Delores J. Mosier

Trademark Trial and Appeal Board

Mar 31, 1999

EX (T.T.A.B. Mar. 31, 1999)

Paper No. 9
SIMMS/md
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Delores J. Mosier
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Serial Nos. 74/709,998 and 74/709,999
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Andrew W. Levenfeld of Andrew W. Levenfeld & Associates,
Ltd. for Delores J. Mosier.
Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney)
_______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Delores J. Mosier, applicant, has appealed from the
final refusals of the Trademark Examining Attorney to
register the mark FINANCIAL STRAIGHT TALK for “videotapes
featuring a series of educational television programs
concerning financial and business issues (pre-recorded)”1

1 Application Serial No. 74/709,998, filed August 2, 1995, based
upon use in commerce since September 1, 1988. The word
“FINANCIAL” has been disclaimed.
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and for “cable television production services in the nature
of a series of educational television programs concerning
financial and business issues.”2 The Examining Attorney has
refused registration under Section 2(d) of the Act, 15 USC
§1052(d), on the basis of Registration No. 1,792,544,
issued September 14, 1993 (Sections 8 and 15 affidavit
filed, not yet accepted), for the mark STRAIGHTTALK for
“economic report published in print periodically.” The
registration issued to The Conference Board, Inc.
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
It is applicant’s position that confusion is unlikely
because of differences in the marks and in the goods and
services. More particularly, applicant argues that the
words “straight talk” are “generic, unprotectable” words
(brief, 6) which are commonly used in everyday language and
in the financial trade. Since the only element in common
between the respective marks is the allegedly generic or
descriptive term “STRAIGHT TALK,” which is slang for
truthful information, applicant argues that the registered
mark is a weak one which should only be given a narrow
scope of protection.

2 Application Ser. No. 74/709,999, filed August 2, 1995, based
upon use in commerce since September 1, 1988. Applicant has
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With respect to the goods and services, applicant
argues that registrant’s economic reports deal with global
economic issues and are available by subscription only.
Applicant argues that the consumers of registrant’s reports
are “sophisticated, insular” readers who have a pre-
existing relationship with the publisher. According to
applicant, the readers of registrant’s reports are,
typically, employees of Fortune 500 companies. It is
applicant’s position that, in view of these circumstances,
there is little likelihood of confusion.
The Examining Attorney, on the other hand, argues that
there is no evidence of record that the registered term is
descriptive, highly suggestive or even frequently used by
others. According to the Examining Attorney, considering
that the term “FINANCIAL” has been disclaimed in
applicant’s mark, less weight should be given to that term
so that the dominant part of applicant’s mark is the words
“STRAIGHT TALK,” which are almost identical to registrant’s
mark. In other words, applicant has merely added the word
“FINANCIAL” to the registrant’s mark, according to the
Examining Attorney. The Examining Attorney also argues
that it is improper for applicant to collaterally attack
the cited registration.

disclaimed the word “FINANCIAL” apart from the mark as show.
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Concerning the goods and services, the Examining
Attorney argues that goods and services need not be
identical or directly competitive; they need only be
related in some manner, or that conditions surrounding the
marketing of the respective goods or services be such that
they could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that the goods come from the same source. Here, it is the
Examining Attorney’s position that the subject matter of
the respective goods and services is in the overlapping
fields of finance, business and economics. In fact,
relying upon a definition of “economic,” including
“pertaining to one’s personal finances,” the Examining
Attorney argues that economic reports may include financial
matters. The Examining Attorney contends that an
individual or business interested in financial, business
and economic matters may be likely to consult several
sources for information, and that applicant and registrant
may be competing for the interests of the same groups of
people. The Examining Attorney has made of record numerous
third-party registrations covering both printed
publications, on the one hand, and videotapes or the
production of television programs covering the same subject
on the other. The Examining Attorney argues, on the basis
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of this evidence, that it is common for companies to use
the same mark for both television programs (a service mark)
and for a printed publication or a taped version thereof.
Upon careful consideration of this record and the
arguments of the attorneys, we believe that confusion is
likely.
First, as the Examining Attorney contends, there is no
evidence that the registered mark “STRAIGHTTALK” is a weak
or descriptive one with respect to economic reports.
Applicant’s mark FINANCIAL STRAIGHT TALK and registrant’s
mark STRAIGHTTALK have obvious similarities in sound,
appearance and meaning, applicant’s mark only adding the
descriptive term “FINANCIAL.” Although applicant has not
submitted any evidence in support of its argument that
registrant’s mark is an inherently weak one in view of the
asserted meaning of the term “straight talk” as truthful
information, suffice it to say that, even if the registered
mark is considered somewhat suggestive of the nature of
registrant’s economic reports, it nevertheless is entitled
to some protection, and that use of a very similar
expression in connection with closely related goods or
services may be likely to cause confusion.
With respect to the goods, while printed economic
reports and videotapes featuring financial and business
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issues are obviously specifically different goods, it is
our belief that purchasers, aware of registrant’s
STRAIGHTTALK economic reports who then encounter
applicant’s FINANCIAL STRAIGHT TALK videotapes concerning
financial and business issues are likely to believe that
these goods all come from the same source or that the same
entity has sponsored or approved the goods. In this
regard, we must construe a description of goods in a cited
registration as it appears, and the description is not to
be limited by any arguments or evidence as to the actual
channels of trade of registrant’s particular goods--
published economic reports. Canadian Imperial Bank of
Commerce v. Well Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1816 (Fed. Cir. 1987). In addition to possibly being sent
out by registrant directly to members of the general
public, these economic reports could also be sent out by,
for example, banks and brokerage firms and other companies,
to their customers—-ordinary members of the general public.
These same individuals may also purchase and use videotapes
dealing with business and financial issues. An individual,
aware of the STRAIGHTTALK economic reports, who then buys
or sees a FINANCIAL STRAIGHT TALK videotape dealing with
financial and business issues may well believe that these
products are both produced by the same entity. If we had
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any doubt about this matter, that doubt must be resolved in
favor of the registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
With respect to the cable television production
services in the nature of an educational program concerning
financial and business issues, the application notes that
the mark is used on the title display screen of television
programs, and specimens evidencing such use were submitted
with the application. In its brief, applicant refers to
the services rendered under this mark as being in the
nature of educational television programs. In this regard,
the Examining Attorney has made of record some evidence, in
the form of third-party registrations, that the same source
may produce both printed publications on a particular
subject as well as television programs. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We believe
that some of the same class of purchasers exposed to
registrant’s mark used in connection with economic reports
will encounter applicant’s mark used in connection with its
financial and business programs on television. For
example, an investor or bank customer who receives
registrant’s STRAIGHTTALK economic report who then sees
applicant’s FINANCIAL STRAIGHT TALK financial and business
television program on cable TV is likely, we believe, to
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assume that the economic report and the television program
are produced or sponsored by the same company.
Decision: The refusal of registration is affirmed as
to both the Class 9 goods and the Class 41 services.
R. L. Simms
R. F. Cissel
E. W Hanak
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/709,998 and 74/709,999
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