Equis Pte. Ltd.

Trademark Trial and Appeal Board

Jul 30, 2018

No. 79187966 (T.T.A.B. Jul. 30, 2018)

Hearing: June 7, 2018 Mailed: July 30, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Equis Pte. Ltd.
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Serial No. 79187966
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Britt L. Anderson of K&L Gates LLP
for Equis Pte. Ltd.

Clare Cahill, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Mermelstein, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Equis Pte. Ltd. filed a request for extension of protection of
International Registration No. 1300089 for the mark EQUIS, in standard characters,
for “investment management relating to energy and infrastructure projects” in
International Class 36.1 The Examining Attorney refused registration under Section
2(d) of the Trademark Act on the ground that Applicant’s mark so resembles the
registered mark EQUIS in the stylized form shown below

1 Application Serial No. 79187966, filed February 26, 2016 under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a). The application also includes services in International
Classes 35 and 40 which are not at issue.
This Opinion is Not a
Precedent of the TTAB
Serial No. 79187966
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for “information services, namely, providing an interactive on-line database featuring
financial information in the field of financial investing and financial investing
management,”2 that use of Applicant’s mark in connection with Applicant’s services
is likely to cause confusion. After the refusal became final, Applicant filed a request
for reconsideration, and later an appeal. After the Examining Attorney denied the
request for reconsideration, Applicant and the Examining Attorney filed appeal briefs
and appeared at an oral hearing.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on all of the
probative evidence of record 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) (setting forth
factors to be considered); 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 services. See 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.”).
A. The Marks
The marks are virtually identical “in their entireties as to appearance, sound,

2 Registration No. 2215654, issued January 5, 1999; renewed. The registration also includes
goods and services in International Classes 9 and 38.
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connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). In fact, the marks are “at least legally
identical.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed.
Cir. 2017). That is, because Applicant seeks registration of EQUIS in standard
characters, it could display the mark in any font, including the same stylized font as
Registrant’s mark. Id. (“Symbolic does not, and cannot, dispute that the mark, I AM
in standard character form, and the registrants’ marks, I AM in standard character,
typed, or stylized form, are pronounced the same way and, at a minimum, legally
identical.”); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1910 (Fed. Cir.
2012); SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(“[T]he argument concerning a difference in type style is not viable where one party
asserts rights in no particular display. By presenting its mark merely in a typed
drawing, a difference cannot legally be asserted by that party.”).3 Obviously, the
marks would be pronounced the same. Moreover, to the extent the term conveys any
meaning, it would be the same for both marks, which are both used for
financial/investment-related services. Applicant does not dispute that the marks are
similar or legally identical, nor is there any evidence on this point. This factor weighs
heavily in favor of finding a likelihood of confusion.

3 There is no substantive difference between “standard character” and “typed” marks. In re
Viterra, 101 USPQ2d at 1909 n.2 (“until 2003, ‘standard character’ marks formerly were
known as ‘typed’ marks, but the preferred nomenclature was changed in 2003 to conform to
the Madrid Protocol … we do not see anything in the 2003 amendments that substantively
alters our interpretation of the scope of such marks”).
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B. The Goods, Channels of Trade and Classes of Consumers
The crux of this case is whether the services are related. Applicant vigorously
argues that they are not, because the types of investment management services
Applicant provides are completely different than the types of financial information
Registrant provides, and the customers for Applicant’s services are distinct from
Registrant’s customers, and sophisticated. As Applicant points out, we cannot find
Applicant’s and Registrant’s services related merely because they all fall within the
broad “financial field.”
The Examining Attorney points out, however, that we also cannot base our
decision on marketplace evidence of the actual nature of the services Applicant and
Registrant offer, but instead must determine whether confusion is likely based on the
identifications of services in the involved application and cited registration. The
Examining Attorney relies on evidence that third-parties offer services such as those
identified in the involved application and services such as those identified in the cited
registration under the same marks.
In considering the evidence and arguments, we keep in mind that because the
marks are legally identical, a lesser degree of similarity between the services is
required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent. Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001).
Here, Applicant limits its identified investment management services to the fields
of “energy and infrastructure projects.” However, this limitation is not sufficient to
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avoid confusion, because Registrant’s services are unlimited. That is, the cited
registration covers providing online information “in the field of financial investing
and financial investing management” generally, without regard to industry sectors,
or the types of investments or investors. Therefore, based on Registrant’s
identification of services, we must presume that it could provide information about
“financial investing” and “financial investing management” of any type, including
information relating to energy and infrastructure project investments. See e.g.,
i.am.symbolic, 123 USPQ2d at 1748 (“It is well established that the Board may not
read limitations into an unrestricted registration or application.”) (quoting SquirtCo,
216 USPQ at 940); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for the Board
to focus on the application and registrations rather than on real-world conditions,
because “the question of registrability of an applicant's mark must be decided on the
basis of the identification of goods set forth in the application.”) (quoting Octocom
Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990)); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006)
(unrestricted and broad identifications are presumed to encompass all goods of the
type described).
The Examining Attorney’s evidence reveals that “financial investing” and
“financial investing management” information are provided under the same marks
as “investment management.” For example, Morningstar and Edward Jones offer a
variety of financial investing and financial investing management information on the
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one hand, and investment management services on the other, under the
MORNINGSTAR and EDWARD JONES marks:

Serial No. 79187966
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Office Action of March 7, 2017 (printouts from “morningstar.com” and
“edwardjones.com”). In addition, the MORGAN STANLEY mark is used for
“investment research” and analysis, i.e. it is used for providing financial investment
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information, and is also used for “investment management.” Office Action of July 5,
2016 (printout from “morganstanley.com”). Other third-parties, including Black &
Veatch, offer energy or infrastructure-related investment management services
specifically, as well as financial investing and financial investing management
information services. Office Action of March 7, 2017 (printout from “bv.com”). Finally,
Fidelity’s website also illustrates that investment management and financial
investing and financial investing management information are offered under the
same mark, and that Registrant’s services are identified broadly enough to
encompass information relating to specific industry sectors, including energy and
infrastructure:

Serial No. 79187966
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Office Action of March 7, 2017 (printout from “fidelity.com”).4
It is not surprising that third-parties offer investment management services, and
investment products, including in the energy and infrastructure fields, together with
financial investing information using the same marks. Indeed, Applicant relies on the
Investopedia entry for “Investment Management” which makes clear that investment
management includes researching and reviewing information such as that Registrant

4 This evidence distinguishes this case from Calypso Tech. Inc. v. Calypso Capital Mgmt. LP,
100 USPQ2d 1213 (TTAB 2011). In that case, “[t]here [was] simply no evidence of record that
shows that ‘computer software for use by financial institutions for core processing and control’
and ‘equity investment management and fund services’ are ever offered by a single company.”
Id. at 1221.
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provides under its mark. For example, investment management may include “asset
classes research” and ensuring compliance with “legislative and regulatory
constraints.” Request for Reconsideration of May 2, 2017 (printout from
“investopedia.com”). Thus, those who seek investment management services in
connection with energy and infrastructure projects (Applicant’s customers) may also
need related financial information (Registrant’s services). In fact, as Applicant itself
admits, it “provides the services of … preparing financial reports and audits for
clients, all in the sectors of energy and infrastructure projects.” 9 TTABVUE 9
(Applicant’s Appeal Brief p. 8). Investors familiar with Applicant’s mark for
investment management services in the field of energy and infrastructure projects
who encounter Registrant’s services offered under a legally identical mark likely
would be confused and believe that there is a connection between the sources of the
financial information and investment management services.
Applicant stresses that this type of confusion would not arise because its investors,
i.e. the “classes of customers” for its services, are “passive” rather than “active”
investors. Even if we accept that “passive” investors would not also desire financial
investing information, and would rely entirely on Applicant for their investment
management, the problem with this argument is that Applicant’s services are not
limited to “passive” investors. Applicant’s identified services – “investment
management relating to energy and infrastructure projects” – could be provided to
both active and passive investors, and those in between. It does not matter that
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Applicant only serves passive investors when its identification of services is not so
limited. We must focus on Applicant’s identification of services
regardless of what the record may reveal as to the
particular nature of [Applicant’s services], the particular
channels of trade or the class of purchasers to which sales
of the [services] are directed. Even assuming there is no
overlap between [Applicant’s] and [Registrant’s] current
customers, the Board correctly declined to look beyond the
application and registered marks at issue. An application
with ‘no restriction on trade channels’ cannot be ‘narrowed
by testimony that the applicant’s use is, in fact, restricted
to a particular class of purchasers.

Stone Lion, 110 USPQ2d at 1162 (cleaned up) (quoting Octocom, 16 USPQ2d at 1787).
Investors in energy and infrastructure projects could seek related information
provided by Registrant, for example: “private equity transaction details for over
288,000 investments”; “private company data”; “global project and infrastructure
finance news”; “debt new issues”; and “equity new issues.” Request for
Reconsideration of May 2, 2017 (printout from Registrant’s website
“thomsonreuters.com”).
In any event, the Examining Attorney introduced evidence, excerpted above, that
the FIDELITY service mark is used for financial information services such as
Registrant provides and investment management for passive investors. Office Action
of March 7, 2017 (printout from “fidelity.com”). While Applicant may very well be
correct that most “niche investment management providers generally do not offer
general research or information services,” 9 TTABVUE 13, the record reveals that
some do, and that some “generalist financial entities” provide both Applicant’s
identified services and Registrant’s identified services under the same mark, and on
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the same websites.
While we accept the likelihood that Applicant’s actual, typical customers are
sophisticated and careful investors, and that many of Registrant’s customers are as
well, neither Applicant’s nor Registrant’s identifications of services are limited to
sophisticated or careful investors or consumers. This was essentially the situation in
Stone Lion, in which both parties were investment management companies. The
opposer’s services were identified as “financial and investment planning and
research,” “investment management services,” “capital investment consultation,”
“equity capital investment” and “venture capital services,” while the applicant’s
services were identified as “financial services, namely investment advisory services,
management of investment funds, and fund investment services.” The Court rejected
the argument that the relevant consumers are sophisticated:
Stone Lion effectively asks this court to disregard the broad
scope of services recited in its application, and to instead
rely on the parties’ current investment practices. This
would be improper because the services recited in the
application determine the scope of the post-grant benefit of
registration. “[R]egistration provides the registrant with
prima facie evidence of … the registrant's ‘exclusive right’
to use the mark on or in connection with the goods and
services specified in the certificate of registration.” U.S.
Search LLC v. U.S. Search.com Inc., 300 F.3d 517, 524 [63
USPQ2d 2013] (4th Cir. 2002) (emphasis added); see also
15 U.S.C. § 1115(a) (the registration is prima facie evidence
of the registrant’s exclusive right to use the mark “in
connection with the goods or services specified in the
registration”) …. It would make little sense for the Board
to consider only the parties’ current activities when the
intent-to-use application, not current use, determines the
scope of this post-grant benefit. Parties that choose to
recite services in their trademark application that exceed
their actual services will be held to the broader scope of the
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application. See Octocom Sys., 918 F.2d at 943 (stating that
a broad application “is not narrowed by testimony that the
applicant’s use is, in fact, restricted”) … the Board properly
considered all potential investors for the recited services,
including ordinary consumers seeking to invest in services
with no minimum investment requirement. Although the
services recited in the application also encompass
sophisticated investors, Board precedent requires the
decision to be based “on the least sophisticated potential
purchasers.”

Stone Lion, 110 USPQ2d at 1162-63 (some citations omitted). In any event, even if
we were to find that Applicant’s limitation of its services to “energy and
infrastructure projects” will necessarily result in all of Applicant’s customers being
sophisticated and careful, this factor would be outweighed by the other du Pont
factors, each of which weigh in favor of finding a likelihood of confusion.
II. Conclusion
Because the marks are legally identical, the services are related and the channels
of trade overlap, we find that there is a likelihood of confusion, even if we were to
assume that Applicant’s and Registrant’s customers are sophisticated and careful.

Decision: The Section 2(d) refusal to register Applicant’s mark for the services in
Class 36 is affirmed. The application will proceed with respect to the services in
Classes 35 and 40 only.