Global Marketing Associates, Ltd.

Trademark Trial and Appeal Board

Mar 9, 2001

No. 75416692 (T.T.A.B. Mar. 9, 2001)

03/09/01
Paper No. 15
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Global Marketing Associates, Ltd.
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Serial No. 75/416,692
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Joan Fagan Teich, Esq. of Geltner & Associates, P.C. for
Global Marketing Associates, Ltd.
Karanendra S. Chhina, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
_______
Before Hanak, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark SUPERINVESTOR, in typed form, for services
recited in the application, as amended, as “financial and
investment consultation services” in International Class
36.1
1 Serial No. 75/416,692, filed January 12, 1998. The application
is based on applicant’s allegation of a bona fide intention to
use the mark in commerce, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/416,692
2
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, as
applied to the services recited in the application, so
resembles the mark THE SUPERINVESTOR FILES, which is
registered in typed form for goods identified in the
registration as “series of financial and investment
reference books,”2 as to be likely to cause confusion, to
cause mistake, or to deceive. See Trademark Act Section
2(d).
When the refusal was made final, applicant filed a
notice of appeal, its appeal brief, and a request for
reconsideration. The Trademark Examining Attorney, upon
remand from the Board, rejected the request for
reconsideration and maintained the final refusal. With the
Board’s permission, applicant filed a supplemental appeal
brief, and the Trademark Examining Attorney then filed an
appeal brief. Applicant did not file a reply brief, nor
did applicant request an oral hearing.
After careful consideration of the evidence of record
and the arguments made by applicant and by the Trademark
Examining Attorney, we affirm the refusal to register.
2 Registration No. 2,160,280, issued on the Principal Register on
May 26, 1998.
Ser. No. 75/416,692
3
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we
keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to the issue of whether applicant’s mark
and registrant’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. Furthermore, although the marks at issue
must be considered in their entireties, it is well-settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
Ser. No. 75/416,692
4
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
We find that the dominant feature in the commercial
impression created by the cited registered mark THE
SUPERINVESTOR FILES is the word SUPERINVESTOR. Contrary to
applicant’s contention, it does not appear from the record
that SUPERINVESTOR is a “common stock phrase” in the
investment or finance field; no third-party uses or users
of the term are in evidence. We accordingly are not
persuaded that SUPERINVESTOR is a weak term which is
entitled to a relatively narrow scope of protection.
Likewise, we are not persuaded that the presence in
the registered mark of the additional words “THE” and
“FILES” suffices to distinguish applicant’s mark and the
registered mark in terms of their overall commercial
impressions. The introductory article “THE” contributes
very little, if anything, to the commercial impression of
the registered mark. “FILES” is somewhat suggestive as
applied to the “series of financial and investment
reference books” identified in the registration. In this
regard, we take judicial notice that “file,” the singular
form of “files,” is defined, inter alia, as “a collection
of papers or publications usu. arranged or classified.”
Ser. No. 75/416,692
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Webster’s Ninth New Collegiate Dictionary (1990) at 462.
As it is used in registrant’s mark, FILES is clearly less
distinctive and important than the word preceding it,
SUPERINVESTOR, which identifies and specifies which “files”
are being referred to.
In sum, we find that the dominant feature of
registrant’s mark is the word SUPERINVESTOR. That word
also comprises the entirety of applicant’s mark.3 We find
that the dissimilarities between the two marks in terms of
appearance, sound and meaning, which are caused solely by
the presence in the registered mark of the additional words
“THE” and “FILES,” are outweighed by the overriding
similarity between the overall commercial impressions of
the two marks, which results from their shared use of the
3 Applicant asserts that its promotional materials will always
use the SUPERINVESTOR mark in conjunction with the name of
applicant’s president, Mark Tier, who allegedly is a noted
authority in the field of finance and investments, and that
applicant’s affiliation with Mr. Tier will always be clearly and
explicitly advertised. These measures will be sufficient,
applicant argues, to avoid any confusion on the part of
reasonable consumers. However, neither Mr. Tier’s name nor his
affiliation with applicant’s services is reflected in the drawing
of the mark applicant seeks to register. The fact that applicant
might include those pieces of information in its marketing
materials is immaterial to our likelihood of confusion
determination in this case. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 842 (Fed. Cir. 2000); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, n.4 (Fed. Cir. 1993);
Vornado, Inc. v. Breuer Electric Mfg. Co., 156 USPQ 340 CCPA
1968); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d
1910 (TTAB 2000); National Football League v. Jasper Alliance
Corp., 16 USPQ2d 1212 (TTAB 1990).
Ser. No. 75/416,692
6
word SUPERINVESTOR. The two marks are sufficiently similar
that confusion is likely to result if they are used on or
in connection with related goods and services.
We turn next to the question of whether applicant’s
services are sufficiently commercially related to
registrant’s goods that confusion is likely to result from
use of applicant’s and registrant’s respective marks on or
in connection therewith. It is not necessary that the
respective goods and services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are
related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Applicant argues that although registrant’s books and
applicant’s consulting services both pertain to the broad
field of finance and investments, they are different and
Ser. No. 75/416,692
7
readily distinguishable in terms of their specific content,
format and purpose. According to applicant, registrant’s
books are a “home-study” guide covering specific investment
techniques, while applicant’s consulting services involve
“individual or group counseling or ‘coaching’ for clients
regarding psychological blocks or behaviors which lead to
poor financial and investment decisions.” However, our
likelihood of confusion determination must be based on the
goods and services as they are identified in applicant’s
application and in the cited registration, not on the basis
of what the actual goods and services of the parties might
be. See Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Because the alleged differences in content, format and
purpose relied on by applicant are not reflected in the
respective identifications of goods and services in the
registration and application, they are irrelevant to our
likelihood of confusion analysis.
The Trademark Examining Attorney has submitted
evidence of twenty-one third-party registrations for marks
which cover both financial and investment consulting
services, such as those identified in applicant’s
application, and books and other printed matter in the
field of finance and investment, such as those identified
Ser. No. 75/416,692
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in the cited registration. Although these registrations
are not evidence that the marks shown therein are in
commercial use, or that the public is familiar with them,
they nevertheless are probative evidence to the extent that
they suggest that such goods and services are of a type
which may emanate from a single source under a single mark.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467 (TTAB 1988). The commercial relationship
between the respective goods and services is further
evidenced by the declaration of applicant’s principal, Mark
Tier. He states that in addition to his financial and
investment consulting services, he also has been involved
in “the investment and financial publication business” for
over twenty-four years, and that he is currently writing a
book relating to this field.
In light of this evidence, we find that the services
recited in applicant’s application and the goods identified
in the cited registration are sufficiently related that
confusion is likely to result from use thereon of the marks
SUPERINVESTOR and THE SUPERINVESTOR FILES, respectively.
Applicant argues that its services and registrant’s
books are marketed in different trade channels to different
classes of purchasers. However, neither applicant’s nor
Ser. No. 75/416,692
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registrant’s identification of goods and/or services is
limited in any way as to trade channels or classes of
purchasers, and we accordingly must presume that the
respective goods and services may be marketed in all normal
trade channels and to all normal classes of purchasers.
See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Likewise, there is no evidence in the record from
which we can conclude that members of the relevant classes
of purchasers are necessarily knowledgeable, sophisticated
consumers who are careful when purchasing goods and
services involving their finances and investments. As the
Trademark Examining Attorney has noted, the respective
identifications of goods and services are broad enough to
include those which are mass-marketed via television
infomercials to the members of the general public. We
cannot conclude that the relevant purchasers are
necessarily so sophisticated or careful that they would be
immune to source confusion arising from use of these
confusingly similar marks on these closely related goods
and services.
In summary, we have considered all of the evidence of
record pertaining to the relevant du Pont evidentiary
factors, and we conclude that confusion is likely in this
case. Purchasers are likely to assume that financial and
Ser. No. 75/416,692
10
investment reference books offered under the mark THE
SUPERINVESTOR FILES originate from, are sponsored by, or
are otherwise connected to or affiliated with the financial
and investment consulting services offered under the
SUPERINVESTOR mark, and vice versa. Any doubts as to this
conclusion (we have none) must be resolved against
applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
Decision: The refusal to register is affirmed.