evidence.”). Considering the record as a whole, we find that Petitioner’s CANAL HOLDINGS marks are appropriately placed in the middle of the spectrum of “very strong to very Cancellation No. 92062198 - 17 - weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d at 1734 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1059 (“The commercial strength of Petitioner’s TAO mark outweighs any conceptual weakness.”). B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation, and commercial impression. We now turn 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 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). “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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Respondent’s mark is CANAL CAPITAL in standard characters. Petitioner’s marks are CANAL HOLDINGS and CANAL HOLDINGS and design.33 Because the 33 Third Amended Petition for Cancellation ¶¶15 and 16 (29 TTABVUE 22). Cancellation No. 92062198 - 18 - design element in Petitioner’s mark arguably contains an additional point of difference with Respondent’s mark, we confine our analysis to the issue of likelihood of confusion between Respondent’s mark and CANAL HOLDINGS without a design. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with CANAL HOLDINGS and design; the word marks would be a sufficient basis for us to determine the similarity of the marks. Conversely, if there is no likelihood of confusion between Respondent’s mark and CANAL HOLDINGS, then there would be no likelihood of confusion with the mark with design elements. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The marks are similar because they share the word “Canal.” The dominant part of the marks CANAL CAPITAL and CANAL HOLDINGS is the word “Canal.” The word “Capital” in Respondent’s mark is descriptive and has been disclaimed.34 Likewise, the word “Holdings” in Petitioner’s mark is descriptive.35 It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 34 October 15, 2013 Office Action in Respondent’s registration prosecution history. The word “Capital” is defined, inter alia, as “the wealth, whether in money or property, owned or employed in business by an individual, firm, corporation, etc.,” and “pertaining to financial capital.” Synonyms for “Capital” include “principal, investment, assets, stock.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 25, 2019. 35 The word “Holdings” is defined, inter alia, as “legally owned property, especially stocks, bonds, or real estate.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 25, 2019. Cancellation No. 92062198 - 19 - 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 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 Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). 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 ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751; see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Further, the significance of the word “Canal” in the parties’ marks as the dominant element is reinforced by its position as the first word in the marks. 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. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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); In re Integrated Cancellation No. 92062198 - 20 - Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting that the dominance of BARR in the mark BARR GROUP is reinforced by its location as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Because the marks CANAL CAPITAL and CANAL HOLDINGS share the dominant word “Canal,” they are similar in appearance, sound, meaning and commercial impression. Moreover, the words “Capital” and “Holdings” have similar meanings inasmuch as both mean assets. Where, as here, “the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral differences in this case fail to distinguish the marks. Consumers familiar with Petitioner’s CANAL HOLDINGS upon encountering the mark CANAL CAPITAL may mistakenly believe that CANAL CAPITAL is a variation or new line of the CANAL HOLDINGS services with which they already know because of the word “Canal.” We find that CANAL CAPITAL is similar to CANAL HOLDINGS in terms of its appearance, sound, meaning and commercial impression.36 C. The similarity or dissimilarity and nature of the services. Respondent’s mark CANAL CAPITAL is registered for the services listed below: 36 Respondent admitted that “the CANAL CAPITAL mark has the same commercial impression as CANAL HOLDINGS.” Respondent’s Response to Petitioner’s Request for Admission No. 255 (38 TTABVUE 558). Cancellation No. 92062198 - 21 - Business advisory services, consultancy and information; Business consultation services; Business consulting services relating to the integration of the areas of business process technology, organizational learning, change management, and operational sustainability, in Class 35; and Financial advisory and consultancy services; Financial analysis and consultation; Financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes, in Class 36. “Petitioner is a private equity firm providing capital investment services; private equity fund investment services; mezzanine fund investment services; and the management of capital investment funds.”37 “Petitioner originates, evaluates, closes, and manages portfolio company investments. Portfolio companies typically will participate in the manufacturing, value-added distribution, and industrial/business services’ sectors. Investment capital is typically utilized for management/leveraged buyouts, strategic add-on acquisitions, recapitalizations, and other growth opportunities.”38 “Post-closing, Petitioner provides extensive financial, operational, and strategic guidance to all stakeholders involved in our portfolio companies.”39 Petitioner’s Investment Services include providing investment capital and strategic insight to the owners and management teams of closely-held companies. Companies seek Petitioner’s investment to finance organic growth, add-on acquisitions, recapitalizations, and ownership transitions and, accordingly, Petitioner’s Investment Services include providing consulting financial advisory and consultancy services, financial analysis and consultation and financial analysis, 37 Coyne Testimony Decl. ¶9 (38 TTABVUE 807). 38 Id. 39 Id. Cancellation No. 92062198 - 22 - including, compiling and analyzing statistics, data and other sources of information for financial purposes, such as for business valuation attendant to investment. (Emphasis added).40 Further, Petitioner assists with “the development of management teams that have the appropriate executive talent, and provides incentives to succeed.”41 Accordingly, as part of Petitioner’s Investment and Management Services, Petitioner provides services that may be described as including business advisory services, business consultation services and/or business consulting services as well as financial advisory and consultancy services; financial analysis and consultation services; and/or financial analysis services.42 (Emphasis added). Petitioner’s services “include a variety of finance and business advisory services, such as valuation and turnaround consulting for clients.”43 Specifically, Petitioner’s activities include “business advisory services especially with respect to such things as managing change (including changes in enterprise management) and operational sustainability.”44 On its website, Petitioner advertises that it is a “Strategic Financial Partner[s]” offering “active support” in “Criteria, Process, Structure, CEOs, and Portfolio.”45 In 40 Id. at ¶10. 41 Id. at ¶11 (38 TTABVUE 808). 42 Id. at ¶12 (38 TTABVUE 808). 43 Id. at ¶¶15 and 20 (38 TTABVUE 809). “Turnaround” is defined, inter alia, as “the time between the making of an investment and receiving a return.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed June 15, 2019. Thus, turnaround consulting includes evaluating a prospective investment. 44 Id. at ¶37 (38 TTABVUE 812). 45 38 TTABVUE 488-499. Cancellation No. 92062198 - 23 - this regard, Coyne Exhibit 13, includes a “Letter of Interest” which as part of the due diligence for a proposed transaction, Petitioner will “commence a full examination of Seller and its business operations.”46 See also Exhibit A, “Additional Information Requested,” which presents preliminary information and timetable for the transaction.47 Subsequently, Petitioner’s client engaged Petitioner to perform the following services: Investment Banking Services: Canal, on behalf of IDM, will perform the following (collectively, the “Investment Banking Services”): i. Develop an offer: Canal will assist the shareholders of IDM to structure a successful offer for the USDS division. ii. Conduct due diligence: Canal will develop detailed knowledge of IOS’s USDS division, its customers, key human and intellectual assets, issues which may arise from operations in Mexico, and issues related to the circumstances of the division’s parent company International Outsourcing Services, then prepare a highly targeted synopsis of the business and the investment opportunity. iii. Negotiate and close: Canal will assist in the negotiations for the purchase of IOS, advise on deal strategy and seek to bring the negotiations to a successful conclusion.48 As described above, Petitioner’s services include financial, operational, and strategic guidance to its clients. Petitioner’s operational and strategic guidance 46 Paragraph 3 (38 TTABVUE 826). 47 38 TTABVUE 828. 48 Coyne Exhibit 15 (38 TTABVUE 838). Cancellation No. 92062198 - 24 - services are related to Respondent’s Class 35 “business advisory services, consultancy and information” services. Likewise, Respondent’s Class 36 description of services – “financial advisory and consultancy services; financial analysis and consultation; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes” – is broad enough to encompass “the valuations, fairness opinions and thorough due diligence related to acquisitions, the taking of strategic equity stakes, loans, and trades and the development of bank financing and well as private placements” offered by Petitioner.49 Thus, these services overlap and are legally equivalent. D. Established, likely-to-continue channels of trade and classes of consumers. Petitioner provides its services to owners and management teams of closely-held companies.50 Because Respondent’s “business advisory services, consultancy and information,” “business consultation services,” and “financial advisory and consultancy services; financial analysis and consultation; financial analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes” have no restrictions or limitations as to their channels of trade and classes of consumers, we must presume that Respondent’s services are rendered in all the normal channels of trade and to all the classes of consumers who would use business advisor and financial services, including owners and management teams of closely- 49 Coyne Testimony Decl. ¶38 (38 TTABVUE 812). 50 Coyne Testimony Decl. ¶¶10 and 12 (38 TTABVUE 807-808). Cancellation No. 92062198 - 25 - held companies. See Viterra, 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Moreover, because we do not read limitations into the identification of services, we must presume that Respondent’s business and financial consulting services are offered in the same channels of trade and to the same classes of consumers as Petitioner’s financial, operational, and strategic guidance services. See 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 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.”).51 51 Respondent admitted that “‘capital investment services; private equity fund investment services; mezzanine fund investment services; management of capital investment funds,’ include services that travel in the same trade channels as services described in Registrant’s Registered Services.” Respondent’s Response to Petitioner’s Request for Admission No. 267 (38 TTABVUE 560); see also Respondent’s Response to Petitioner’s Request for Admission Nos. 268-269 (38 TTABVUE 561). Respondent admitted that “Registrant markets its Registered Services to the same consumers as those of ‘capital investment services; private equity fund investment services; mezzanine fund investment services; management of capital investment funds.’” Respondent’s Response to Petitioner’s Request for Admission No. 270 (38 TTABVUE 561); see also Respondent’s Response to Petitioner’s Request for Admission Nos. 271-272 (38 TTABVUE 562). Cancellation No. 92062198 - 26 - E. Conditions under which sales are made, that is, “impulse” vs. careful, sophisticated purchasing. Neither party introduced any testimony or evidence regarding how the relevant consumers make their purchasing decisions with respect to the services at issue. Nevertheless, inasmuch as the owners and management teams of closely-held companies are the relevant purchasers who will encounter the parties’ services and because of the nature of the services, it is logical that the relevant purchasers will exercise some degree of purchasing care when deciding to engage a business or financial advisor.52 However, in cases where there are similar marks, related services, and similar channels of trade and classes of consumers, even a careful, sophisticated consumer of these services may not note the differences in the marks. Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (“The alleged sophistication of golfers is outweighed by the Board’s findings of strong similarity of marks and identity of goods.”); Weiss Assocs. Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed.Cir.1990) (similarities in marks and products overshadowed sophistication of purchasers); In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). Furthermore, careful purchasers who do notice the difference in the marks will not necessarily conclude 52 We view Mr. Coyne’s testimony that clients do not exercise “particular deliberation or care” with a high degree of skepticism. Coyne Testimony Decl. ¶26 (38 TTABVUE 810) (“Although Petitioner’s th[o]rough terms [are] set forth in a written agreement, potential clients generally purchase them through identification of the provider through a company name or mark, and with reliance upon the company’s reputation symbolized by a company’s name without particular deliberation or care.”). Cancellation No. 92062198 - 27 - that there are different sources for the services, but likely will see the marks as variations of each other, pointing to a single source.53 See, e.g., Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (“What is important is not whether people will necessarily confuse the marks, but whether the marks will be likely to confuse people into believing that the goods they are purchasing emanate from the same source.”) (citations omitted). Accordingly, we find this DuPont factor to be neutral. F. Summary Because the marks are similar, the services are related and overlapping and we must presume that Respondent’s service are offered in the same channels of trade and to the same classes of consumers as Petitioner’s services, regardless of any degree of consumer care in selecting the services, we find that Respondent’s mark CANAL CAPITAL for the applied for services is likely to cause confusion with Petitioner’s previously used mark CANAL HOLDINGS for providing capital investment services, private equity fund investment services, mezzanine fund investment services, and management of capital investment funds. In light of our finding that Respondent’s mark is likely to cause confusion with Petitioner’s marks, we need not make a determination as to Petitioner’s other claims. 53 Kevin Coyne testified that Petitioner has been using “Canal” as an abbreviated reference to itself that “clients of Petitioner have come to refer to Petitioner by using ‘CANAL’ as an abbreviated reference to Petitioner.” Coyne Testimony Decl. ¶¶16, 21, 22 and 43 (38 TTABVUE 809, 810, and 813). Cancellation No. 92062198 - 28 - See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (citing Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013)).54 Decision: The Petition for Cancellation is granted on the ground of likelihood of confusion and Respondent’s registration will be cancelled in due course. 54 Nevertheless, we note that there is little, if any, evidence that supports any of the other claims. For example, in its brief, Petitioner referred to the record in its summary judgment brief to support the other claims rather than any evidence in the trial record. Respondent’s Brief, pp. 25, 27, 28, 29, 30, 31 (41 TTABVUE 26, 28, 29, 30, 31, 32). The Board pointed out in its May 30, 2017 order denying Petitioner’s motion for summary judgment that “[e]vidence submitted in connection with the motion for summary judgment is of record only for consideration of this motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period.” May 30, 2017 Order, p. 11 n.13 (28 TTABVUE 11). Copy with citationCopy as parenthetical citation