Capital Automotive LLC

Trademark Trial and Appeal Board

Nov 12, 2019

87573194 (T.T.A.B. Nov. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: August 15, 2019 Mailed: November 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Capital Automotive LLC
_____

Serial No. 87573194
_____

Timothy D. Pecsenye of Blank Rome LLP,
for Capital Automotive LLC.
Gaynne Zimmerman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Zervas, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Capital Automotive LLC (“Applicant”) seeks registration on the Principal Register
of the mark:

for:
Financial services provided to the aviation industry,
namely, providing the aviation industry with real estate
investment trust services, real estate investment services
Serial No. 87573194
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and financial services in the nature of money lending in
International Class 36.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration Nos.
36993342 for TAILWIND and 36993353 for TAILWIND CAPITAL (standard
character marks) for “financial services, namely, equity capital investment and
financial consultation services” in Class 36, owned by Tailwind Capital Group LLC
(“Registrant”), as a bar to registration.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration which was denied. Accordingly, Applicant and
the Examining Attorney have submitted briefs and Applicant filed a reply. After
considering all arguments and evidence filed, we affirm the refusal to register.
I. Objection
The Examining Attorney objects to the new evidence Applicant submitted with its
Appeal Brief marked as Exhibit B, which Applicant contends contains excerpts from
Registrant’s website.4 The material in Exhibit B was not previously made of record

1 Application Serial No. 87573194 was filed on August 17, 2017, based upon Applicant’s claim
of first use and first use in commerce of the mark in October 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a). The description of the mark statement in the application
states that the mark consists of the stylized letters “CAG” with a curved bar extending from
the “G” back across the “A” and “C” resembling a stylized airplane wing. The letters appear
above the wording “CAPITAL WITH A TAILWIND.”

2 Registration No. 3699334, issued October 20, 2009, renewed.
3 Registration No. 3699335, issued October 20, 2009, renewed. “CAPITAL” is disclaimed.
4 Applicant’s Brief in Support of Registration (Applicant’s Brief) p. 13 (9 TTABVUE 18).
Serial No. 87573194
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and the Examining Attorney has not addressed it in her brief.5 Inasmuch as the
evidentiary record in an application should be complete prior to the filing of an ex
parte appeal to the Board, the material from Registrant’s website that Applicant
submitted for the first time as Exhibit B to its Appeal Brief is untimely and will not
be considered. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018); In re Fiat Grp. Mktg. & Corp.
Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); In re Trans Cont’l Records
Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002) (materials from “various web search
engines” submitted with appeal brief not considered).
II. Likelihood of Confusion
We focus our analysis on the issue of likelihood of confusion between Applicant’s
mark and the mark TAILWIND CAPITAL in Registration No. 3699335 due to the
inclusion of the shared terms “TAILWIND” and “CAPITAL” making this mark closer
to Applicant’s mark than the TAILWIND mark in Registration No. 3699334. That is,
if confusion is likely between those marks, there is no need for us to consider the
likelihood of confusion with the other cited mark for TAILWIND; if there is no
likelihood of confusion between Applicant’s mark and Registrant’s mark TAILWIND
CAPITAL, then there would be no likelihood of confusion with Registrant’s
TAILWIND mark. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913,

The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file databases for Application Serial No. 87573194. All citations to
the TSDR database are to the downloadable PDF version of the documents.
5 Examining Attorney’s Appeal Brief (12 TTABVUE 14).
Serial No. 87573194
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1917 (TTAB 2015); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066,
1073 n.14 (TTAB 2011); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of confusion
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), 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). 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 i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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.”). We also consider the
similarity or dissimilarity of established, likely-to-continue trade channels; the
conditions under which and buyers to whom sales are made, i.e., “impulse” versus
careful, sophisticated purchasing; and the nature and extent of any potential
confusion. Any one of these factors may play a dominant role in the likelihood of
confusion analysis. DuPont, 177 USPQ at 567.
Serial No. 87573194
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We have considered all of the evidence as it pertains to the relevant DuPont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically discussed in this opinion). The other factors we treat as neutral.
A. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). The proper focus is on
the recollection of the average purchaser, who retains a general rather than specific
impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960
(TTAB 2016) (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson
Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth
Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)).
Applicant’s applied-for mark is a composite word and design mark
including the phrase “CAPITAL WITH A TAILWIND” in small print underneath the
stylized letters “CAG.” Registrant’s mark is the word mark TAILWIND CAPITAL in
standard characters.
While admitting that Applicant’s and Registrant’s marks share the distinctive
component “TAILWIND,” “[t]his is where any similarity ends,” according to
Serial No. 87573194
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Applicant.6 Applicant contends that the dominant portion of its mark is comprised of
the stylized acronym “CAG,” an abbreviation for “Capital Aviation Group, the
aviation subset of Applicant’s company,” serving to reinforce Applicant’s company
name. As such, Applicant concludes that the presence of its stylized house mark
“comprising at least 90% of the mark” more than distinguishes its mark from the
cited mark.7 Applicant further notes that “the non-dominant tagline ‘CAPITAL WITH
A TAILWIND’ appears in extraordinarily small print below the clearly dominant
“CAG.”8 Indeed, Applicant concludes that there could not be any possibility of
confusion because of the sheer dominance of the stylized term “CAG” in its mark.9
Because “CAPITAL WITH A TAILWIND” is miniscule in presentation and is a “mere
slogan,” Applicant argues it is subordinate to its unquestionably dominant house
mark, and “can in no way diminish the dominant commercial impression of “CAG.”
Additionally, Applicant contends that the literal elements of its mark feature “a total
of five (5) separate words, twenty-three (23) letters, and eight (8) distinct syllables –
most of which are entirely absent from the Cited Marks.” According to Applicant,
these visual and aural differences render Applicant’s mark and the cited mark, when
properly viewed in their entireties, easily recognizable and distinguishable from one
another, obviating any possibility of confusion between the marks.10

6 Applicant’s Appeal Brief p. 8 (9 TTABVUE 13).
7 Id. at p. 10 (9 TTABVUE 15).
8 Id. at p. 8 (9 TTABVUE 13).
9 Id. at pp. 10-11 (9 TTABVUE 15-16).
10 Id. at p. 9 (9 TTABVUE 14).
Serial No. 87573194
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Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005 , 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
It has long been recognized that the addition of extra matter such as a house mark
or trade name to one of two otherwise confusingly similar marks does not generally
avoid a likelihood of confusion between them. In re Fiesta Palms LLC, 85 USPQ2d
1360, 1364 (TTAB 2007) (citing Menendez v. Holt, 128 U.S. 514, 521 (1888)). Thus, in
general, use of a house mark does not obviate confusion. In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009) (addition of house mark VANTAGE
would be likely to convey the message that this was another product from “the
previously anonymous source of TITAN ….”).
Customers will certainly notice the additional term “CAG” and design in
Applicant’s mark , shown in a larger font than “CAPITAL WITH A
Serial No. 87573194
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TAILWIND,” and attribute significance to it. However, customers familiar with
Registrant’s TAILWIND CAPITAL mark when seeing Applicant’s mark could
reasonably assume that the “CAG” portion of Applicant’s mark simply identifies what
had previously been an anonymous source or that Applicant’s mark represents a
variation or brand extension of Registrant’s mark. The presence of Applicant’s “CAG”
house mark in Applicant’s mark identifies what would otherwise be an anonymous
source for its “CAPITAL WITH A TAILWIND” services.11 See In re Fiesta Palms LLC,
85 USPQ2d at 1360 (“[T]he only difference between the marks is the addition of
applicant’s house mark to registrant’s MVP mark;” MVP casino versus CLUB PALMS
MVP casino); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS for face and
throat lotion and MENNEN SKIN SAVER for cosmetic and toilet preparations,
namely, hand and body lotion); In re Hill-Behan Lumber Co., 201 USPQ 246 (TTAB
1978) (addition of applicant’s house mark “Hill-Behan’s” insufficient to distinguish
“Hill-Behan’s Lumber Jack” mark from registrant’s “Lumberjack” mark); In re C. F.
Hathaway Co., 190 USPQ 343, (TTAB 1976) (GOLF CLASSIC men’s hats versus
HATHAWAY GOLF CLASSIC sport shirts); In re Knight’s Home Prods., Inc., 175
USPQ 447 (TTAB 1972) (NU-LOOK laundry detergent versus KNIGHT’S NU-LOOK
on floor polish). See also In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007)

11 Applicant asserts that the lettering “CAG” in its applied-for mark is a house mark that
references Applicant’s business name “Capital Automotive Group.” Applicant’s Appeal Brief
p. 10 (9 TTABVUE 15) (“[T]he presence of Applicant’s house mark . . . more than distinguishes
Applicant’s mark from the Cited Marks,” Applicant’s Appeal Brief at p. 10 (9 TTABVUE 15);
“Applicant’s unique house mark creates a distinct commercial impression . . .” Reply Brief p.
3 (13 TTABVUE 6)).
Serial No. 87573194
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(CORAZON jewelry versus CORAZON BY CHICA jewelry); Saks & Co. v. TFM Indus.
Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (FOLIO and FOLIO BY FIRE ISLANDER);
In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS for shoes and
SPARKS BY SASSAFRAS for women’s apparel); In re Christian Dior, S.A., 225 USPQ
533 (TTAB 1985) (CACHET and LE CACHET DE DIOR); In re Dennison Mfg. Co.,
220 USPQ 1015, 1016 (TTAB 1983) (KANGAROO and KANGAROO BY
DENNISON).
A junior user, like Applicant, cannot justify its confusing use of another’s mark
simply by adding its own house mark or tradename. The exceptions to this general
rule are where (1) the marks in their entireties convey significantly different
commercial impressions, or (2) the matter common to the marks is not likely to be
perceived by purchasers as distinguishing source because it is merely descriptive or
diluted. Gen. Mills, Inc. and Gen. Mills IP Holdings II, LLC v. Fage Dairy Processing
Indus. S.A., 100 USPQ2d 1584, 1602 (TTAB 2011) (inclusion of the house mark
“Fage” did not prevent likely confusion between applicant’s TOTAL yogurt and
opposer’s TOTAL breakfast cereal) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different
commercial impressions)), Judgment Set Aside, Opinion Not Vacated by Gen. Mills,
Inc. v. Fage Luxembourg S.A.R.L., 110 USPQ2d 1679 (TTAB 2014); Citigroup Inc. v.
Capital City Bank Grp., Inc., 94 USPQ2d 1645 (TTAB 2010), aff’d, 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011) (CAPITAL CITY BANK held not likely to be confused
with CITIBANK). Neither exception applies here; as explained below, the marks in
Serial No. 87573194
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their entireties do not convey significantly different commercial impressions as
Applicant’s mark is comprised of its house mark along with “CAPITAL WITH A
TAILWIND,” a slogan that is similar to Registrant’s TAILWIND CAPITAL mark.
Additionally, the matter common to the marks is not merely descriptive or diluted
and is likely to be perceived by purchasers as distinguishing source.
The Examining Attorney argues that Applicant’s stylized mark is substantially
similar to Registrant’s standard character mark TAILWIND CAPITAL because both
marks use the distinctive wording “TAILWIND” in the context of highly related and
potentially identical financial investment and consulting services to stimulate the
identical commercial impression of a tailwind spurring along a consumer’s financial
goals and well-being.12 Additionally, the Examining Attorney asserts that although
the wording “CAPITAL WITH A TAILWIND” appears in a smaller font than the CAG
wording, it appears directly beneath the “CAG” lettering in Applicant’s mark, in all
capital letters, and in a crisp, clear font. According to the Examining Attorney, its
visual presence in the mark is unmistakable and, unlike the CAG lettering, the
phrase has a common and readily discernible meaning in connection with the
identified services.13
Applicant contends that the marks convey entirely distinct meanings. While
Applicant agrees with the Examining Attorney’s description of the term “TAILWIND”
in the cited mark as connecting the idea of a “tailwind” to the “capital investment”

12 Examining Attorney’s Appeal Brief (12 TTABVUE 4-5).
13 Id. at (12 TTABVUE 8-9).
Serial No. 87573194
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and financial nature of the Registrant’s services, it argues that the term “TAILWIND”
conveys an entirely different meaning in the context of Applicant’s services. In its
mark, Applicant asserts that the term “TAILWIND” is a highly suggestive term in
the aviation industry and to the aviation consumers to whom the applied-for services
are directed – having a meaning wholly absent from the cited mark.14
Applicant’s argument that the term “tailwind” has a particular meaning in
connection with its financial services directed to members of the aviation industry
and has an entirely different meaning in the context of Registrant’s financial services,
stops short.
As reflected in the definitions of “tailwind” submitted by the Examining Attorney,
“tailwind” has connections to both economic and aviation contexts.15 The definition of
“informal favorable economic conditions” relates to Registrant’s use of “tailwind” in
its mark as it is suggestive of results achieved through Registrant’s financial services.
Looking at Applicant’s mark, both definitions of “tailwind” are suggestive of favorable
financial results through Applicant’s financial services which are provided to those
in the aviation industry. Thus, “tailwind” as used in both Applicant’s and Registrant’s
marks result in similar connotations in the financial area.

14 Applicant’s Appeal Brief p. 9 (9 TTABVUE 14).
15 Definition of “tailwind”: n. 1. A wind blowing in the same direction as that of the course of
an aircraft, ship, or other vehicle. 2. Informal Favorable economic conditions: a company
experiencing tailwinds from increased consumer demand. From 06/21/2018, The American Heritage Dictionary of the
English Language, Copyright 2018 Houghton Mifflin Harcourt. See June 21, 2018 Final
Action at TSDR 84-85.
Serial No. 87573194
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Lastly, Applicant argues that any similarity between its mark and Registrant’s
mark is “vastly overshadowed by the entirely different sound generated from each of
the marks.”16 While Applicant’s mark and Registrant’s marks do not have the same
sound, they have a similar overall sound stemming from the inclusion in each mark
of “TAILWIND” and “CAPITAL.” The Federal Circuit has observed that it is
appropriate to examine and weigh the parts of a composite on the way to examining
the overall impression created by a mark. In re Chatam Int’l. Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1948 (Fed. Cir. 2004) (It is proper to give each term in the conflicting
marks “more or less weight depending on its effect on the overall commercial
impression.”).
Applicant cites to In re Covalinski, 113 USPQ2d 1166, 1169 (TTAB 2014),
contending in that case “the Board found that ‘the overall commercial impression of
[a]pplicant’s mark [ ] is dominated by its design features . . . and that this weighs
heavily against a conclusion that confusion is likely.’” Applicant further contends that
“[a]s . . . stated in Covalinski, and with particular relevance to the instant case,
‘[w]hile it is often true that the words in a composite word and design mark are
considered to be dominant, that is not always the case.’ Id. at 1168,” also citing In re
Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
Applicant concludes that these cases make it exceedingly clear that any additional

16 Applicant’s Appeal Brief p. 11 (9 TTABVUE 16).
Serial No. 87573194
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material, including distinct design and stylized elements, may alter a mark’s
commercial impression and thus obviate any likelihood of confusion.17
While we agree that distinct design and stylized elements may affect the
commercial impression of a mark and obviate likelihood of confusion, that is not what
we have with Applicant’s mark. In Covalinski, the mark i.e., , was
found to have graphic aspects that serve not only to draw attention to the RR letters
apart from the wording, “but also make the letters that form the ‘a-c-e’ of the word
‘RACEGIRL’ difficult to notice.” Id. at 1168. Applicant’s mark differs from the mark
in Covalinski. All of the wording in Applicant’s mark is plainly visible and not
diminished by or incorporated into the design elements of Applicant’s mark.
When comparing marks, “[t]he 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 [consumers] who encounter the marks would be
likely to assume a connection between the parties.” In re U.S. Warriors Ice Hockey
Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017) (citing Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)).
The proper focus is on the recollection of the average purchaser, who retains a general
rather than specific impression of trademarks. In re Bay State Brewing, 117 USPQ2d
at 1960 (citing Spoons Rests. v. Morrison, 23 USPQ2d at 1741.

17 Id. at p. 7 (9 TTABVUE 12).
Serial No. 87573194
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Here, the word portion of Applicant’s mark, “CAPITAL WITH A TAILWIND,” and
Registrant’s TAILWIND CAPITAL mark each contain the terms “tailwind” and
“capital” which are used in close association with each other and result in the marks
having a similar connotation. The inclusion of Applicant’s “CAG” house mark with
the phrase “CAPITAL WITH A TAILWIND” does not significantly impact the overall
commercial impression of its mark which is similar to the commercial impression of
Registrant’s TAILWIND CAPITAL mark. Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though
applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES”
disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD
marks, a similar overall commercial impression is created). In other words, potential
customers could likely assume that Applicant’s applied-for mark is a variation of
Registrant’s mark and hence indicate a common source. Accordingly, the similarity
of Applicant’s and Registrant’s marks supports a likelihood of confusion under the
first DuPont factor.
B. Similarity of the Services
Next, we turn to the DuPont factor involving the similarity of the services, keeping
in mind that determining likelihood of confusion is based on the identification of the
services as stated in the application and registration at issue, not on extrinsic
evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749). This
is so regardless of what the record may reveal as to the particular nature of the cited
Serial No. 87573194
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services, the particular channels of trade or the class of purchasers to which those
services are directed.
It is not necessary that the respective services be identical or even competitive in
order to support a finding of likelihood of confusion. Rather, it is sufficient that the
services are related in some manner or that the circumstances surrounding their
marketing are such that they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way associated with the same producer
or that there is an association or connection between the producers of the respective
services. See In re Wilson, 57 USPQ2d 1863, 1866-67 (TTAB 2001); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Int’l Tel. & Tel. Corp., 197 USPQ
910, 911 (TTAB 1978).
Applicant’s identified services are:
Financial services provided to the aviation industry,
namely, providing the aviation industry with real estate
investment trust services, real estate investment services
and financial services in the nature of money lending;
while Registrant’s identified services are:
Financial services, namely, equity capital investment and
financial consultation services.
Applicant argues it is in the business of providing customized sale-leaseback
services to the aviation industry. Through a sale-leaseback transaction, aviation
companies sell their real estate to Applicant and then lease it back. Applicant offers
its services to aviation companies as an alternative to traditional mortgage financing,
private sale of real estate, and sale of operations. Applicant argues that its services
Serial No. 87573194
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are directed exclusively to consumers in the aviation industry under this mark and
are not intended or available for ordinary individuals as a result of heavy regulation
of the securities laws that are the primary vehicle used by Applicant to provide
financing opportunities. Applicant further asserts that it must (and does) restrict the
nature, quality, and purpose of the services it offers to serve this market. Applicant
argues its services are highly specialized and do not overlap with general financial
services offered by companies like Registrant.18
Our consideration of the scope of Applicant’s services must be based on the
language used in the identification of services in its application. Extrinsic evidence
and argument, such as that set forth above, may not be used to supplement the scope
of the identification of services. Moreover, Applicant’s attempt to limit the scope of its
services by including the language, “provided to the aviation industry” in its
identification of services does not obviate a finding that the services are similar.
Registrant’s services are equity capital investment and financial consultation
services without any limitation as to the industry that such services are offered to.
As supported by the third-party website evidence, equity capital investment services
are related to real estate investment services specified in Applicant’s application:
Walton St. Capital: Walton Street Capital, L.L.C. is a
private equity real estate investment firm. . . . Affiliates of
Walton Street Capital have invested and/or committed to
invest over $9 billion of equity in more than 350 separate
transactions. , November 28,
2017 Office Action at TSDR 11.

18 Applicant’s Appeal Brief p. 12 (9 TTABVUE 17).
Serial No. 87573194
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MSD Capital: MSD Capital utilizes a multi-disciplinary
investment strategy focused on maximizing long-term
capital appreciation by making investments across the
globe in the debt and equity of public and private
companies, real estate and other asset classes.
, November 28, 2017
Office Action at TSDR 12-14.
Goldman Sachs: Direct Private Investing, Equity – Real
Estate Equity, Goldman Sachs is one of the largest real
estate equity investors globally . . . Our real estate equity
funds have invested through a global network of
relationships. . . . Other advantages include: . . . Capital
markets expertise across Goldman Sachs. . . . provides
global underwriting and asset management as well as a
fully integrated real estate services platform including
construction, risk management, loan servicing and
reporting expertise. , November 28, 2017
Office Action at TSDR 15-16.
Ares: Real Estate, Real Estate Debt, Our Real Estate Debt
team focuses on directly originating loans . . . . We seek to
provide flexible financing across a potential borrower’s
capital structure. . . . Private Equity, Experienced Team.
Flexible Capital. Resourceful Sponsor. Our Private Equity
Group has achieved compelling risk-adjusted investment
returns for a loyal and growing group of high profile limited
partners . . . North American and European Flexible
Capital, Our flagship funds pursue opportunistic majority
of shared-control investments in businesses with strong
franchises and attractive growth opportunities in North
America and Europe. . . . , , November 28, 2017 Office Action at
TSDR 24-25.
Capital One: REITS and Funds, Real Estate Investment
Trusts/Funds, . . . Since 2010, we’ve underwritten more
than 100 Syndicated Bank transactions totaling $40+
billion and more than 125 Fixed Income and Equity Capital
Market transactions totaling nearly $48 billion . . .
Whether you’re looking for project financing, a revolving
credit facility or term loan, or you’re considering accessing
Serial No. 87573194
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the public equity or fixed income markets, we can help by
providing seam less integration across our specialized
REIT banking platform. . . . , November 28, 2017 Office Action at TSDR 27.
Northstar: Investment Approach, Debt-Focused REITs, . .
. Often, debt-focused REITs emphasize income generation
and preservation of capital and tend to offer better
protection against declines in real estate property values
than equity-focused REITs. Equity-Focused REITs, . . .
During periods of prosperity, equity-focused REITs may
offer the opportunity for growth in investor capital when
economic conditions cause property values to rise.
, November 28, 2017 Office Action at
TSDR 26.
Capital One Securities: Overview, About Us, Investment
Banking, Capital One Securities, Inc. is a broker dealer
providing investment banking, equity research and
institutional sales. . . . Since being acquired by Capital
One® in 2005, we have participated in more than $500
billion in capital markets transactions. Our Energy and
Real Estate Investment Trusts (REIT)19 investment
banking professionals bring decades of combined industry
experience to clients across the country. , Merriam-Webster Dictionary, © 2019
Merriam-Webster, Inc.
We take judicial notice of the dictionary definitions from the online version of Merriam-
Webster. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953 n.2 (TTAB 2018).
Serial No. 87573194
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talone.com/commercial/securities/?> . . . November 28,
2017 Office Action at TSDR 28.
Argosy Real Estate Partners: Company Overview, …
Over the past 27 years, Argosy has been investing capital
on behalf of institutional investors, family offices and high
net worth individuals. Argosy currently has over $900
million in gross real estate assets and uncommitted equity
capital under management. , June 21, 2018 Final Office Action at TSDR 102.
Diversified Real Estate Capital: Expertise in strategic
repositioning, development, renovation, financing and
asset management for institutional quality real estate.
Since 2003, Diversified Real Estate Capital, LLC has
offered equity capital and expertise for commercial real
estate organizations. . . . ,
June 21, 2018 Final Office Action at TSDR 107.
This third-party evidence confirms that the same entity commonly provides the
relevant services and markets them under the same mark. For example, Goldman
Sachs offers real estate equity capital investment services as well as money lending
services under the same brand. Walton St. Capital offers equity real estate capital
investment services. Likewise, NorthStar Real Estate Income Trust offers
investment in real estate trusts as part of its equity capital investment services.
Thus, Applicant’s and Registrant’s services are related. See, e.g., In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys., 91
USPQ2d at 1268-69, 1271-72 (VANTAGE TITAN for medical MRI diagnostic
apparatus is likely to cause confusion with previously registered TITAN for medical
ultrasound device).
In view of the foregoing, we find that Applicant’s real estate investment services
are related to Registrant’s equity capital investment services. It is sufficient for a
Serial No. 87573194
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refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of goods or 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).
C. Similarity of Trade Channels
In the absence of limitations as to channels of trade in the cited Registration, the
presumption is that the services move in all channels of trade normal for such
services. See Stone Lion, 110 USPQ2d at 1161; see also Citigroup v. Capital City
Bank, 98 USPQ2d at 1261; In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In
re Melville, 18 USPQ2d at 1388.
As noted above, the Examining Attorney has introduced evidence that both
Registrant’s services and Applicant’s services are offered on the same websites under
the same service marks. That evidence supports a finding that these services are
offered in common channels of trade, weighing in favor of a finding of likelihood of
confusion under the third DuPont factor.
D. Conditions Under Which and Buyers to Whom Sales are Made, i.e.,
“Impulse” Versus Careful, Sophisticated Purchasing
Applicant contends that customers for its services are strictly companies within
the aviation industry who are seeking the highly specialized sale-lease-back services
offered by Applicant. Applicant argues that the customers of Applicant’s and
Registrant’s services are highly educated, sophisticated and knowledgeable in
matters pertaining to their business needs; not casual customers making purchasing
Serial No. 87573194
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decisions hastily, rather they are exceptionally discriminating and exercise a high
degree of care in identifying reliable services before purchasing such services. Given
the vital importance of Applicant’s services to the successful operation of its
customers’ businesses, Applicant contends its relevant customers must exercise
extraordinary care in selecting the appropriate provider of such services.20
Applicant cites In re Shipp, 4 USPQ2d 1174, 1176 (TTAB 1987) as instructive.21
A closer look at In re Shipp reveals that it is based on different facts from the facts in
this case. In Shipp, registration of the mark PURITAN for laundry and dry cleaning
services was refused by the examining attorney based on prior registrations for
PURITAN for dry cleaning machine filters and dry cleaning preparations. The Board
found that even though the marks were identical and the goods and services were
related in the sense that they were used in the dry cleaning industry, they were not
so related that they would come to the attention of the same kinds of purchasers.
Applicant’s services were provided to the general public while the goods in the cited
registrations were used by the owners of dry cleaning establishments. Therefore,
confusion as to source or origin was found not to be likely. Id. at 1176. Applicant
argues, “[h]ere, as in Shipp, Applicant’s mark and Registrant’s marks will be used in
connection with services in highly specialized and distinct fields. In light of the
sophistication and care of the relevant consumers, it would defy logic to conclude that

20 Applicant’s Appeal Brief p. 14 (9 TTABVUE 19). While Applicant also argues that
“consideration of the costs of the subject services” also weighs against a finding of confusion,
there is no evidence of the costs. Id. at p. 15 (9 TTABVUE 20).
21 Id. at p. 14 (9 TTABVUE 19).
Serial No. 87573194
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such highly sophisticated and discriminating consumers would be likely to be
confused as to the source of Applicant’s services and the services offered under the
Cited Marks.”22
While there is no evidence supporting the sophistication or care of Applicant’s and
Registrant’s customers, even assuming that their customers are sophisticated and
have some level of heightened care in their purchasing decisions, this does not
necessarily mean that they are immune to source confusion. The respective services
of Applicant and Registrant are sufficiently related such that even sophisticated
purchasers could be led to the mistaken belief that they originate from the same
source. Moreover, it is well-settled that even careful purchasers who are
knowledgeable as to the services are not necessarily knowledgeable in the field of
trademarks or immune to source confusion arising from the use of confusingly similar
marks on or in connection with those services. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re Research & Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986); In re Davey Prods., 92 USPQ2d at 1204; In
re Wilson, 57 USPQ2d at 1866. As noted by the Federal Circuit in In re Research &
Trading Corp., 230 USPQ at 50:
That the relevant class of buyers may exercise care does
not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar
goods. “Human memories even of discriminating
purchasers ... are not infallible.” Carlisle Chemical Works,
Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 1406, 168
USPQ 110, 112 (CCPA 1970). Sophistication of buyers and

22 Id. at pp. 14-15 (9 TTABVUE 19-20).
Serial No. 87573194
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purchaser care are relevant considerations, but are not
controlling on this factual record.
Even if purchasers are sophisticated and take care, they are not immune to source
confusion arising from use of these similar marks on related services.
E. Nature and Extent of Any Potential Confusion
Citing DuPont, 177 USPQ at 567, Applicant argues that the significant differences
in appearance, sound, and connotation and commercial impressions necessitate a
finding that the extent of potential confusion is de minimis noting where the scope
and extent of any potential confusion is de minimis, “there can be no support for a
refusal pursuant to Section 2(d) of the Lanham Act.”23 However, inasmuch as our
findings above are contrary to the differences espoused by Applicant, this factor is
neutral.
F. Conclusion
Inasmuch as the services identified in the application and cited registration are
related, the overall similarities in sound, appearance, connotation and commercial
impression, between Applicant’s mark and the TAILWIND CAPITAL
mark in the cited registration could cause customers to reasonably assume that
Applicant’s services provided under its mark constitute new or additional services
from the same source as the services provided under Registrant’s mark.

23 Applicant’s Appeal Brief at pp. 15-16 (9 TTABVUE 20-21).
Serial No. 87573194
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Decision: The refusal to register Applicant’s mark under § 2(d) of the
Trademark Act is affirmed.