Investec Bank Limited

Trademark Trial and Appeal Board

Mar 31, 2009

No. 78477240 (T.T.A.B. Mar. 31, 2009)

Hearing: Mailed:
January 15, 2009 March 31, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Investec Bank Limited
________

Serial No. 78477240
Serial No. 78979110
_______

Elliott C. Bankendorf and Michele S. Katz of Welsh & Katz,
Ltd. for applicant Investec Bank Limited.

Kristina Morris, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Rogers, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Rogers, Administrative Trademark Judge:

By application Serial No. 78477240 applicant initially
sought to register the mark shown below for various
financial services in two classes. The application was
based on applicant’s intent to use the mark in commerce.

This Opinion is Not a
Precedent of the TTAB
Serial Nos. 78477240 & 78979110
2
Registration, however, was refused, in view of the
prior registration of the mark INVESTECH (in typed form)
for “financial research, analysis, and consulting
services.”1 The examining attorney’s final refusal of
registration under Section 2(d) of the Trademark Act
specifically noted that the refusal did not apply to all of
the services. Applicant then filed a request to divide out
all of the services in one class (Class 35), and some of
the services in the remaining class (Class 36). The Office
approved the request and three “child” applications were
prepared, one covering the Class 35 services and the other
two each covering a Class 36 service. Nonetheless, the
examining attorney not only maintained the final refusal of
involved application no. 78477240 (the “parent”
application), but also maintained the refusal as to one of
the two “child” applications for Class 36 services,
application no. 78979110 (for “agency and brokerage
services for bonds and securities”). In its August 1, 2007
request to divide, applicant stated the agency and
brokerage “services are not included in those for which a

1 The cited registration, No. 1876895, issued January 31, 1995
and has been renewed. It includes a claim of ownership of two
prior registrations, Nos. 1275096 and 1412702, for stylized
versions of INVESTECH and INVESTRIEVE, respectively. Both of
these registrations, though current, are for different goods or
services than the cited registration; and neither has been cited
as a bar to the involved applications.
Serial Nos. 78477240 & 78979110
3
final denial has been made,” but this statement is in
error, as the examining attorney’s May 2, 2007 final
refusal did cover these services.2
Applicant filed a combined notice of appeal and
request for reconsideration in each refused application.
As fully discussed infra, applicant essentially views the
involved marks as entitled to a narrow scope of protection
and views the involved services as different, because
registrant’s services are those of a financial planner or
advisor, while applicant’s services are those of a bank.
After the requests for reconsideration were denied, the
appeals were resumed. Applicant filed separate appeal
briefs, but the examining attorney requested that the
appeals be consolidated, and the Board granted the request.
The examining attorney filed a combined brief, but
applicant filed separate reply briefs.3

2 The child application for Class 35 was not refused; nor was the
child application in Class 36 for “leasing of real estate; and
real estate services, namely, real estate brokerage”.

3 Applicant asserts in its reply brief for the refused child
application that the examining attorney filed separate briefs but
in the brief for the child application “does not make one
reference to the services covered in the child application.”
Applicant is in error. The examining attorney filed one combined
brief but issued that brief under separate cover pages, one for
each appeal. In that single brief, on unnumbered pages three,
nine, twelve and fifteen, the examining attorney specifically
references applicant’s “agency and brokerage services for bonds
and securities,” i.e., the services in the child application.
Serial Nos. 78477240 & 78979110
4
There are two preliminary matters to be discussed
before reviewing the refusals of registration. These are,
first, applicant’s attachment of a declaration to each of
its appeal briefs, and, second, the differences in the
identifications of services in the respective applications,
which resulted from the request to divide.
The first of two exhibits attached to each of
applicant’s appeal briefs is a declaration by applicant’s
counsel. The examining attorney has objected to its
submission. Counsel contends that the declaration is
acceptable because arguments paralleling its statements of
purported fact were advanced during prior prosecution of
the applications. We disagree. Matters of fact to be
proved by competent evidence and mere arguments are
distinct matters, and there is no rule of practice that
allows timely advancement of an argument to serve as a
placeholder allowing subsequent untimely submission of
evidence. In contesting a refusal of registration prior to
appeal, the “appropriate practice” is for an applicant to
submit countervailing evidence, not mere argument. See In
re Psygnosis Ltd., 51 USPQ2d 1594, 1597 (TTAB 1999)
(Applicant failed to submit evidence to counter or provide
context to examining attorney’s NEXIS evidence until after
appeal); Cf. In re Craigmyle, 224 USPQ 791, 793 (TTAB 1984)
Serial Nos. 78477240 & 78979110
5
(“We do not believe that the Examining Attorney has
established by his mere argument alone a prima facie
case….”). See also, Trademark Rule 2.142(d).
Further, the declaration at issue is from applicant’s
counsel and purports to establish as matters of fact
particular practices of banks and financial planners. The
only foundation provided for such allegations is counsel’s
statement that he is “familiar with the primary services
provided by financial planners (also called financial
advisors).” Counsel, as declarant, does not explain the
basis for his familiarity with financial planners and does
not even state that he is familiar with banking practices,
although we accept that most individuals have at least some
familiarity with banks and their services.4 “The Board
generally takes a somewhat more permissive stance with
respect to the admissibility and probative value of
evidence in an ex parte proceeding than it does in an inter
partes proceeding.” TBMP Section 1208 (“Treatment of
Evidence”). Nonetheless, we find the declaration at issue
to constitute little more than attorney argument recast in

4 Caution, however, should be exercised in laying claim to
thorough knowledge about the banking business or, for that
matter, the financial planning business by those not engaged in
either field. See Amalgamated Bank of New York v. Amalgamated
Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed.
Cir. 1988).

Serial Nos. 78477240 & 78979110
6
the form of a declaration, and we do not view the rules
regarding submission of evidence in ex parte cases to be so
relaxed as to allow mere argument to substitute for
evidence. This is particularly important when the
essential purpose of the submission is to limit the scope
of the identifications in the cited registration and
involved parent application. An applicant may not restrict
the scope of its goods and/or the scope of the goods
covered in the registration by extrinsic argument or
evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986). The examining attorney’s objection to
consideration of the declaration as an untimely attempt to
submit evidence is sustained. Even if we had considered
counsel’s declaration, we would not decide the appeals
differently, because the declaration lacks probative value.
Turning to the issue of the respective identifications
of services, applicant submitted an amendment to the
involved parent application prior to its division, whereby
the phrase “excluding financial research, analysis, and
consulting services” was appended to the end of each of the
two classes listed in the application. Accordingly, when
applicant subsequently filed its request to divide the
entirety of the Class 35 services out of the parent
application, such class already included the exclusionary
Serial Nos. 78477240 & 78979110
7
language. However, when applicant specified in its request
to divide the particular identifications it sought to be
placed in each of the three child applications, the
specified identifications for the two Class 36 child
applications did not include that language. Later, when
the Office issued a notice reporting the completion of the
divisional process and the corresponding new serial numbers
and identifications for the child applications, such notice
clearly showed that the exclusionary language was not
included in either of the two Class 36 child applications.
Finally, in its request for reconsideration filed in the
involved Class 36 child application, applicant recited the
identification without any exclusionary language. The
resulting identification in the refused child application
is, as previously noted, “agency and brokerage services for
bonds and securities.” Accordingly, arguments by applicant
that focus on the exclusionary language are pertinent only
to the involved parent application. The identification in
that application (with the exclusionary language set forth
in italics) is:
commercial banking; financing services; insurance
services, namely, brokerage and underwriting;
actuarial services; fiscal assessment and
valuation; money exchange services; provision of
financial guarantees; trading in the money market
for others; brokerage in the field of currency,
interest rates, stock, bills, claims, and notes;
Serial Nos. 78477240 & 78979110
8
financial services, namely, settlement, planning,
management, and control; investment services,
namely, investment advice and investment
brokerage, investment trust services, namely,
trust management accounts and trust company
services; credit card services; commodities
brokerage; financial portfolio management for
investors; mortgage services, namely mortgage
bonds and participation in mortgage bond programs
excluding financial research, analysis, and
consulting services.

Having thus reviewed the identifications in the
refused applications, we begin our analysis of the DuPont
factors, see In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973)(establishing non-exclusive
list of thirteen factors to be considered when determining
whether one mark is likely to cause confusion with another
mark), by comparing the above discussed identifications to
that in the cited registration, i.e., “financial research,
analysis, and consulting services.” The similarities or
differences in services are one of the key considerations
in many cases, and so they are in this case. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks”).
When assessing and comparing the services, we must
focus on the identifications as stated in the involved
Serial Nos. 78477240 & 78979110
9
applications and registration. See In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (“Indeed, the second DuPont factor expressly mandates
consideration of the similarity or dissimilarity of the
services ‘as described in an application or
registration.’”) (citation omitted). Further, because
these identifications include no restrictions as to
channels of trade or classes of consumers, the recited
services must be presumed to travel through all normal
channels of trade and be marketed to all possible classes
of consumers. See Interstate Brand Corp. v. McKee Foods
Corp., 53 USPQ2d 1910, 1913 (TTAB 2000).
In regard to the parent application, applicant
contends that its addition of the phrase “excluding
financial research, analysis, and consulting services,”
i.e., registrant’s identified services, effectively
precludes any possible likelihood of confusion. Brief, p.
3. Applicant also contends that irrespective of its use of
the exclusionary phrase, “[a]pplicant’s services relate to
banking,” which are different than the services offered by
“financial planners, like the Registrant.” Id., pp. 3-4.5

5 The only citations to evidence to support applicant’s arguments
about financial planners and their services, and what consumers
expect from banks and financial planners, are citations to the
declaration we earlier stated we would not consider. Here, in
Serial Nos. 78477240 & 78979110
10
The addition by applicant of the exclusionary language
is not sufficient to warrant a finding that the involved
services are unrelated, for two reasons. First, the parent
application’s identification is set forth as a series of
services, separated by semi-colons. From the manner in
which the exclusionary language was appended to the
identification, a technical reading would mean that
applicant had only excluded “financial research, analysis,
and consulting services” from the last service following
the last semi-colon, i.e., from “mortgage services, namely
mortgage bonds and participation in mortgage bond
programs.” Under such a reading, the exclusionary language
would not affect the vast majority of applicant’s services.
Second, even if we assume that the intent was to have the
exclusion apply to all the services, it makes no sense.
For example, it would appear impossible for applicant to
provide consumers with “investment services, namely,
investment advice and investment brokerage, investment
trust services, namely, trust management accounts and trust
company services” without such services involving some
degree, if not a significant degree, of financial research,
analysis and consulting. “[A]ctuarial services; fiscal

reporting applicant’s arguments we are doing just that, reporting
arguments, not matters established by evidence.
Serial Nos. 78477240 & 78979110
11
assessment and valuation … investment advice … [and]
financial portfolio management,” also would appear to
require, at a minimum, financial research and analysis. In
short, we discount applicant’s addition of the exclusionary
phrase to the identification in its parent application as
an ineffective attempt to avoid a finding that the involved
services are similar.
Applicant’s second argument why the services should
not be found similar also is unavailing. By that argument,
applicant relies on the fact that applicant is a bank
(“When a customer enters one of Applicant’s banks…”) and
the asserted fact that registrant is a financial planner
who specializes in counseling “for high net worth
individuals.” Brief, pp. 4-5. First, there is nothing in
the cited registration that limits the identified
“financial research, analysis, and consulting services” to
services provided by an individual financial planner
specializing in counseling of high net worth individuals.6

6 It is true that Office records show the cited registration to
be owned by an individual, using the “DBA” InvesTech Research.
An individual may, however, register a mark and license others to
use it, with licensed use inuring to the individual’s benefit.
Or the individual may be retained by or affiliated with another
entity to provide to customers of that entity an additional
service. We do not, by these observations, suggest that either
is reflective of a method by which the services in the
registration are actually provided to consumers. We only make
the observations to illustrate that there is no way to know
whether applicant’s contention that the cited mark is only used
Serial Nos. 78477240 & 78979110
12
Second, there is nothing in the record to show that banks
are precluded from engaging in financial research, analysis
or consulting services in conjunction with their offering
of some of the services that are identified in applicant’s
parent application. Third, the examining attorney has put
into the record reprints from various internet websites
showing that a single entity can offer financial research,
analysis, and consulting services along with the types of
banking, financing, investment and brokerage services
offered by applicant. See attachments to Office action of
May 2, 2007. The Morgan Stanley firm
(www.morganstanley.com), for example, offers research
services, as in the cited registration, and investment
management services, as in applicant’s parent application.
And the JPMorgan firm (www.jpmorgan.com), for another
example, offers commercial banking and investment
consulting.
The examining attorney also put into the record
numerous third-party registrations which issued based on
use of the marks in commerce and which show the same mark
registered for services identified in both applicant’s
parent application and the cited registration. Again, see

by an individual financial planner who works with high net worth
individuals is at all accurate.
Serial Nos. 78477240 & 78979110
13
attachments to Office action of May 2, 2007. Such
registrations may be taken as evidence that consumers would
be likely to think that the involved services can emanate
from one source. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff’d in unpublished opinion
88-1444 (Fed. Cir. November 14, 1988). For one example of
such a registration, see No. 3030185, for the mark BCNA,
registered by the Central National Bank of Alva, for, among
other services, “[b]anking; mortgage banking; investment
banking services; … financial analysis and consultation;
financial guarantee and surety; … financial management;
[and] financial research.” For another, see registration
No. 2888395 for COLETAYLORBANK and design, which lists an
array of banking services as well as “investment advisory
and planning” and “financial research” services.
In regard to the need to focus on what prospective
consumers may think about the related nature of services,
applicant’s attention is drawn to Charles Schwab & Co. Inc.
v. The Hibernia Bank, 665 F.Supp. 800, 3 USPQ2d 1561 (N.D.
Cal. 1987). In that case, the court found a likelihood of
confusion following a bank’s adoption of the mark THE
EQUALIZER for a home equity line of credit product, in view
of the prior use and registration, in three classes, of the
identical mark by a “financial company” for a “computer
Serial Nos. 78477240 & 78979110
14
program which provides customers with a wide range of
financial information, services, and opportunities” and for
services of “providing access to computer data bases in the
field of financial investments.” Id. In Charles Schwab
the court acknowledged the differences in classification by
the USPTO of the parties’ respective products and services,
but also noted that “[t]he rights of the owner of a
registered trademark are not limited to protection with
respect to the specific goods stated on the certificate,
but extend to any goods related in the minds of a consumer
in the sense that a single producer is likely to put out
both goods.” Id. at 1563. “The modern rule expands
trademark rights to prevent use on related, but
noncompetitive goods; and gives the trademark owner
protection against use of its mark on any product or
service which would reasonably be thought by the buying
public to come from the same source, or thought to be
affiliated with, connected with, or sponsored by, the
trademark owner.” Id. at 1563-64. The court also noted,
Id. at n. 5, that “the modern ‘related goods’ test is also
applied by the Trademark Office under Lanham Act § 2(d) in
passing upon the registration of marks.” See also Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000) (“Thus, even if the goods in question are
Serial Nos. 78477240 & 78979110
15
different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods. It is this
sense of relatedness that matters in the likelihood of
confusion analysis.”).
In short, on the evidence of record, and under the
applicable law, we find that the services in applicant’s
parent application are related to those in the cited
registration, and would be thought of by consumers as the
types of services that can be sought from a single source.
We reach the same conclusion in regard to the involved
child application covering applicant’s “agency and
brokerage services for bonds and securities,” for there is
ample evidence of record in that application to show
relatedness of those services and registrant’s services.
See attachments to Office actions of May 2, 2007 and
December 17, 2007. For example, we have already discussed
the evidence showing the Morgan Stanley company to offer
services of the types listed in applicant’s parent
application and in the cited registration; and evidence
attached to the examining attorney’s denial of applicant’s
request for reconsideration in the child application shows
Morgan Stanley also offers brokerage services (“Discover
Brokerage, a Morgan Stanley company, today announced it
Serial Nos. 78477240 & 78979110
16
received the top rating of five stars in Kiplinger’s Stock
2000 survey of online brokerages.”).
Accordingly, for our analysis of likelihood of
confusion we find registrant’s services related to those in
both of applicant’s involved applications. We turn, then,
to a comparison of the marks.
There are no differences between the mark in the
parent application and in the child application. Both seek
registration of the stylized INVESTEC and design mark, in
which the design, according to applicant, is a “Circle-
Cross design.”
We do not view the design element in applicant’s mark
as making a significant contribution to the mark’s
distinctiveness. It may be viewed as a circle and cross
design, as applicant calls it, or it may be viewed as a
targeting symbol or sight, suggesting a financial
institution with clear aim and capable of helping customers
hit their banking or financing targets. Either way,
consumers are much more likely to rely on use of the
INVESTEC name, rather than the design element to refer to
applicant. Consumers are clearly much more likely to refer
to applicant as INVESTEC rather than the “circle-cross
design” bank. This illustrates why, when both words and a
design comprise a mark, the word or words are normally
Serial Nos. 78477240 & 78979110
17
accorded greater weight when comparing the mark to others.
See Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). The words are likely to make an
impression upon purchasers that would be remembered by them
and would be used by them to request the services.
In this case, we find the term INVESTEC to be the
dominant element of applicant’s mark. As the Federal
Circuit has explained, “there 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. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 732 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also, Cunningham
v. Laser Golf Corp., 55 USPQ2d 1842, 1845 (Fed. Cir. 2000).
Thus, while we do not discount the design element of
applicant’s mark, we give more weight to the literal
element of the mark in assessing a likelihood of confusion
with the registered INVESTECH mark.7

7 In its request for reconsideration in the child application,
applicant argues that the Federal Circuit has stated “There is no
Serial Nos. 78477240 & 78979110
18
In comparing the two marks, we assess their visual
appearances, their sound when spoken, their connotations
and overall commercial impressions. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In addition,
because the registered mark is in typed form, we must
consider that it could be presented in the same font and
form of display as the INVESTEC term in applicant’s mark
and thus the terms would look very similar when so
displayed. See Phillips Petroleum Co. v. C. J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35 (CCPA 1971). See also,
Cunningham v. Laser Golf, supra. With the terms displayed
in a similar manner, the trailing “H” in the registered
mark and the minor design element in applicant’s mark would
not render the overall appearance of the marks very
different.8 See In re Dixie Restaurants, supra, 41 USPQ2d

general rule as to whether letters or design will dominate in
composite marks,” citing In re Electrolyte Laboratories, Inc.,
913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990). That case is
inapposite, however, because in that case the Federal Circuit was
considering marks that included stylized presentations of the
letters K+ and K+EFF, but not words, and there is, of course, a
question about whether letters in such composite marks will be
articulated by consumers. The marks involved in these appeals
are not composite letter/design marks.

8 In its request for reconsideration in the parent application,
applicant included an illustration of registrant’s mark, but
showed the mark not as the typed INVESTECH mark but, rather, as
the stylized mark in registrant’s Registration No. 1275096.
Similarly, in its request for reconsideration in the child
application, applicant refers to the cited mark as “blurred by
Serial Nos. 78477240 & 78979110
19
at 1534 (Fed. Cir. 1997) (“Indeed, as the board found, the
design is an ordinary geometric shape that serves as a
background for the word mark.”) As for the sound of the
marks, INVESTEC and INVESTECH would be pronounced the same
and the silent “H” at the end of the registered mark is
irrelevant when comparing the pronunciation of the marks.
In addition, both marks have the same connotations, in that
both are evocative of the use of technical skill in
investing and financial matters. Because the marks would
be pronounced the same, must be presumed to appear very
similar, and have the same connotation, we conclude they
would present to consumers virtually identical commercial
impressions. See In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999) (Board found marks STRATEGYN and
STRATEGEN to be “phonetic equivalents” that “differ by only
one letter” and found that the “marks engender virtually
identical commercial impressions, both suggesting the idea
of a strategy”). See also, Dixie Restaurants, 41 USPQ2d at
1534 (Fed. Cir. 1997) (“On the merits, we agree with the
board that THE DELTA CAFÉ and design is similar in

distinctive and fanciful stylization.” Further, in its appeal
brief for the parent case applicant refers to the cited mark as a
“design mark.” These references to the cited mark clearly are in
error. As noted supra, the registration for registrant’s
stylized mark has not been cited against applicant’s
applications. Only the typed mark INVESTECH has been.

Serial Nos. 78477240 & 78979110
20
appearance, sound, and meaning to the registrant’s [DELTA]
mark.”).
Given the related nature of the services and the great
similarity in the marks, we do not hesitate to conclude
that there would be a likelihood of confusion among
consumers. Applicant, however, makes two additional
arguments we now consider.
Applicant argues in each case that there are many
marks that have been registered that include INVEST as an
element and that if those marks can co-exist on the
register, then so can applicant’s mark and registrant’s
mark. The examining attorney was correct, however, in
discounting such argument. See AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) (“We have frequently said that little weight is
to be given such registrations in evaluating whether there
is likelihood of confusion. The existence of these
registrations is not evidence of what happens in the market
place or that customers are familiar with them nor should
the existence on the register of confusingly similar marks
aid an applicant to register another likely to cause
confusion, mistake or to deceive.”) (citations omitted).
See also, Total Quality Group, supra, 51 USPQ2d at 1477.
Further, as the examining attorney has explained, many of
Serial Nos. 78477240 & 78979110
21
the referenced registrations are not for services in the
same class and only two of them are for marks that could be
considered similar to the involved marks.9 We are not
persuaded by this argument of applicant that there is a
place for its mark on the register.
Applicant also argues that prospective consumers for
its services and those of registrant are sophisticated and
“When money is at stake, consumers pay attention to the
details.” Reply brief, parent application, p. 4. See
also, reply brief, child application, p. 4 (“the buyers of
‘agency and brokerage services for bonds and securities’
are clearly professional in nature”). Newspaper accounts
of the state of the banking and finance industries that
have appeared during the pendency of these appeals are all
that is needed to reach the conclusion that neither banks
and financial planners nor consumers of their services are
inoculated against loss and confusion, even assuming that
attention is paid to details. Further, there is nothing in
the record, as we have already discussed, that limits
registrant’s services to those offered to high net worth

9 Registration No. 2523346 was for INVESTTECH SYSTEMS CONSULTING,
but was registered for “business management consultation.” Such
registration has, however, been cancelled for failure of the
registrant to file the required affidavit or declaration of use
under Section 8 of the Trademark Act. Registration No. 1306541
is for the mark INVESTEXT for “online computer financial research
services.”
Serial Nos. 78477240 & 78979110
22
individuals, and it is common knowledge that a significant
percentage of the American consuming public is involved in
some way in the financial markets, whether through
financial planners or through banks. Thus, in regard to
applicant’s parent application, we have no basis on which
to reach the conclusion that only sophisticated consumers
would seek the services identified in that application and
in registrant’s registration. Even limiting our
consideration to applicant’s child application and the
cited registration, there is nothing in the record to
support applicant’s contention that only sophisticated or
professional consumers would use the services of registrant
and the agency and brokerage services for bonds and
securities of applicant. Individual investors must
therefore be assumed to be potential customers for such
services. Finally, it has often been noted that even
sophisticated purchasers may not be experts in trademark
matters and may therefore be confused by the use of
virtually identical marks for related services. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) ("Human memories even of discriminating
purchasers...are not infallible.").
Serial Nos. 78477240 & 78979110
23
We therefore find that the sophistication of consumers
for the involved services constitutes mere argument by
applicant. Even then, the argument does not necessarily
reflect the reality that vast numbers of American
individuals and businesses are potential consumers for the
involved services, and not all such individuals or
businesses are necessarily sophisticated in their
consideration of trademarks. The DuPont factor of the
sophistication of consumers does not aid applicant in its
attempt to establish that confusion is not likely.
Decision: Each of the refusals of registration under
Section 2(d) of the Trademark Act is affirmed.