First Financial Services Group, N.A.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 75169587 (T.T.A.B. Dec. 28, 1999)

Paper No. 11
EWH/MM

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28 ,99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re First Financial Services Group, N.A.
________

Serial No. 75/169,587
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John L. Gray of Emens, Kegler, Brown, Hill & Ritter, P.A.,
for First Financial Services Group, N.A.

Terria Hicks, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Hanak, Bottorff and Chapman, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

First Financial Services Group, N.A. (applicant) seeks
to register WEALTHMASTER in typed drawing form for
“financial services; namely providing asset management
strategy.” The application was filed on September 20, 1996
with a claimed first use date of September 11, 1996.
The Examining Attorney refused registration pursuant
to Section 2(d) of the Trademark Act on the basis that
Ser No. 75/169,587
2
applicant’s mark, as used in connection with applicant’s
services, is likely to cause confusion with the mark
WEALTHMASTER, previously registered in typed drawing form
for “annuity underwriting services.” Registration number
1,945,872. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.”).
Considering first the marks, they are, obviously,
identical, a fact acknowledged by applicant. (Applicant’s
brief page 3). Thus, this first duPont “factor weighs
heavily against applicant, as the two word marks are
identical.” In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (emphasis
added).
Ser No. 75/169,587
3
Turning to a consideration of the services, we note at
the outset that “even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
Because the marks are identical, we could find that
there is a likelihood of confusion even if applicant’s
services were not intrinsically related to registrant’s
services. However, in point of fact, the two sets of
services are clearly related. In this regard, we note that
the Examining Attorney has made of record copies of third-
party registrations as well as excerpts of stories
appearing in the NEXIS database showing that the same
entities offer both asset management services, on the one
hand, and, on the other hand, annuities and/or annuity
underwriting services.
Moreover, applicant itself has recognized the
relationship between its asset management strategy services
and annuity services, as demonstrated by the following
sentences taken from pages 3 and 4 of its brief: “In the
case of the appellant, its customers are individuals such
as the Examiner or myself, who would like to have advice as
to distribution of their investments. It is quite possible
Ser No. 75/169,587
4
an annuity might be one of the elements of such a program
that appellant would recommend. However, the appellant
would not underwrite the annuity.” (Original emphasis).
Thus, applicant has conceded that its asset management
strategy services could include the recommendation that the
customer purchase an annuity. While it may well be true
that applicant would not underwrite the annuity, if
applicant were to recommend registrant’s WEALTHMASTER
annuity, we believe that almost all customers would assume
that this WEALTHMASTER annuity was offered by, endorsed by
or otherwise affiliated with applicant’s WEALTHMASTER asset
management services.
Finally, at page 5 of its brief, applicant, without
any evidentiary support, argues that the channels of
commerce for its services and registrant’s services are
different and that there has been no evidence of actual
confusion. Because applicant has failed to make of record
any evidence supporting either of these contentions, we
have accorded them no weight. Moreover, with regard to the
issue of the purported lack of actual confusion, we note
that with only two years of contemporaneous use, the chance
for actual confusion to have occurred is minimal.
Moreover, proof of actual confusion is not a prerequisite
to a finding of likelihood of confusion.
Ser No. 75/169,587
5
Decision: The refusal to register is sustained.

E. W. Hanak

C. M. Bottorff

B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board