Guild Mortgage Company

Trademark Trial and Appeal Board

Jul 28, 2017

No. 86709944 (T.T.A.B. Jul. 28, 2017)

This Opinion is not a
Precedent of the TTAB

Hearing: July 25, 2017 Mailed: July 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Guild Mortgage Company
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Serial No. 86709944
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Joel L. Incorvaia and G. Ehrich Lenz of Incorvaia & Associates,
for Guild Mortgage Company.
Verna B. Ririe, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Bergsman, Ritchie, and Greenbaum,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Guild Mortgage Company (“Applicant”) seeks registration on the Principal
Register of the mark GUILD MORTGAGE COMPANY, and design, shown below, for
“mortgage banking services, namely, origination, acquisition, servicing,
securitization and brokerage of mortgage loans,” in International Class 36:1

1 Application Serial No. 86709944 was filed on July 30, 2015, under Section 1(a) of the
Trademark Act, claiming dates of first use and first use in commerce on January 28, 2009,
and disclaiming the exclusive right to “MORTGAGE COMPANY” apart from the mark as
shown.
Serial No. 79174623
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The mark contains the following description of the mark:
The mark consists of the name Guild Mortgage Company
with three lines shooting out above the letters I and L.
Color is not claimed as a feature of the mark.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when applied to the identified services, so resembles the previously
registered mark, GUILD INVESTMENT MANAGEMENT,2 in standard character
format, for “investment advisory services,” in International Class 36, as to be likely
to cause confusion, mistake, or to deceive.
When the refusal was made final, Applicant filed this appeal, which is fully
briefed. Applicant also requested a hearing, which was presided over by this panel.
For the reasons discussed below, we affirm the refusal to register.

2 Registration No. 3657486 issued July 21, 2009, and disclaiming the exclusive right to
“INVESTMENT MANAGEMENT” apart from the mark as shown.
Serial No. 79174623
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Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont factors for which there were
arguments and evidence. The others, we consider to be neutral.
The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In comparing the marks, we are mindful that 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 so
that confusion as to the source of the services offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., No. 92-1086 (Fed. Cir. June 5, 1992).
Serial No. 79174623
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The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Because Applicant’s services are, in essence,
mortgage lending services, the average customers are home buyers, homeowners
looking to refinance their existing mortgages, and investors seeking to finance rental
properties. This universe of customers incorporates a broad scope of consumer
sophistication from first time home buyers, including those with poor credit who get
turned down, to sophisticated investors.
The mark in the cited registration is GUILD INVESTMENT MANAGMENT,
where the term “INVESTMENT MANAGEMENT” is descriptive and disclaimed.
Applicant’s mark is GUILD MORTGAGE COMPANY, and design, where the term
“MORTGAGE COMPANY” is descriptive and disclaimed. While the marks have
obvious differences in sight and sound, they also have clear similarities in commercial
impression. We consider each mark in its entirety. There is, however, nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided that our ultimate conclusion rests upon a
comparison of the marks in their entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be
unavoidable.” Id. While we note that Applicant’s mark contains a design element, we
generally give less weight to the style and design elements of a mark than to the
wording, because it is the wording that would be used by consumers to request the
Serial No. 79174623
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goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012).
Moreover, with respect to Applicant’s mark, the design is not so distinctive as to serve
to distinguish Applicant’s mark from the registered mark. We thus find the term
“GUILD” to be dominant in both marks.
Applicant argues that the shared term “GUILD” is weak in International Class
36, and thus the mark in the cited registration is entitled to a very narrow scope of
protection. To this end, Applicant argues that the term “GUILD” in the cited
registration refers to the last name of Registrant’s founder. Applicant submitted
evidence from Registrant’s website inviting consumers to “Meet the Team” and noting
that Chief Investment Officer Monty Guild founded Guild Investment Management
in 1971.3 Despite this, there is no evidence that consumers are aware of the derivation
of term “GUILD” in the mark in the cited registration. Cf. Hercules Inc. v. Nat’l Starch
and Chem. Corp., 223 USPQ 1244, 1248 (TTAB 1984) (“It has long been held that in
the absence of evidence establishing that purchasers would be aware of the term or
terms from which the marks were derived, how the marks came to be adopted is
immaterial to the issue whether confusion is likely from contemporaneous use.” [cites
omitted]); In re Burroughs Corp., 2 USPQ2d 1532 n.4 (TTAB 1986) (finding
“derivation is irrelevant” where consumers would not be aware of it).
Applicant also submitted a declaration from its counsel, G. Erich Lenz, stating
At the time I searched the TESS system for trademark registrations that
contained the word “Guild,” the TESS system indicated that there were
315 registered trademarks containing the word ‘Guild’ in some form.
Exhibits 12 through 31 are a representative example of the use of

3 Attached to Applicant’s March 23, 2016 Response to Office Action, at 32.
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trademarks containing the word “Guild” in conjunction with the sale of
a variety of different goods and services in a variety of different
industries.4

As noted, Applicant submitted 20 printouts of third-party registrations, of which
only one is in International Class 36. The Examining Attorney submitted into the
record this same registration, along with five others, for a total of six third-party
registrations, owned by five different entities, with services in International Class 36
and that contain the term “GUILD”: 5
MARK REGISTRATION NO. SERVICES
BROKERS GUILD 3658667 “. . . arranging for real
estate financing for
others; . . . ”
Independent Member
Brokers Brokers Guild
Classic Real Estate
Services, and design
3658668 “real estate brokerage
franchising services . . . ”
The Balalaika Guild, and
design
3021392 “. . . providing financial
assistance to orchestras,
musicians, conductors,
teachers, and guest
artists”
LIGHTHOUSE GUILD 4782688 “charitable fundraising . .
.”
NATIONAL COUNCIL
OF URBAN LEAGUE
GUILDS
4181195 “charitable fund raising”
ALLIED ARTS GUILD 3311944 “rental of shopping center
space for artists’ studios,
shops and restaurants”

We observe that evidence of third-party registrations is relevant to “show the
sense in which . . . a mark is used in ordinary parlance.” Juice Generation, Inc. v. GS

4 Attached to Applicant’s March 23, 2016 Response to Office Action, at 176.
5 Attached to May 2, 2016 Final Office Action, at 41-58.
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Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015), citing J.
Thomas McCarthy, 2 McCarthy on Trademark and Unfair Competition § 11:90 (4th
ed. 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). We also take judicial notice of the relevant dictionary definition of the word
“GUILD” as referring to “An association of people with similar interests or pursuits;
especially: a medieval association of merchants or craftsmen” and whose synonyms
include “institution; institute” and “consortium.”6
Taken together, this evidences that the term “GUILD” is at least somewhat
suggestive in International Class 36, at least when referring to a collective or
consortium. However, we keep in mind the similarity of Applicant’s mark in
commercial impression to the mark in the cited registration, particularly given that
the additional terms in each mark are descriptive and disclaimed. We further note
that while we do not find the mark in the cited registration to be particularly weak,
even weak marks are entitled to the presumptions of validity under Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b), and are entitled to protection against
registration of confusingly similar marks. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

6 Merriam-Webster.com. The Board may take judicial notice of dictionary definitions,
including definitions or entries from references that are the electronic equivalent of a print
reference work. See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594, (TTAB 1982) aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (dictionary
definitions); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (online dictionaries
that exist in printed format or regular fixed editions).

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Thus we find that when considered in their entireties, the similarities of the
marks, as to their commercial impressions, outweigh differences in sight and sound,
and this first du Pont factor favors finding a likelihood of confusion.
Services/Channels of Trade/Classes of Purchasers
We consider next the relatedness of the services. The cited registration identifies
“investment advisory services.” Applicant identifies “mortgage banking services,
namely, origination, acquisition, servicing, securitization and brokerage of mortgage
loans.” We look to see if the services are of a type that consumers will believe emanate
from a common source. In this regard, the Examining Attorney submitted copies of
use-based third-party registrations that include mortgage banking services, as
identified in the application on the one hand, and investment advisory services, as
identified in the cited registration, on the other hand. Furthermore, at least four of
the registrations identify very specifically the “mortgage banking services, namely,
origination, acquisition, servicing, securitization and brokerage of mortgage loans,”
as set forth by Applicant. These include ANDROSCOGGIN SMARTER BANKING
(Registration No. 4801120);7 WE HELP PEOPLE, BUSINESSES, AND OUR
COMMUNITIES. (Registration No. 4785000);8 FREEDOM BUSINESS (Registration
No. 4724919);9 and FSF (Registration No. 4917776).10

7 Owned by Androscoggin Savings Bank DBA Androscoggin Savings Bank Corporation
Maine.
8 Owned by Alpine Bancorporation, Inc.
9 Owned by Freedom Portfolio Services Corporation Texas.
10 Owned by First State Financial, Inc.
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Applicant argues that these third-party registrations are not probative for two
reasons. First, Applicant argues that they are not probative because the services
offered by Registrant in this case may be narrowly defined as “discretionary”
investment services being offered to “high net worth” individuals.11 Second, Applicant
argues that they are not probative because the referenced third-party registrations
are owned by banks and the services listed therein include not only the services
offered by Applicant and Registrant but also an array of other banking services. As
to the first argument, it is axiomatic that we must base our analysis on a review of
the identifications themselves. See 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”), citing Octocom Sys. Inc. v. Houston Comp. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). As to the second argument, there is no
evidence that the services listed in the third-party registration are over-inclusive, nor
does Applicant argue that they extend beyond the banking and financial industry
such as to render them non-probative in our analysis as to consumer perceptions of
what services would derive from a common source for purposes of this proceeding.
With regard to the channels of trade, in the absence of specific limitations in the
cited registration and the application, we must presume that Registrant’s investment
advisory services and Applicant’s mortgage banking services will travel in all normal
and usual channels of trade and methods of distribution. See Stone Lion Capital 110

11 4 TTABVUE 4.
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USPQ2d at 1161-1162; see also In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992) (because there are no limitations as to channels of trade or classes of purchasers
in either the application or the cited registration, it is presumed that the services in
the registration and the application move in all channels of trade normal for those
services, and that the services are available to all classes of purchasers for the listed
services). In this regard, we find that the same consumers may seek investment
advisory services and mortgage banking services so that both services are rendered
to the same individuals and move in the same channels of trade. Since there are no
limitations on the channels of trade in Applicant’s identification of services either, we
must make the same presumption with regard to Applicant’s services. These du Pont
factors also favor a finding of likelihood of confusion.
Degree of Consumer Care
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the services at issue in this proceeding given,
again, in particular, Applicant’s argument that Registrant caters to “high net worth”
individuals. We emphasize again that we are bound by the identifications, which are
not limited to particular investors or investment amounts. Furthermore, we must
make our determination based on the least sophisticated consumer. Stone Lion
Capital, 110 USPQ2d at 1163 (likelihood-of-confusion decision must be based “on the
least sophisticated potential purchasers”). Nevertheless, we expect that consumers
may exercise a certain degree of care in investing money, if not perhaps in seeking a
Serial No. 79174623
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mortgage loan for which they simply wish to get funded. Overall, we find this factor
to slightly weigh against finding a likelihood of confusion.
Conclusion
On balance, after considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that despite the suggestiveness of the
term “GUILD,” the marks have the same dominant term, and are substantially
similar in commercial impression, and that the services are related and overlapping
and would be expected to travel through some of the same channels of trade to some
of the same consumers. Although some of the consumers would be likely to exercise
an increased degree of care, we find, on balance, that there is a likelihood of confusion
between Applicant’s mark GUILD MORTGAGE COMPANY, and design, and the
mark in the cited registration, GUILD INVESTMENT MANAGEMENT, for the
identified services.
Decision: The refusal to register is affirmed under Section 2(d).