Fundamental Capital, LLCv.Global Select Research LLC

Trademark Trial and Appeal Board

Dec 5, 2016

No. 91221151 (T.T.A.B. Dec. 5, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Fundamental Capital, LLC
v.
Global Select Research LLC
_____

Opposition No. 91221151
to Application Serial No. 86328359
_____

Bruce D. Holloway of Law Offices of Bruce D. Holloway
for Fundamental Capital, LLC.

Norman E. Lehrer of Norman E. Lehrer PC
for Global Select Research LLC.
_____

Before Kuhlke, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Global Select Research LLC, seeks registration of the mark
FUNDAMENTAL DASHBOARD in standard characters for services identified as
“Financial investment analysis and stock research; Providing financial information
via a web site; Providing information and research in the field of finance and
financial investments; Providing information in the field of financial stock and
Opposition No. 91221151
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equity markets; Providing investors with financial information,” in International
Class 36.1
Opposer, Fundamental Capital, LLC, has opposed registration of Applicant’s
mark on the ground that as used in connection with Applicant’s services, the mark
so resembles Opposer’s registered mark FUNDAMENTAL CAPITAL for “financial
investment in the field of securities, investment consultation, investment
management, and investment of funds for others,” and for “business organizational
consultation, planning, management and consultation, and business acquisition and
merger consultation; and temporary employment agency services,” as to be likely to
cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).2 By
its answer, Applicant denied the salient allegations.
RECORD
The pleadings and, by operation of the Trademark Rules, the file of the subject
application are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.
Opposer submitted under notice of reliance (Opp. NOR) printouts from the
USPTO Trademark Status & Document Retrieval database (TSDR) consisting of

1 Application Serial No. 86328359, filed on July 3, 2014, based on an allegation of first use
and first use in commerce on March 24, 2014, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
2 Opposer’s allegations in support of a claim of false suggestion of a connection are
insufficient to support such a claim under Section 2(a) of the Trademark Act, 15 U.S.C. §
1052(a). Moreover, Opposer did not argue this claim in its brief and under such
circumstances the Board considers the claim waived.
Opposition No. 91221151
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copies of its pleaded registrations showing their current status and title.3 The
registrations are summarized as follows:
Registration No. 3111084 on the Principal Register for the
mark FUNDAMENTAL CAPITAL in standard characters
for “business organizational consultation, planning,
management and consultation, and business acquisition
and merger consultation; and temporary employment
agency services,” in International Class 35, filed on May
25, 2004, issued on July 4, 2006, section 8 and 15
combined declaration accepted and acknowledged,
renewed; and
Registration No. 4297387 on the Principal Register under
Section 2(f) based on acquired distinctiveness for the
mark FUNDAMENTAL CAPITAL in standard characters
for “financial investment in the field of securities,
investment consultation, investment management, and
investment of funds for others,” in International Class 36,
filed on February 15, 2012, issued on March 5, 2013.
In addition, Opposer submitted under notice of reliance: (1) Applicant’s
responses to Opposer’s interrogatories, including documents submitted in response
to certain interrogatories, and Applicant’s responses to Opposer’s requests for
admission;4 (2) dictionary definitions for the word “dashboard”;5 and (5) printouts
from third-party websites purportedly showing generic usage of the word
“dashboard” in the technology, business and financial services industries.6
Applicant submitted under notice of reliance (App. NOR):7 (1) excerpts of third-
party websites to show “how persons in the relevant field understand the meaning

3 Opp. NOR, 7 TTABVUE.
4 Opp. NOR, 7 TTABVUE.
5 Opp. NOR, 8 TTABVUE.
6 Opp. NOR, 9 TTABVUE.
7 Opp. NOR, 10 TTABVUE.
Opposition No. 91221151
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of the term FUNDAMENTAL”;8 (2) dictionary definitions for the word
“fundamental”; (3) third-party registrations for marks in the financial services
industry that have the word “fundamental” in the marks; and (4) the file history for
Opposer’s unpleaded Reg. No. 3077876/Application Serial No. 76594114.
Only Opposer submitted a brief on the case. See Trademark Rule 2.128(a)(1), 37
CFR § 2.128(a)(1) (“The brief of the party in the position of defendant, if filed, shall
be due not later than thirty days after the due date of the first brief.”); TBMP §
801.02(b) (2016) (“The filing of a brief on the case is optional, not mandatory, for a
party in the position of defendant.”).
STANDING/PRIORITY
Because Opposer’s pleaded registrations are of record, are valid and subsisting,
and owned by Opposer, Opposer’s standing to oppose registration of Applicant’s
mark is established and Opposer’s priority is not in issue as to the marks and
services listed in the registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
We turn to the issue of likelihood of confusion under Section 2(d).

8 Opp. NOR, 10 TTABVUE 3.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003) (listing thirteen factors). 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
(CCPA 1976). Further, “[a]lthough confusion, mistake or deception about source or
origin is the usual issue posed under Section 2(d), any confusion made likely by a
junior user’s mark is cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1429 (TTAB 1993); see also
Majestic, 65 USPQ2d at 1205 (“[M]istaken belief that [a good] is manufactured or
sponsored by the same entity ... is precisely the mistake that Section 2(d) of the
Lanham Act seeks to prevent”). For purposes of determining likelihood of confusion,
we focus on Opposer’s Registration No. 4297387 for the financial investment
services because if we do not find a likelihood of confusion with respect to those
services, then there would be no likelihood of confusion with respect to the services
in the other pleaded registration. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).

Opposition No. 91221151
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Relatedness of the Services, Channels of Trade, Classes of Consumers
We turn first to the services, channels of trade and classes of purchasers. We
must make our determinations under these factors based on the services as they are
recited in the application and registration, respectively. See Octocom Systems Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that 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 regardless of what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); and In re Elbaum, 211 USPQ 636 (TTAB
1981).
Applicant’s services are:
Financial investment analysis and stock research;
Providing financial information via a web site; Providing
information and research in the field of finance and
financial investments; Providing information in the field
of financial stock and equity markets; Providing investors
with financial information
Opposer’s services are:
financial investment in the field of securities, investment
consultation, investment management, and investment of
funds for others.
Opposer asserts that the parties’ respective services are in the field of
investment and that Applicant’s services are a subset of Opposer’s services. Opp.
Br., 11 TTABVUE 8. More specifically, Opposer argues based on the face of the
identifications of services that the parties’ services are “extremely closely related”:
Opposition No. 91221151
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Opposer performs investment services, investment
management services and investment consultation
services. Applicant’s services are internal to the process of
Opposer providing its services. It is impossible to
conceive, for example, of Opposer making investments for
its clients, managing those investments (which
necessarily implies sales and new investments over time),
and consulting with its investors and providing the
associated advice, without performing financial
investment analysis and stock research so that Opposer
can consult and advise the investors and provide the
investors with the financial and investment information
that they need to make informed investment decisions. In
fact, it is Opposer’s legal obligation under federal and
state securities [sic] to provide its investors with complete
and accurate investment information. In short,
Applicant’s services are more than closely related to
Opposer’s services. They are an essential subset of those
services.
Opp. Br., 11 TTABVUE 24.
We agree with Opposer’s characterization of the services and that Opposer’s
broadly worded identification “financial investment in the field of securities,
investment consultation, investment management, and investment of funds for
others” encompasses Applicant’s “Providing investors with financial information.”
We also agree that Opposer’s “investment consultation” is very closely related to
Applicant’s “financial investment analysis and stock research; Providing financial
information via a web site; Providing information and research in the field of
finance and financial investments; Providing information in the field of financial
stock and equity markets.” We further note, the record contains examples of third-
party registrations that include both parties’ services. See, e.g., Reg. No. 2899623
FUNDAMENTAL CHOICE for “investment advisory and management services”
and “financial analysis and research services”; Reg. No. 3648915 CHICAGO
Opposition No. 91221151
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FUNDAMENTAL INVESTMENT PARNERS, LLC for “financial services, namely,
investment management and advisory services”; Reg. No. 4354068
FUNDAMENTAL INVESTORS for “financial services, namely, financial analysis,
evaluation and consultation; investment management and advice.”9
Considering the channels of trade and classes of purchasers, because there are
no limitations as to channels of trade or classes of purchasers in either the
application or Opposer’s registration, we must presume that Applicant’s and
Opposer’s services travel through all usual trade channels for such services and are
offered to all classes of prospective purchasers for those services. See Paula Payne
Prods. Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA
1973); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Thus, to the
extent Applicant’s services are encompassed by the Registrant’s services, i.e., are
legally identical, we must presume that the purchasers and channels of trade for
such services are identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications thereof as to trade channels
and purchasers, these clothing items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers”); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908

9 App. NOR, 10 TTABVUE 44, 49, 63
Opposition No. 91221151
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(Fed. Cir. 2012) (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption
in determining likelihood of confusion). We further note an example of use of
FUNDAMENTAL INVESTORS registered for providing “financial analysis,
evaluation and consultation; investment management and advice” corroborating the
overlapping channel of trade for the subject services.10
Similarity/Dissimilarity of the Marks
We turn then to the du Pont factor of the similarities and dissimilarities between
Applicant’s mark FUNDAMENTAL DASHBOARD and Opposer’s mark
FUNDAMENTAL CAPITAL. We analyze “the marks in their entireties as to
appearance, sound, connotation and commercial impression.” Viterra, 101 USPQ2d
at 1908 quoting du Pont, 177 USPQ at 567. See also Palm Bay v. Veuve Clicquot, 73
USPQ2d at 1691. “When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Opposer argues that the common element in the marks, the word
FUNDAMENTAL, is the dominant portion of both marks because it is the first
portion and “most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). In addition, Opposer argues that the differing words of their

10 App. NOR, 10 TTABVUE 13-19.
Opposition No. 91221151
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respective marks, CAPITAL and DASHBOARD, are highly descriptive of their
financial services and “[a]s a result, and because they are not the first element in
each mark, those elements are not the dominant elements of the respective marks.”
Opp. Br., 11 TTABVUE 17-18. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985) ([T]here 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 consideration of the marks in their
entireties. … That a particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for giving less weight
to a portion of a mark …”).
We begin by noting that Opposer’s mark was registered based upon acquired
distinctiveness, which serves as a concession that the mark in its entirety is not
inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). The record clearly
establishes that the word “capital” is merely descriptive of financial services, not
only by Opposer’s effective concession registering under Section 2(f) but also by the
dictionary definition of “capital” as “wealth in the form of money or property, used
or accumulated in a business by a person, partnership or corporation…Material
wealth used or available for use in the production of more wealth.”11
Likewise “dashboard” is merely descriptive of providing financial information
based on: (1) the definitions “A graphical summary of various pieces of important

11 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000),
App., NOR 10 TTABVUE 97.
Opposition No. 91221151
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information, typically used to give an overview of a business: an executive
dashboard enables a CEO to see bank balances, …”12 and “a Web page or portal that
provides links to key information and useful tools on a website: You can see
financial reports with just one click from the dashboard”;13 and (2) Applicant’s
admission that “the word ‘DASHBOARD’ is sometimes used in a business and
financial setting to describe a graphical summary of key data and performance
metrics for business or financial data as set forth in this request.”14 In addition, the
record includes the following examples of the term “dashboard” being used
descriptively as a way to present business and financial data:
• A business intelligence dashboard is a data visualization tool that displays
the current status of metrics and key performance indicators for an
enterprise. Dashboards consolidate and arrange numbers, metrics and
sometimes performance scorecards on a single screen [and] Financial
analysis software can speed up the creation of reports and present the
data in an executive dashboard, a graphical presentation that is easier to
read and interpret than a series of spreadsheets and pivot tables;15

• A dashboard is a financial reporting tool used for quick visual comparative
analysis of key performance indicator data, often in the form of a series of
side-by-side trend diagrams. Dashboards can distill a great deal of data on
and visually summarize a wide variety of results on a single page;16 and

• Accurate and informative reporting dashboards are critical to the efficient
management of the investment operation. Investment Managers and
middle office Risk Managers have a need for a dashboard that provides

12 OXFORD DICTIONARY (2016) www.oxforddictionaries.com/us/definition/american_english,
App., NOR 8 TTABVUE 7.
13 Dictionary.com based on the RANDOM HOUSE DICTIONARY (2016), Opp. NOR, 8
TTABVUE 12.
14 Opp. NOR, 8 TTABVUE 54.
15 http://searchbusinessanalytics.techtarget.com, Opp. NOR, 9 TTABVUE 12, 21.
16 https://f2.washington.edu, Opp. NOR, 9 TTABVUE 35.
Opposition No. 91221151
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them with a holistic view of their investment operations activity, with
views of their positions and risk activity all in one easy to use tool.17

Based on this record, we find that the common element FUNDAMENTAL is the
dominant portion of each mark. We turn then to the inquiry as to whether this
common term is enough to find that the marks are confusingly similar.
As noted above, Opposer’s registration of FUNDAMENTAL CAPITAL based on
acquired distinctiveness under Section 2(f) is a concession that the entire phrase
which includes the word FUNDAMENTAL is merely descriptive. The record
includes evidence pertaining to the du Pont factor of the number and nature of
similar marks in use on similar services which addresses the potential weakness of
the common element FUNDAMENTAL in the field of financial services.
“Fundamental” is defined, inter alia, as “forming a necessary base or core of central
importance.”18 There are also excerpts from nine third-party websites in the
financial industry using the term in a trademark manner or a descriptive manner.
A few examples are set forth below:19

17 Wallstreet Suite, www.wallstreetsystems.com, Opp. NOR, 9 TTABVUE 66.
18 OXFORD DICTIONARY (2016) www.oxforddictionaries.com/us/definition/american_english,
App. NOR, 10 TTABVUE 26.
19 App. NOR, 10 TTABVUE 5-20.
Opposition No. 91221151
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In addition, Applicant submitted printouts of third-party registrations from the
Trademark Electronic Search System (TESS) that include the word
FUNDAMENTAL in the marks and are in the financial services field.20

20 App. NOR, 10 TTABVUE 42-66. The application and the registration issued under
Section 66 of the Trademark Act have little to no probative value on this issue. See Frito-
Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB
2014) (“The applications are not evidence of anything except that they were filed.”), on
appeal, No. 14-1517 (Fed. Cir.); cf. Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100
USPQ2d 1213, 1221 n.15 (TTAB 2011).
Opposition No. 91221151
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Registration No. /
Owner
Mark Services
2399367
Schaeffer’s Investment
Research, Inc.

FUNDAMENTAL
TECHNICAL
SENTIMENT
financial services, namely
providing financial
analysis, financial
research, and investment
research services
2524688
Northern Trust
Corporation
NORTHERN TRUST
FUNDAMENTALS
investment portfolio
management services
provided via the internet
2899623
Prudential Securities,
Inc.
FUNDAMENTAL
CHOICE
financial and investment
services, namely the
purchase and sale of
securities for others;
investment advisory and
management services;
portfolio management
services; financial
analysis and research
services
3286704
Research Affiliates, LLC
FUNDAMENTAL INDEX index-based portfolio of
securities and mutual
funds portfolio
management fields of
dementia care and
Alzheimer's care for
senior citizens
3506500
Wunderlich Securities,
Inc.
FUNDAMENTAL
BROKERS INTER-
DEALER
financial services,
namely, stock brokerage,
bond brokerage, security
brokerage; investment
consultation; capital
investment consultation;
funds investment
3648915
Chicago Fundamental
Investment Partners,
LLC
CHICAGO
FUNDAMENTAL
INVESTMENT
PARTNERS, LLC
financial services,
namely, investment
management and
advisory services
3658684
Twin Capital
FUNDAMENTAL TILT investment services,
namely, asset acquisition,
Opposition No. 91221151
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Management, Inc. consultation,
development and
management services
3671162
IRvalue
FUNDAMENTAL
VALUE INDICATOR
providing stock/securities
market information
3706038
Research Affiliates, LLC
FUNDAMENTAL US
LARGE COMPANY
financial services,
namely, providing
financial and investment
information services in
the nature of an index of
securities values;
compiling and managing
an index-based portfolio
of securities and mutual
funds portfolio
management
3706039
Research Affiliates, LLC
FUNDAMENTAL US
SMALL-MID COMPANY
financial services,
namely, providing
financial and investment
information services in
the nature of an index of
securities values;
compiling and managing
an index-based portfolio
of securities and mutual
funds portfolio
management
3709449
Research Affiliates, LLC
FUNDAMENTAL
LARGE COMPANY
financial service, namely,
providing financial and
investment information
services in the nature of
an index of securities
values; compiling and
managing an index-based
portfolio of securities and
mutual funds portfolio
management
3734868
Research Affiliates, LLC
THE
FUNDAMENTALINDEX
index-based portfolio of
securities and mutual
funds portfolio
management; providing
temporary use of on0line
non-downloadable
computer software for
Opposition No. 91221151
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management and
administration of index-
based portfolios of
securities and mutual
funds portfolio
management
3735100
Mandis Holdings LLC
COMBINING
FUNDAMENTAL
VALUE AND SOCIALLY
RESPONSIBLE
INVESTING
investment fund
management; investment
advisory services;
investment consultation
3956110
Centinela Capital
Partners LLC
FUNDAMENTAL
PRIVATE EQUITY
INVESTOR
business data analysis;
economic forecasting and
analysis; market analysis
40866672
American Funds
Distributors, Inc.
AMERICAN FUNDS
FUNDAMENTAL
INVESTORS
financial services,
namely, financial
analysis, evaluation and
consultation; investment
management and advice;
mutual fund investment
management and
distribution; annuity
services, namely
investment management
and distribution of
variable annuities;
fiduciary services,
namely, serving as
trustee for directed and
discretionary trust
accounts; estate planning;
and financial
administration of
employee benefit, pension
and retirement plans in
connection therewith
4086672
American Funds
Distributors, Inc.
AMERICAN FUNDS
FUNDAMENTAL
INVESTORS
Financial services,
namely, financial
analysis, evaluation and
consultation; investment
management and advice
etc.
4114048
LS Associates Daniel Sipe
FUNDAMENTAL
EQUITY
financial planning and
investment advisory
Opposition No. 91221151
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While there are no specifics regarding the extent of sales or promotional efforts
surrounding the third-party marks, third-party registrations coupled with evidence
of third-party use in the form of web pages may be sufficient to show weakness of a
mark where a considerable number of third parties use similar marks in connection
with similar goods or services. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674-1675 (Fed. Cir. 2015). See also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (cert. denied January 25,
2016). With only three examples of the manner of use of registered marks, this
record does not reveal “extensive evidence of third-party use and registrations” in
connection with various financial services. Jack Wolfskin v. New Millennium, 116
USPQ2d at 1136 (Court noted fourteen examples of use and registration).
The probative evidentiary value of the third-party registrations standing alone is
in showing the sense in which the term FUNDAMENTAL is used and understood
such that it may be suggestive or merely descriptive. Id. at 1675; Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) (third-party
registrations “may be given some weight to show the meaning of a mark in the same
and Thomas Lee DEVELOPMENT
STRATEGIES
services
4354068
American Funds
Distributors, Inc.
FUNDAMENTAL
INVESTORS
Financial services,
namely, financial
analysis, evaluation and
consultation; investment
management and advice;
etc.
Opposition No. 91221151
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way that dictionaries are used”). Here, there are eleven registrants for eighteen
registrations for marks that include the word FUNDAMENTAL(S). Combined with
examples of use the record tends to show at minimum suggestiveness of the term
FUNDAMENTAL in this field. However, only two of the registrations have a
similar construct (FUNDAMENTAL + highly descriptive term) FUNDAMENTAL
INDEX and FUNDAMENTAL INVESTORS. Two others are close in construct
FUNDAMENTAL TILT and FUNDAMENTAL CHOICE. The other third-party
registrations include more distinguishing elements and a different construction.
E.g., NORTHERN TRUST FUNDAMENTALS, CHICAGO FUNDAMENTAL
INVESTMENT PARTNERS, LLC, AMERICAN FUNDS FUNDAMENTAL
INVESTORS. As to the use of the term FUNDAMENTAL in the financial industry
and the question of the effect of such third-party use on consumer perception, this
record does not establish that the term FUNDAMENTAL is used in connection with
similar services to such an extent that customers “have been educated to
distinguish between different … marks on the basis of minute distinctions,”
Standard Brands, Inc. v. RJR Foods, Inc., 192 USPQ 383 (TTAB 1976); at least not
to the extent that a highly similar mark with legally identical services is not likely
to cause confusion. Thus, while the registration and use evidence does weigh in
favor of Applicant by narrowing the scope of protection for the term
FUNDAMENTAL in connection with financial services generally, based on this
record it does not outweigh the factors of the similarity of the marks, relatedness of
services and trade channels in this case.
Opposition No. 91221151
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The addition of other matter may serve to distinguish the marks where (1) the
marks in their entireties convey 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. General Mills Inc. v. Fage Dairy
Processing Industry S.A., 100 USPQ2d 1584, 1601, (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); Citigroup v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (CAPITAL CITY
BANK held not likely to be confused with CITIBANK)), judgment set aside on other
grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential). In this case, the
addition of the words CAPITAL and DASHBOARD do not convey such a different
commercial impression to obviate confusion nor does the record establish that
FUNDAMENTAL is so diluted to preclude confusion.
We find the marks to be similar in appearance, sound, meaning and overall
commercial impression, and this similarity in the marks outweighs the
dissimilarities. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (confusing similarity found where
the mark STONE LION CAPITAL incorporated the entirety of the registered marks
LION CAPITAL and LION, and LION was dominant part of both parties’ marks).
This factor weighs in Opposer’s favor.

Opposition No. 91221151
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Balancing the Factors
Because Applicant’s standard character mark FUNDAMENTAL DASHBOARD
is similar to Opposer’s mark FUNDAMENTAL CAPITAL, the services are legally
identical to the extent Applicant’s services are encompassed by Opposer’s services
and otherwise closely related, and the channels of trade and classes of consumers
overlap, confusion is likely between Applicant’s mark FUNDAMENTAL
DASHBOARD and Opposer’s mark FUNDAMENTAL CAPITAL for the identified
services. We acknowledge the narrower scope of protection for the word
FUNDAMENTAL in the financial industry, however, we resolve doubt as we must
against Applicant as the newcomer. Century 21 Real Estate Corp. v. Century Life of
America, 23 USPQ2d at 1701 (citing In re Hyper Shoppes (Ohio), 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.