Cogent Investment Operations Ltd.

Trademark Trial and Appeal Board

Aug 26, 2003

No. 75719063 (T.T.A.B. Aug. 26, 2003)

Mailed 8/26/03
Paper No. 15
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cogent Investment Operations Limited
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Serial No. 75/719,063
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Martin P. Hoffman of Hoffman, Wasson & Gitler, PC for
Cogent Investment Operations Limited.
Toni Y. Hickey, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Cissel and Holtzman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 2, 1999, applicant, a company organized under
the laws of the United Kingdom with principal offices in
London, England, filed the above-referenced application
seeking registration on the Principal Register of the mark
“COGENT” in connection with “financial administration
services; investment administration services; fund
management services; information and advisory services
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/719,063
2
relating thereto,” in Class 36. Applicant asserted that it
possessed a bona fide intention to use the mark in commerce
in connection with the services and also asserted a claim
of priority based on United Kingdom application No.
2186227, filed on Jan. 14, 1999.
The Examining Attorney1 refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
“COGENT,” which is registered2 for “business consulting
services,” in Class 35 and for “financial consulting
services,” in Class 36, that confusion is likely. The
Examining Attorney reasoned that this is so because the
marks are identical and the services set forth in the
application “are highly related to” the services identified
in the cited registration. Applicant was also advised to
submit a certified copy of its United Kingdom registration.
Applicant responded to the refusal to register by
amending the recitation of services in the application to
read as follows: “financial, investment, and fund
management services provided to investment operations,
1 This application was subsequently assigned to a second
Examining Attorney.
2 Reg. No. 1,537,607, issued on the Principal Register to Cogent
Systems, Inc. on May 2, 1989. Use since June 1, 1985 was
claimed; subsequently assigned to Tele-Matic Corp.; combined
affidavit under Sections 8 and 15 of the Act accepted and
acknowledged.
Ser No. 75/719,063
3
namely, banking, settlement of transactions, custodian
management, financial accounting, company secretariat, and
administration of retail commercial products.” Applicant
argued that, as identified, its services are clearly
distinguishable from the business and financial consulting
services identified in the cited registration.
The Examining Attorney was not persuaded by
applicant’s response to withdraw the refusal to register
based on Section 2(d) of the Lanham Act, and also advised
applicant that the terms “custodian management,” “company
secretariat” and “administration of retail commercial
products” in its amended recitation of services are
unacceptable because the nature of these services is
unclear. Applicant was advised to amend the application
either to delete this wording or to properly identify these
activities. In this regard, the Examining Attorney
suggested acceptable recitations of services for both Class
35 and Class 36. The Examining Attorney maintained the
requirement for applicant to submit a certified copy of its
United Kingdom registration.
Applicant responded to the second Office Action by
amending the recitation of services to read as follows:
“financial accounting services; company secretariat
services, namely, maintaining corporate records, preparing
Ser No. 75/719,063
4
annual returns, issuing share certificates, and preparing
minutes and resolutions, all provided to investment
operations, in International Class 35; and financial,
investment, and fund management services provided to
investment operations, namely, banking, settlement of
transactions, custodian management services of financial
portfolios of others; and administration and brokerage of
retail financial commercial products, namely, stocks,
bonds, mutual funds, consumer loans and student loans, in
International Class 36.” The additional filing fee for the
additional class was included. Applicant argued that its
services provided to investment operations are readily
distinguishable from the financial consulting services set
forth in the cited registration such that there is no
likelihood of confusion. Additionally, applicant promised
to send a certified copy of its United Kingdom registration
in due course.
The Examining Attorney suspended action on this
application pending receipt of a certified copy of
applicant’s United Kingdom registration, and the refusal to
register under Section 2(d) of the Act was maintained.
Applicant did submit a certified copy of its United Kingdom
registration and urged the Examining Attorney to withdraw
the refusal based on likelihood of confusion. Applicant
Ser No. 75/719,063
5
repeated its contention that its services are distinctly
different from the services specified in the cited
registration.
In response, the Examining Attorney considered
applicant’s arguments, but maintained and made final the
refusal to register under Section 2(d) of the Act. He
noted that the marks are identical and submitted twenty
third-party registrations which list business consulting
services and accounting services in Class 35 or financial
consulting services and banking-related services in Class
36. The Examining Attorney contended that this evidence
illustrates that it is common for businesses providing
business and financial consulting services to also provide
accounting and/or banking-related services. Acknowledging
the truth of applicant’s contention that sophisticated
purchasers are frequently involved in making the types of
purchases that involve the services of applicant and the
owner of the cited registration, the Examining Attorney
noted that the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or that they are immune from source
confusion.
Ser No. 75/719,063
6
Applicant responded with yet another amendment to the
recitation of services in the application. As amended,
applicant’s services are now identified as “administration
and brokerage of retail financial commercial products,
namely, stocks, bonds, mutual funds, consumer loans, and
student loans, in International Class 36.” The services
previously claimed in Class 35 were deleted. Applicant
argued that its Class 36 services are directed at different
consumers, namely sophisticated, financially adept
investors, from the consumers of the services identified in
the cited registration, and that differences between these
services outweigh the similarities between the marks at
issue.
The Examining Attorney accepted applicant’s amendment
to the recitation of services, but maintained the final
refusal to register based on likelihood of confusion. As
additional support for the refusal, the Examining Attorney
submitted a sample of ten third-party registrations wherein
the listed services include both financial consulting
services and the administration and/or brokerage of
financial products.3 She argued that given the relationship
between these services, it is plausible that they may be
3 The three registrations which were not based on use were not
considered.
Ser No. 75/719,063
7
marketed in the same channels of trade to the same
consumers, and that, accordingly, use of the same mark in
connection with both types of services is likely to cause
confusion.
Applicant timely filed a Notice of Appeal, followed by
an appeal brief, and the Examining Attorney responded with
her brief on appeal, but applicant did not request an oral
hearing before the Board. Accordingly, we have resolved
this appeal based on the written record and the written
arguments presented in this appeal.
The issue before us is whether applicant’s mark so
resembles the cited registered mark that if applicant were
to use the mark it seeks to register in connection with the
services specified in the application, as amended,
confusion with the registered mark would be likely. We
agree with the Examining Attorney that it would, and thus
that the refusal to register is well taken.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarities
between the marks as to appearance, pronunciation, meaning
and commercial impression and the similarity of the goods
Ser No. 75/719,063
8
or services in connection with which the marks are used.
In the instant case, the marks are identical in every
respect. The commercial impression applicant’s mark
creates in connection with applicant’s administration and
brokerage of financial products is the same as that which
is engendered by the registered mark in connection with
registrant’s business consulting services and financial
consulting services.
When the marks at issue are identical, the
relationship between the goods or services of the
respective parties does not need to be as close to support
a finding of likelihood of confusion as would be the case
when differences exist between the marks. Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). In the
instant case, the use-based third-party registrations
submitted by the Examining Attorney which list both
financial brokerage services and financial consulting
services have probative value to the extent that they serve
to suggest that the listed services are of the type which
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ 2d 1783 (TTAB 1983); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988); and cases
cited therein.
Ser No. 75/719,063
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Applicant did not submit any evidence in support of
its arguments that these services are unrelated and that
the customers for each are different, so the evidence
establishing that they are closely related stands
unrebutted.
Applicant’s contentions concerning the services
actually rendered by the registrant under the registered
mark are irrelevant. It is well settled that our
determination of whether confusion is likely must be made
based on the ways the services are identified in the
application and the cited registration, respectively,
without any restrictions or limitations not reflected
therein. Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340
(TTAB 1983).
In summary, the record establishes that confusion is
likely because the marks are identical and the services set
forth in the application are related to those listed in the
cited registration. Moreover, any doubt regarding the
issue of whether confusion is likely must be resolved in
favor of the prior user and registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir., 1988). As the second comer, applicant had a duty to
choose a mark which is unlikely to cause confusion with any
other mark already in use in its field of commerce. Lone
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Star Manufacturing Co. v. Bill Beasley, Inc., 498 F.2d 906,
182 USPQ 368 (CCPA 1974). By choosing a mark which was
already in use and registered for commercially related
financial services, applicant did not meet this obligation.
DECISION: The refusal to register under Section 2(d) of
the Lanham Act is affirmed.