Infosys Limitedv.Going Ventures, LLC

Trademark Trial and Appeal Board

Mar 6, 2019

No. 91225803 (T.T.A.B. Mar. 6, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 6, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Infosys Limited
v.
Going Ventures, LLC
_____

Opposition No. 91225803

_____

Naresh Kilaru and Mark Sommers of
Finnegan Henderson Farabow Garrett & Dunner LLP for
Infosys Limited

Joseph R. Carvalko of
Law Offices of Joseph R. Carvalko for
Going Ventures, LLC
_____
Before Bergsman, Hightower and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Going Ventures, LLC (“Applicant”) seeks registration on the Principal Register of
the mark FINACULAR in standard characters (the “Application”) for:
Computer software for use in the field of personal and
business finance for accounting, project costing
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management and tax management and related user
manuals sold as a unit therewith in Int. Class 9;
Online finance and loan matching services, namely,
matching potential lenders with small businesses and
individuals needing financing; online business finance,
business loan, and business lending matching services,
namely, matching potential borrowers with potential
lenders in the field of business loans, finance and capital;
providing an online service that matches business finance
requirements with commercial lenders, namely, matching
businesses needing financing with commercial lenders;
matching consumer requests for financing and commercial
loans to lenders interested in those requests in Int. Class
35; and
Providing a website featuring technology that matches
business finance requirements with commercial lenders;
providing a website featuring technology that enables
business owners to find business financing and commercial
loans; providing a website featuring technology that
matches consumer requests for financing and commercial
loans to lenders interested in those requests; providing a
website featuring technology that enables the secure
exchange of information by users; and providing a website
featuring technology that enables personal and business
financial users to process financial tasks, namely,
accounting, project costing management, lending and tax
management in Int. Class 42.1
Infosys Limited (“Opposer”) opposes registration of the mark based on alleged
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
with two registered marks, shown below:
FINACLE in standard characters for:
Computer programs for installation of software for
conducting transactions and enquiries on transactions for
use in the field of banking, computer software for

1 Application Serial No. 86601483 was filed on April 17, 2015, based on Applicant’s allegation
of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
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conducting banking transactions and enquiries on
transactions for use in the field of banking; magnetic data
media, namely, magnetic disks and CDs featuring
computer software programs for conducting banking
business in Int. Class 9;
Printed instructional and teaching material in the field of
banking business and operations; book-bindings; books and
booklets, namely, product manuals and training manuals
for computer software in Int. Class 16;
Professional business consultancy; business information;
business inquiries; compilation of information into
computer databases; systematization of information into
computer databases in Int. Class 35;
Providing of training in the field of banking services and
software; arranging and conducting educational
conferences, seminars, and training workshops, all in the
fields of banking software and finance; practical training
demonstrations in the field of banking software in Int.
Class 41; and
Design and development of computer software; computer
programming; computer software design; maintenance of
computer software; updating of computer software;
computer system design in Int. Class 42.2
for:
Automatic vending machines and mechanisms for coin-
operated apparatus; data processing equipment and
computers; pre-recorded discs featuring data regarding
how to install software for conducting banking
transactions; adding machines; automated teller machines
(ATM); computer programs for installation of software for
conducting transactions and enquiries on transactions for
use in the field of banking, computer software for
conducting banking transactions and enquiries on
transactions for use in the field of banking, and peripherals
for computers; magnetic data media, namely, floppy disks,

2 Registration Number 4392494 issued August 27, 2013, based on alleged use in commerce
under 15 U.S.C. § 1051(a).
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magnetic disks, and CDs featuring computer software
programs for conducting banking business; optical data
media, namely, optical discs featuring computer software
programs for conducting banking business in Int. Class 9;
Printed instructional and teaching material in the field of
banking business and operations; book-bindings; books and
booklets, namely, product manuals and training manuals
for computer software in Int. Class 16;
Business management; business administration; office
functions; auditing; bookkeeping; business appraisals;
professional business consultancy; business information;
business inquiries; business investigations; compilation of
information into computer databases; systematization of
information into computer databases; supply and demand
forecasting for businesses; economic forecasting in the
nature of sales forecasting in Int. Class 35;
Financial forecasting; expense forecasting, namely,
forecasting the financial needs of companies; monetary
affairs, namely, financial management; financial analysis;
banking; home banking; financial clearing, financial
clearing-houses; credit bureau; credit card services;
issuance of credit cards; debit card services; debt collection
agencies; deposit of valuables, namely, safe deposit box
services; exchanging money; factoring agencies; financial
consultancy; financial evaluation; financial guarantees;
hire purchase financing; housing agencies; financial
information; insurance information; installment loan
financing; insurance brokerage; issuing of travelers
cheques; lease-purchase financing; loan financing;
mortgage banking; mutual fund investment; safe deposit
services; savings banks; securities brokerage; electronic
funds transfer; arranging and provision of travelers checks;
financial deposit valuations; check verification in Int. Class
36;
Installation, maintenance and repair of computer
hardware in Int. Class 37;
Telecommunications services, namely, wireless telephone
services; communications by computer terminals;
computer aided transmission of messages and images;
electronic mail; facsimile transmission; message sending;
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providing access to databases; transmission of information
via a teleprinter in Int. Class 38;
Electronic storage of data; storage services for archiving
electronic data in Int. Class 39;
Providing of training in the field of banking services and
software; arranging and conducting educational
conferences, seminars, and training workshops, all in the
fields of banking software and finance; instruction in the
field of banking software; practical training
demonstrations in the field of banking software; providing
on-line non-downloadable publications, namely, articles,
newsletters, in-house magazines, research papers, issue
papers, opinion papers, white papers, and booklets in the
field of banking and banking software; publication of texts,
other than publicity texts; translation in Int. Class 41;
Design and development of computer hardware and
software; recovery of computer data; retrieving data for
others on computer networks; data backup; computer
security service, namely, erasure of data from hard drives;
computer services, namely, analysis of computer network
operation data; computer programming; duplication of
computer programs; computer software design;
installation of computer software; maintenance of
computer software; updating of computer software;
computer system design; computer systems analysis;
computer software consultancy; conversion of data or
documents from physical to electronic media in Int. Class
42.3
In its answer, Applicant denies the salient allegations in the notice of opposition.4
The opposition is fully briefed.

3 Registration Number 4277634 issued January 22, 2013, based on Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e). The registration includes the following description: “The
mark consists of the word mark ‘FINACLE’ in black letters, next to a red square with a white
triangular shaped form. The color(s) Red, black and white is/are claimed as a feature of the
mark.”
4 The Board previously granted in part a motion to strike Opposer’s affirmative defenses,
declining to strike only what the Board deemed “not true ‘affirmative defenses’” but rather
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I. Evidentiary Record

The record includes the pleadings and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the opposed application.
Opposer introduced:
• Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer’s
pleaded registrations, 1 TTABVUE 13-26;
• Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit
testimony and accompanying exhibits of Dr. Melissa Pittaoulis, Opposer’s
survey expert, 23 TTABVUE;
• Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit
testimony and accompanying exhibits of Rajashekara Maiya, Opposer’s Head
of Finacle Product Strategy, 24 TTABVUE;
• Pursuant to Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5), Applicant’s
response to Opposer’s Interrogatory Nos. 6, 9 and 10, 25 TTABVUE;
• Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), screenshots from
the website of CELENT (celent.com), 26 TTABVUE.
Applicant submitted:
• Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit
testimony and accompanying exhibits of Carl Fusco, Applicant’s survey
expert, 29 TTABVUE 2-195;

mere “amplifications of Applicant’s denials that provide fuller notice to Opposer of the bases
for Applicant’s defense.” 7 TTABVUE 1 (footnote and citations omitted).
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• Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the affidavit
testimony of Seni Hazzan, a Partner at Applicant, 29 TTABVUE 196-209;5
• Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), online dictionary
definitions of “spectacular” and “pinnacle,” 30 TTABVUE.
II. Standing and Priority
Applicant does not contest Opposer’s standing or priority. Nonetheless, Opposer
must prove standing by showing a real interest in the outcome of the proceeding and
a reasonable basis for believing that it would suffer damage if the mark is registered.
See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded registrations, for which
Opposer has proven status and title, establish its standing. See Coach Servs. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Also, Section 2(d) priority is not in issue as to the marks and the goods covered

5 We deny Opposer’s motion to strike certain portions of Mr. Hazzan’s testimony concerning
the relatedness of the goods and services at issue as improper lay opinion testimony. “[T]he
Board generally does not strike testimony taken in accordance with the applicable rules on
the basis of substantive objections; rather, the Board considers such objections when
evaluating the probative value of the testimony at final hearing.” Bd. of Regents v. S. Ill.
Miners, LLC, 110 USPQ2d 1182, 1194 n.19 (TTAB 2014) (citations omitted). We consider Mr.
Hazzan’s testimony about the nature of the goods and services at issue and facts regarding
the relevant industries. However, we do not find probative Mr. Hazzan’s ultimate conclusory
statements as to the lack of relatedness of particular goods and services. We will weigh the
relevance and strength or weakness of the objected-to testimony, including any inherent
limitations therein. See Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d
1750, 1755 (TTAB 2013) (disregarding improper opinion testimony), aff’d mem., 565 Fed.
App’x 900 (Fed. Cir. 2014).

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by these registrations. See Top Tobacco LP v. North Atlantic Op. Co., 101 USPQ2d
1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 82 USPQ 108 (CCPA 1974)).
III. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of
confusion analysis often focuses on the similarities between the marks and the
similarities between the goods. 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.”). Opposer bears the burden of proving its
claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848.
A. The Goods and Services
“[L]ikelihood of confusion can be found ‘if the respective products [and services]
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). Our
comparison of the goods and services must be based on the identifications in the
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application and Opposer’s registrations. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Contrary to Opposer’s statement in its Reply Brief, merely establishing likely
confusion as to “only one of the products identified in the application” would not
suffice.6 Rather, a finding of likely confusion must be made with respect to at least
one item in each class of goods and services to establish likely confusion as to that
class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). This is so because a multiple class application is considered
the equivalent of multiple separate applications. See Lincoln Nat’l Corp. v. Anderson,
110 USPQ2d 1271, 1278 (TTAB 2014) (quoting G & W Labs. Inc. v. GW Pharma Ltd.,
89 USPQ2d 1571, 1573-74 (TTAB 2009)).
Opposer did not introduce evidence regarding the relatedness of specific goods and
services, but instead relies on the language in the identifications themselves as
showing sufficient relatedness on its face. In its Brief,7 Opposer focuses its
relatedness argument on the following goods and services:
Opposer’s FINACLE Registrations
(selected goods and services)
Applicant’s FINACULAR Application
(selected services)
• Computer software for
conducting banking
transactions and enquiries on
transactions for use in the field
of banking (Reg. No. 4392494
Class 9);
• Computer software for use in the
field of personal and business
finance for accounting, project
costing management and tax
management and related user
manuals sold as a unit therewith
(Class 9);

6 33 TTABVUE 9 (Opposer’s Reply Brief).
7 31 TTABVUE 32-33 (Opposer’s Brief).
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• Business management;
business administration; office
functions; auditing;
bookkeeping; business
appraisals; supply and demand
forecasting for businesses;
economic forecasting in the
nature of sales forecasting (Reg.
No. 4277634 Class 35).
• Online finance and loan matching
services, namely, matching
potential lenders with small
businesses and individuals
needing financing (Class 35)
• Providing an online service that
matches business finance
requirements with commercial
lenders, namely, matching
businesses needing financing with
commercial lenders (Class 35);
• Providing a website featuring
technology that enables personal
and business financial users to
process financial tasks, namely,
accounting, project costing
management, lending and tax
management (Class 42).

Opposer argues that because a loan is a type of banking transaction, its “computer
software for conducting banking transactions” “is clearly related to services that
match lenders with those in need of financing.”8 Similarly, Opposer posits that its
banking transaction software also should be deemed related to Applicant’s accounting
software. Opposer also contends that its “business management,” “bookkeeping,” and
“sales forecasting” are related to Applicant’s software and website for accounting, cost
management and tax management.
Applicant contends that its goods and services are unrelated to Opposer’s.
However, Applicant’s argument that Opposer’s Class 9 goods are limited to computer
programs for installation of software is inaccurate, because as reflected in the chart
above, the goods include software for conducting banking transactions. Similarly,

8 Id. at 32.
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Applicant also draws the distinction that its goods and services “do not relate to or
focus on ‘banking,’” while Opposer’s do, and “Opposer makes no reference to a
consumer-like product or service such as software for ‘accounting, project cost
management and tax management’ for personal and business finance.”9 But
Opposer’s services are not limited to banking-related services and do include services
such as “bookkeeping,” “business information,” and “professional business
consultancy.”
Without the benefit of relatedness evidence from Opposer to meet its burden of
proof, we are left to carefully consider the identified goods and services to assess
whether at least one item in each of Applicant’s three classes may be deemed
sufficiently related on its face to Opposer’s goods or services as set forth in the pleaded
registrations. The relatedness of goods and services may be apparent on the face of
the identifications without the need to resort to extrinsic evidence, but “a broad
general market category is not a generally reliable test of relatedness of products.”
Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir.
2002). Thus, the mere fact that goods and services are “in the same industry does not
of itself provide an adequate basis to find the required ‘relatedness.’” Cooper Indus.,
Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983).
We find that the identifications of goods and services establish the necessary
relatedness as to each class of goods and services in the application. First, Opposer’s
magnetic data media featuring computer software programs for conducting banking

9 32 TTABVUE 9 (Applicant’s Brief) (emphasis in original).
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business overlaps with Applicant’s Class 9 computer software in the field of business
finance for accounting and tax management. Banking business broadly includes “the
custody, loan, exchange, or issue of money, for the extension of credit, and for
facilitating the transmission of funds.”10 The field of business finance includes
banking,11 and accounting encompasses “recording and summarizing business and
financial transactions,”12 and therefore falls within the realm of banking business.
For the same reason, we also find Opposer’s same goods related to Applicant’s Class
42 service of “providing a website featuring technology that enables … business
financial users to process financial tasks, namely, …lending.” Lending is a type of
banking business and a banking transaction, so Opposer’s software for banking
business and for conducting banking transactions includes loan-related software.
Thus, we find at least these goods Applicant identified in Class 9 and these services
Applicant identified in Class 42 sufficiently related to Opposer’s goods.
Next, we find Applicant’s online lender-borrower matching in Class 35 related to
Opposer’s compilation of information into computer databases, which is unlimited as

10 From the definition of “bank” in Merriam-webster.com, accessed March 5, 2019. The Board
may take judicial notice of online dictionary definitions that exist in print format. See In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
11 We take judicial notice of one definition of “finance” as “the system that includes the
circulation of money, the granting of credit, the making of investments, and the provision of
banking facilities.” Merriam-webster.com, accessed March 5, 2019; see also 24 TTABVUE 2-
3 (Maiya Declaration – banking is part of the financial services industry).
12 We take judicial notice of the definition of “accounting” as “the system of recording and
summarizing business and financial transactions and analyzing, verifying, and reporting the
results.” Merriam-webster.com, accessed March 5, 2019. We have considered but are not
persuaded by Mr. Hazzan’s testimony that banking is “unlike” accounting. See 29 TTABVUE
199.
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to the type of information and therefore includes compiling lender and borrower
information into a database. The same analysis holds true for Applicant’s Class 42
services whereby a website features the technology for matching lenders and
borrowers, as we also find this sufficiently related to the compilation of information
into a database. Thus, we find these services in Applicant’s Classes 35 and 42
sufficiently related to Opposer’s services.
While we have noted Mr. Hazzan’s testimony regarding the goods and services
and Applicant’s intentions to use or not to use its marks on particular goods and
services, we must rely on the identifications of goods and services for our analysis.
Octocom Sys., 16 USPQ2d at 1787.
Because at least one item in each class of goods and services in the application is
related to goods and services in the pleaded registrations, this du Pont factor weighs
in favor of likely confusion.
B. Trade Channels, and Classes of Consumers
Turning to the trade channels and classes of consumers, the goods and services
discussed above and found related also would move in at least some of the same
channels of trade to the same classes of consumers. For example, both the application
and Opposer’s registrations involve some goods and services that would move in trade
channels to banks. Opposer’s registrations directly refer to banking business,
banking services and software, and banking transactions. The application’s
references to business, potential lenders, and commercial lenders make clear that
banks could be customers. In addition, Applicant’s consumers could include not only
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businesses but also individuals who might use personal finance software or make
“consumer requests for financing.” Similarly, some of Opposer’s identified goods and
services could also extend to individual consumers who might conduct their own
banking using software for banking business, or who might use the compilation of
information into computer databases. Thus, the identifications reflect overlapping
trade channels.
Evidence of record corroborates the overlap in the marketplace. Opposer
submitted testimony that actual FINACLE customers include financial institutions
ranging from large entities such as Discovery Financial Services, a leading credit-
card issuer, to large banks such as Eastern Bank, to smaller credit unions, thrift
banks and community banks, to small and medium businesses.13 Applicant has stated
that its services target “potential lenders, small businesses, and individuals needing
financing.”14 Thus, the evidence of record also shows commonality in that both
Opposer and Applicant provide goods and services to lenders and small businesses.
This factor weighs in favor of likely confusion.
C. The Strength of Opposer’s Mark
The strength of a mark under the fifth du Pont factor rests on the extent to which
“a significant portion of the relevant consuming public . . . recognizes the mark as a
source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps. v. Veuve

13 24 TTABVUE 7 (Maiya Declaration).
14 25 TTABVUE 6 (Applicant’s Interrogatory Answer No. 6).
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Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005)). This factor involves assessing the mark “‘along a spectrum from
very strong to very weak.’” Id. (internal citations omitted). A very strong mark
receives a wider latitude of legal protection in the likelihood of confusion analysis.
See Palm Bay Imps., 73 USPQ2d at 1694 (strong marks “enjoy wide latitude of legal
protection” and are “more attractive as targets for would-be copyists”). Opposer’s
mark FINACLE is a coined,15 inherently distinctive term and, thus, a conceptually
strong mark.
The commercial strength of a mark may be measured indirectly by the volume of
sales and advertising expenditures in connection with the goods and services sold
under the mark, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the goods and
services identified by the marks; and the general reputation of the goods and services.
Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014);
see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308
(Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength).
Opposer provided evidence that sales under the FINACLE marks over the last
five years exceeded $100 million.16 While that figure seems substantial, we lack
industry context for it, or even evidence of the price of Opposer’s goods and services
at issue so as to have a sense of the volume of goods or services this figure represents.

15 24 TTABVUE 4 (Maiya Declaration)
16 24 TTABVUE 4-5 (Maiya Declaration).
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Opposer relies on testimony that in the United States, Opposer’s FINACLE goods
and services support 50 million bank accounts through at least ten banks,17 but it
remains unclear whether the owners of these accounts would have any direct
exposure to the FINACLE mark. Opposer’s promotional literature and awards
suggest that banks and financial institutions are its actual customer base.18 However,
as discussed below, the relevant consumer for our consideration, based on the
identification of goods and services, includes small businesses and individual
consumers. Thus, the probative value of this evidence to show widespread recognition
of the mark by relevant consumers is limited. Opposer also introduced evidence that
since 2003, annual promotional expenditures have averaged approximately
$500,000,19 but we lack industry information to put this figure in context. FINACLE
has received some industry recognition by being awarded “Best Core Banking
Technology” in The Banker’s Innovation in Technology and Transaction Banking
Awards 2013, and won Juniper Research’s 2014 Future Mobile Awards in the mobile
banking category.20 Overall, this evidence suggests a modest degree of commercial

17 Id. at 3.
18 24 TTABVUE 10-47 (Finacle promotional materials), 49 (FINACLE recognized by awards
that “celebrate[] companies coming up with newer ways to assist financial institutions in
serving their clients quickly and efficiently.”).
19 Id.
20 Id. at 5-6, 49-50 (edgeverve.com), 58-59 (edgeverve.com); 26 TTABVUE 5-7 (celent.com).
We agree with Applicant that we should not rely on Opposer being ranked first in Celent’s
Big Leagues 2013: Core Platform Sales Ranking because it related to “sales performance in
Asia-Pacific and Western Europe.” Id. at 52-56 (edgeverve.com & celent.com),
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strength within the banking industry, but not necessarily the broader relevant
consumer base.21
Under the sixth du Pont factor, the record is devoid of evidence of third-party use
or registration of similar marks on similar goods and services, and Applicant has
admitted it is not aware of third-party marks beginning with FINAC- used in the
financial services or financial software industries.22 Thus, Opposer’s marks do not
appear to be commercially weak.
In sum, because Opposer’s mark is conceptually strong with a modest degree of
commercial strength, Opposer’s mark falls along the moderately strong side of the
spectrum from very strong to very weak.
D. Similarity of the Marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73
USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The proper comparison
inquires “not whether the marks can be distinguished when subjected to a side-by-
side comparison, but whether they are sufficiently similar in their overall commercial

21 Evidence pertaining to FINACLE on a global scale – and not specific to the United States
– cannot be relied on for this factor. See, e.g., 24 TTABVUE 3 (testimony regarding global
customer base). See Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d
1609, 1612 (TTAB 1991) (“Information concerning applicant’s foreign activities, including
foreign trademark applications and/or registrations, is not relevant to the issues in an
opposition proceeding.”); Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974)
(foreign use of mark creates no rights in mark in U.S.)
22 25 TTABVUE 7 (Applicant’s response to Interrogatory No. 10 stating it “is unaware that
any third party has used a mark beginning with the letters FINAC- in connection with
financial services or financial software.”).
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impression,” that source confusion is likely to result. Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012). In fact, “marks ‘must be considered . . . in light of the fallibility of memory’ and
‘not on the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (citation omitted).
The comparison of Opposer’s FINACLE standard-character mark to Applicant’s
FINACULAR standard-character mark involves only the wording. Opposer’s
mark includes a fairly nondescript design element consisting of a
triangle in a red square, which we do not find significant in distinguishing the marks.
Cf. In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“In particular,
common geometric shapes such as circles, squares, rectangles, triangles and ovals,
when used as backgrounds for the display of word marks, are not regarded as
trademarks for the goods to which they are applied absent evidence of distinctiveness
of the background design alone.”); Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d
1804, 1805 (TTAB 1990) (a common geometric shape, particularly one serving as a
carrier or background design element, is not usually considered distinctive).
also features wording in an unremarkable stylized font, and
Applicant’s standard-character mark could appear in the same font. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (holding that the specific
font style of a mark cannot serve as the basis to distinguish it from a mark in standard
character form).
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The shared string of letters, FINAC-, coming at the beginning of Applicant’s and
Opposer’s marks, followed immediately or shortly thereafter by the letter L, creates
a visual resemblance between them and renders them phonetically similar, an
important consideration in the analysis. See id. at 1911. The endings of the marks
differ to such an extent that the marks would not likely be mistaken for one another,
but they nonetheless could be perceived as variants of one another, coming from a
common source. Overall, these marks look and sound somewhat similar, and
consumers familiar with Opposer’s marks could perceive Applicant’s mark as a
modification or extension of Opposer’s.
The record lacks evidence that FINACLE and FINACULAR have any meaning.
And to the extent that, as Applicant argues in another context, “FINACLE and
FINACULAR both begin with the root ‘FINA,’ the same as the word ‘Finance,’” this
would suggest in both marks the same “association with financial goods or services.”23
FINACLE and FINACULAR both are coined terms, and we find the connotation and
commercial impression to be similar.
Especially bearing in mind that Opposer’s marks are inherently distinctive and
we lack any evidence of weakness, we deem Applicant’s mark sufficiently similar in
appearance, sound, connotation and commercial impression to Opposer’s marks to
weigh in favor of likely confusion.

23 32 TTABVUE 17 (Applicant’s Brief).
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E. Survey Evidence
“Survey results may act as circumstantial evidence of likelihood of confusion, if
the survey is designed and conducted using generally-accepted principles and
methodology.” ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1247
(TTAB 2015). We accept that both parties’ survey experts, Opposer’s Melissa
Pittaoulis, Ph.D., and Applicant’s Carl Fusco, qualify as experts in the conduct and
assessment of likelihood of confusion surveys.
Opposer submitted testimony about and evidence of a survey conducted by NERA
Economic Consulting, under the direction of Dr. Pittaoulis.24 According to her
testimony, she oversaw an online survey “using a variant of the ‘Squirt’ methodology,”
conducted “in accordance with accepted survey research principles such as those
listed in the Federal Judicial Center’s Manual for Complex Litigation and described
in the Reference Manual on Scientific Evidence.”25
Online participation in this survey was facilitated by a market research firm that
provides individuals who agree to take online surveys in exchange for incentives. For
this survey of 208 in the test group and 200 in the control group, the individuals
either were general consumers (consumer panel, approximately 50% of participants),
people who work in accounting, finance, banking, real estate or mortgage professions

24 23 TTABVUE.
25 Id. at 3. See SquirtCo. v. Seven-up Co., 628 F.2d 1086, 207 USPQ 897 (8th Cir. 1980);
Diamond, Shari S. 2011. “Reference Guide on Survey Research,” pp.359-423 in the Reference
Manual on Scientific Evidence, Committee on the Development of the Third Edition of the
Reference Manual on Scientific Evidence, Federal Judicial Center, National Research
Council (hereinafter “Reference Guide on Survey Research”).
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(business panel, approximately 25% of participants), or small business owners (small
business panel, approximately 25% of participants). These groups were intended to
represent Applicant’s target market, deemed the relevant population for this type of
survey.26 To qualify as survey participants, among other requirements, panelists had
to indicate that within the next 12 months, they expect to purchase (for either
personal or business use) computer software for accounting, project cost
management, tax management, or personal finance management purposes, or that
they expect to use an online finance and loan matching service, a website that
matches consumers and businesses with lenders, or a website that allows users to
process financial tasks.27
The marks at issue were presented as part of an array of brands, accompanied by
a description of their goods and services, akin to a “line-up.” Participants were
instructed to review a series of brand names and descriptions of products and services
as though they were considering purchasing them. The test group reviewed
FINACLE for some of Opposer’s goods and services, as well as some “distractor”
brands and FINACULAR for some of Applicant’s goods and services. The control
group did the same, except that Opposer’s FINACLE mark was replaced with
FACULAR for the same selection of goods and services. Survey participants were
asked if they thought any of the brands were from the same source as the first brand

26 Id. at 5-6.
27 Id. at 6.
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(FINACLE or FACULAR). Participants then were asked what makes them think
that.
Dr. Pittaoulis summarized the survey and results as follows:
Test group respondents were shown the name
FINACULAR and a description of the goods and services
for which [Applicant] applied to register that name.
Control respondents were shown the same description of
goods and services, but the name FINACULAR was
changed to FACULAR. Among the 208 test group
respondents, 52.4 percent thought that FINACULAR was
made by, associated with, or received permission from the
company that makes FINACLE. Among the 200 control
group respondents, the comparable percentage was 35.5
percent for FACULAR. Subtracting the control group
percentage from the test group percentage yields a net
confusion rate of 16.9 percent. In my professional opinion,
this result is consistent with a finding of a likelihood of
confusion.28
Applicant’s survey expert, Carl Fusco of Fusco Research & Consulting, did not
conduct his own survey, but criticizes Dr. Pittaoulis’ survey as having “serious issues
that negate the validity of the results in eight areas” described by Mr. Fusco as:
• Universe that provided the base for sample selection
• Screening questions lead to over inclusive sample
• Biases based on quota sampling and unweighted
data
• Differences in product and service descriptions
• Biases due to the choice of the name used in control
group
• Leading and confusing questions

28 Id. at 4 (¶ 9).
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• Failure to test the trademark as it appears in
marketplace
• Questions regarding the data analysis.29
Most of these criticisms do not undercut the validity or probative value of the
survey. First, with respect to the universe of survey respondents, Applicant’s
description of goods and services are broadly identified, and based on the
identification on which we must rely, we agree with Opposer that therefore, there
was “no need to screen out employees of large banks or financial institutions from the
survey sample, as Applicant contends.”30 Nothing in Applicant’s identification
renders such individuals ineligible or even unlikely to purchase the relevant goods
and services.
Second, we find the screening questions for the sample appropriate, as they
screened for prospective purchasers or users of relevant goods and services within the
next 12 months from the survey, a period of time we do not consider unduly long or
prone to overstatement of intentions.31 While Applicant points to references in the
screening questions to the purchase of computer software for other purposes such as
“photo and video management” as reflecting improper over-inclusiveness, in fact
prospective survey participants who selected only that option – or any other option

29 29 TTABVUE 4 (Fusco Declaration).
30 33 TTABVUE 4 (Opposer’s Reply Brief); see also 23 TTABVUE 17 (Pittaoulis Declaration)
(“I disagree with Mr. Fusco that such respondents should be excluded. An institutional buyer
who has an interest in the FINACULAR goods and services for their own personal use is part
of the relevant market and should be eligible for the survey.”).
31 See 23 TTABVUE 18 (Pittaoulis Declaration).
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not relevant to the goods and services at issue in this case – were not included in the
survey pool.32
Third, based on the survey methodology and data quality procedures described in
Dr. Pittaoulis’ declaration testimony, which included preventing duplicative
participants, we do not find anything amiss with the quota sampling of and weight
given to various categories of prospective purchasers. For example, while Mr. Fusco
contends “[t]here is no way to tell whether a respondent qualifies for overlapping sub-
segments,”33 Dr. Pittaoulis’ testimony makes clear that digital fingerprinting
technology precluded potential participants who attempted to take the survey more
than once.34 And while Mr. Fusco criticizes the lack of weighting of various categories
of prospective purchasers to match the actual makeup of the target market, he fails
to offer specifics as to the nature of the alleged error and as to what the appropriate
weighting should have been. Neither Applicant’s identification nor any evidence from
Applicant (other than the general criticism from Mr. Fusco) suggests any error in this
regard.
Fourth, Mr. Fusco suggests that merely because he considers Applicant’s and
Registrant’s goods and services so different, survey participants reporting a
“connection” must be basing that solely on the similarity of names.35 Given that

32 Id. at 6 ¶15.
33 29 TTABVUE 12 (Fusco Declaration).
34 23 TTABVUE 12 (Pittaoulis Declaration).
35 29 TTABVUE 14 (Fusco Declaration).
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survey participants viewed the marks accompanied by a description of the goods and
services, we find this criticism meritless.
Fifth, we turn to the aspersions Applicant casts on the control used in the survey,
the fictional mark FACULAR, which Mr. Fusco alleges lacked a basis in “any
scientific or objective methodology.”36 Applicant complains that while FINACLE and
FINACULAR “both begin with the root ‘FINA,’ the same as the word ‘Finance,’
suggesting an association with financial goods or services, “[t]he root ‘FAC’ is very
different from ‘FINA’ and may not engender the same association with financial goods
and services, thus suppressing potential association or confusion.”37 Other than Mr.
Fusco’s assertion about “FINA” being the same root as in “finance,” Applicant points
to no supporting evidence on this point, or on its greater relative significance in the
marks as a whole. In response to the criticism of the control, Dr. Pittaoulis quotes the
Reference Guide on Survey Research, noting that pursuant to its direction to select a
control that shares many characteristics with the mark being tested, she kept the
description of goods and services at issue, and selected a control with the same first
letter (F) and the same ending (ACULAR).38 The parties are in agreement that the
control should contain many of the same characteristics as Applicant’s mark, but
while Applicant considers the FINA letter string essential to a proper control,
Opposer counters that it is not. We agree that an optimal control mark would have

36 Id.
37 32 TTABVUE 17 (Applicant’s Brief).
38 23 TTABVUE 19 (Pittaoulis Declaration) (quoting Reference Guide on Survey Research,
p.399.)
Opposition No. 91225803

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shared the FINA component that Applicant’s and Registrant’s marks share in
common, and we take this point into consideration in weighing the survey results.
However, we also observe that the control obviously cannot share all of the
characteristics of the mark being tested, and overall, the control appears to be
reasonably in keeping with accepted survey methodology.
Sixth, as to the questions in the survey, we agree with Applicant that the
distractor brand names (INTACCT, MINT, QAPITAL, and XERO)39 also lack the
FINA lettering. However, given that the survey questions clearly left open the
possibility that a participant would respond that none of the brands displayed were
made or put out by, or had the permission of, the FINACLE brand,40 we do not agree
that these distractors necessarily enhanced the probability that participants would
find an association with FINACULAR.
As to the phrasing of the survey questions themselves, Applicant contends that
the key question (“Do you think any of these brands are made or put out by the same
company that makes or puts out the brand you saw first?”) was leading and biased
because “FINACLE is always the brand seen first” and “[t]he impression is that it
represents the ‘main’ brand in the study and that one of the subsequent brands is
probably made or put out by the same company.”41 Applicant instead argues that “the
design should have randomly changed the order of presentation, where FINACULAR

39 23 TTABVUE 9-10.
40 Id. at 10.
41 32 TTABVUE 18 (Applicant’s Brief).
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(or FACULAR in the Control cell) would be presented first and FINACLE included in
the array of other ‘distractor’ brands.”42 We fail to see how the modification suggested
by Applicant would solve the alleged problem. If we accept Applicant’s premise about
the mark appearing first, under its alternative formulation, presumably
FINACULAR or FACULAR would be viewed as the “main” brand and would give the
impression that one of the subsequent brands (potentially Opposer or a distractor) is
probably made or put out by the same company. Whether in its original formulation
or in its modified formulation, participants would have the opportunity to compare
Opposer’s and Applicant’s marks at issue among other distractor marks, and we see
no reason that the formulation and consistent use of the key question constitutes a
defect in the survey. See E. Deborah Jay, He Who Steals My Good Name: Likelihood-
Of-Confusion Surveys in TTAB Proceedings, 104 Trademark Rep. 1141 (2014)
(“Contemporary Squirt surveys often expose a respondent to the plaintiff's product in
one room and then to an array or display of competitive products (including the
defendant’s product) in another room. The survey then asks the respondent whether
any of the products in the display come from the same source as the first product the
respondent was shown.”); cf. ProMark Brands v. GFA Brands, 114 USPQ2d at 1248
(finding questions in Squirt survey to be leading because they provided only two
stimuli -- the marks at issue in the proceeding -- and no other options). We also find
no fault with the time period of at least 10 seconds required for participants to view
the various marks, goods and services to prevent participants from merely clicking

42 Id.
Opposition No. 91225803

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through the survey without actually reading the content. Applicant offers no evidence
that this time period was inadequate.43
Seventh, Applicant correctly points out that the survey only addressed the
standard-character word marks, and did not address Opposer’s mark
or common law use of FINACLE with other elements. Our consideration of the survey
therefore takes account of its scope, but given the minimal impact of the design
component of Opposer’s mark on its source-indicating significance, we still find the
survey results probative as to both Opposer’s pleaded marks.
Eighth and finally, we are not persuaded by Mr. Fusco’s asserted concerns about
the data analytics. We find that the questions he poses either are easily answered by
Dr. Pittaoulis’ testimony,44 or concern matters that Applicant could have explored
through discovery or cross-examination, such that they cannot serve as the source of
legitimate complaint at this point.45
Turning at last to the results of the survey, 16.9% of participants believed that the
FINACULAR mark is connected or affiliated with the same company that offers
goods/services under the FINACLE mark. According to Opposer, this figure is

43 Mr. Fusco’s Declaration, on which Applicant relies, merely states, “the issue is whether 10
seconds was an adequate time for the respondent to read and comprehend each name and
description completely and correctly,” without taking a position that the timeframe was
inadequate. 29 TTABVUE 16 (Fusco Declaration ¶58).
44 For example, we agree with Opposer that the Pittaoulis Declaration overall provides clarity
as to the basis for the percentages found in Table 3. See 23 TTABVUE 21 (Pittaoulis
Declaration ¶70).
45 Applicant apparently did not elect to cross-examine Dr. Pittaoulis, or to seek discovery of
the results of question 3 of the survey or “the raw data file,” the lack of which now is a source
of criticism. 29 TTABVUE 19-20 (Fusco Declaration ¶¶70-72).
Opposition No. 91225803

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comparable to levels of confusion found to be highly probative of the likelihood of
confusion in other cases. Opposer cites Miles Labs, Inc. v. Naturally Vitamin
Supplements, Inc., 1 USPQ2d 1445, 1457 (TTAB 1986) (“[S]urveys disclosing
likelihood of confusion ranging from 11%-25% have been found significant.”); Sara
Lee Corp. v. Mahmoud, Opp. No. 91162134 (TTAB Dec. 27, 2007) (non-precedential)
(survey result of 17.7% “is well within the range of percentages that have been found
in other cases to be sufficient to support a finding of likelihood of confusion”); Lon Tai
Shing Co. v. Kock + Lowy, 19 USPQ2d 1081, 1097 (S.D.N.Y. 1991) (survey result of
18% confusion is “within the range of cognizable confusion recognized in this
Circuit”).
Applicant did not address the persuasiveness of the 16.9% figure in its brief, and
Mr. Fusco did not address that point in his testimony. One commentator has noted,
“survey confusion numbers that go below 20% need to be carefully viewed against the
background of other evidence weighing for and against a conclusion of likely
confusion. Where other evidence is supportive, courts have found a likelihood of
confusion when survey results are between 10% and 20%.” 6 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 32:188 (5th ed. 2018).
We find that in the context of the other evidence, and in light of our reasonable
degree of confidence in the survey methodology, the 16.9% result weighs slightly in
favor of likely confusion. However, we note that we would reach the same outcome in
this case even without the survey evidence.
Opposition No. 91225803

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IV. Conclusion
Given the similarity of Opposer’s strong marks to Applicant’s mark, and the
relatedness of their goods and services that move in some of the same channels of
trade to the same classes of consumers, corroborated by Opposer’s survey result, we
conclude that confusion is likely.
Decision: The opposition is sustained.