Janney Montgomery Scott, LLC

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85231245 (T.T.A.B. Jun. 14, 2013)

Mailed: June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Janney Montgomery Scott, LLC
________

Serial No. 85231245
_______

Sherry H. Flax of Saul Ewing LLP for Janney Montgomery
Scott, LLC.

J. Brendan Regan, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Grendel, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Janney Montgomery Scott, LLC, filed an
application to register the mark shown below on the
Principal Register for “financial portfolio analysis
services” in International Class 36.1

1 Application Serial No. 85231245 was filed on February 1, 2011,
based upon applicant’s assertion of August 1, 2009 as a date of
first use of the mark anywhere and in commerce. The mark
consists of the terms "Janney" and "BondSTAR," with the letters
"STAR" in upper case bold and a star forming part of the "A".
Color is not claimed as a feature of the mark.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ex Parte Appeal No. 85231245

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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark TIB BONDSTAR, previously registered
on the Principal Register in typed or standard characters
for “accounting services” in International Class 36,2 as to
be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted briefs on
the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and

2 Registration No. 2833196 issued on April 13, 2004. Section 8
and 15 affidavits accepted and acknowledged.
Ex Parte Appeal No. 85231245

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the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We first turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source
of the services offered under the respective marks is
likely to result.
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
Ex Parte Appeal No. 85231245

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(Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981). On
the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
USPQ 266, 268 (CCPA 1955). In fact, 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 a
consideration of the marks in their entireties. In re
National Data Corp., 224 USPQ at 751.
In this case, registrant’s mark, TIB BONDSTAR, is
similar to applicant’s mark,

in that both share the common term “BONDSTAR” as their
second term and dissimilar in that they contain the term
“TIB” on one hand and “JANNEY” on the other. The term
“JANNEY” in applicant’s mark is less prominent than the
term “BONDSTAR,” particularly inasmuch as the “STAR”
portion of the latter is presented in bold, uppercase font
that draws the attention of the viewer. The design of a
star in applicant’s mark does not create a separate or
distinct commercial impression, but rather reinforces the
Ex Parte Appeal No. 85231245

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term “BONDSTAR” and draws additional attention thereto.
With regard to registrant’s mark, the term “TIB” visually
is less prominent than “BONDSTAR” if only because it is
comprised of far fewer letters. For these reasons, we find
that “BONDSTAR,” the term shared by applicant’s mark and
that of registrant, is the dominant term in both and
accordingly it is entitled to more weight in our analysis.
In coming to this conclusion, we do not discount the
presence of “JANNEY” and “TIB” in the respective marks.
However, we find that the term “BONDSTAR” common to both
marks visually is more prominent and more likely to be
remembered by consumers.
The term “BONDSTAR,” as it appears in both marks, is
identical in sound and connotation, and nearly identical in
appearance. Furthermore, registrant’s mark is presented in
standard characters and therefore we must consider all
reasonable presentations of that mark including in the same
stylization found in applicant’s mark. See Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971). See also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000). As a
result, we find that, when viewed in their entireties, the
marks TIB BONDSTAR and
Ex Parte Appeal No. 85231245

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are more similar than they are different and, overall,
convey similar commercial impressions. That is to say, the
marks appear to be variations of each other that
nonetheless point to a common source. As such, this du
Pont factor favors a finding of likelihood of confusion.
Strength of the Cited Mark
Applicant argues that the mark in the cited
registration is weak and, as support for this contention,
lists in its brief a number of third-party registrations,
noted in its April 17, 2012 communication but not made of
record during prosecution of its application, for various
BOND-formative marks for undisclosed goods or services.3 As
has often been said, to make third-party registrations of
record, applicant must submit a copy of the registration or
a printout from the USPTO’s electronic database prior to
the briefing stage of the case. In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of

3 Applicant asserts (brief, p. 3-4) that “Copies of these TESS
records were submitted below.” However, the file of the involved
application does not include copies of any third-party
registrations or, for that matter, any other evidence from
applicant.
We observe that applicant could have made such registrations or
other evidence of record even after the examining attorney’s
denial of applicant’s request for reconsideration by timely
requesting remand of the involved application for further
examination. See TBMP §1207.02 (3d ed., rev. 2012). Finally, we
observe that if applicant had submitted any evidence with its
brief on appeal, it would be untimely and given no consideration.
See Trademark Rule 2.142(d).
Ex Parte Appeal No. 85231245

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registrations is insufficient to make them of record.”).
However, the examining attorney did not advise applicant
that the listing is insufficient to make the registrations
of record at a point when applicant could have corrected
the error. See TBMP § 1208.02 (3d ed., rev. 2012). We
therefore have considered the registrations, but only to
the extent of the information provided.
In our consideration of applicant’s list of
registrations, we bear in mind that the factor to be
considered in determining likelihood of confusion under du
Pont is the “number and nature of similar marks in use on
similar goods.” See In re E. I. du Pont de Nemours & Co.,
177 USPQ at 567. Applicant’s list of registrations
contains no information regarding the goods or services
identified therein. We note in addition that none of the
listed marks contains the term BONDSTAR or otherwise are as
similar to the mark in the involved application or cited
registration as those marks are to each other. The only
thing that the list establishes is that several entities
have succeeded in registering a mark with BOND in it, but
we cannot determine therefrom whether that makes all of
those marks weak, or whether the marks at issue in this
case are weak. See In re Houston, 101 USPQ2d 1534, 1536-
1537 & n.7 (TTAB 2012). Finally, we note that third-party
Ex Parte Appeal No. 85231245

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registrations, even when made of record, do not demonstrate
the weakness of a mark; the “existence of [third party]
registrations is not evidence of what happens in the
market place or that customers are familiar with them.”
AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). Without evidence of the
extent to which the marks therein are in use in commerce or
the nature of the goods or services identified thereby,
applicant’s list of third-party registrations possesses no
probative value.
Applicant further has asserted, but again introduced
no evidence, that the owner of the cited registration owns
three other TIB-formative marks while applicant owns three
JANNEY-formative marks, and argues (brief, p. 2) that
“these ‘families’ of marks establish that the prominent
identification of source [TIB and JANNEY] is relied upon by
consumers.” Applicant’s argument is unavailing. First,
merely asserting that registrant and applicant own several
registrations comprising the terms TIB and JANNEY,
respectively, fails to establish a family of TIB or JANNEY
marks. See, for example, J&J Snack Foods Corp. v.
McDonald’s Corp., 18 USPQ2d 1889 (Fed Cir. 1981). Second,
and more importantly for purposes of our likelihood of
confusion analysis, applicant cites to no authority for its
Ex Parte Appeal No. 85231245

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apparent position that ownership by registrant of other TIB
marks (or even a “family” of TIB marks) or ownership by
applicant of other JANNEY marks diminishes the similarities
between the TIB BONDSTAR mark and mark.
Similarly, applicant’s argument, made without
evidentiary support or authority, that the terms TIB and
JANNEY function as house marks for registrant and
applicant, is unavailing. In fact, use of house marks may
even aggravate confusion. THOIP v. Walt Disney Co., 99
USPQ2d 1323, 1335 (SDNY 2011).
In addition, applicant argues (brief, p. 5) that
“Because Registrant’s mark is not famous, it is entitled to
only a narrow scope of protection….” It is well-settled
that a famous mark is afforded a wide latitude of
protection. See, for example, Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002). However, in an ex parte proceeding before the
Board, “we would not expect the examining attorney to
submit evidence of fame of the cited mark.” See In re
Thomas, 79 USPQ2d 1021, 1027 n. 11 (TTAB 2006). Also, even
if applicant could show that the mark in the cited
registration is not famous, the absence of fame does not
Ex Parte Appeal No. 85231245

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justify narrowing the ordinary scope of protection to which
such a mark normally is entitled.
Furthermore, inasmuch as registrant is not a party to
this proceeding, it has no opportunity to introduce
evidence of fame of its mark. In this case, there is no
evidence regarding the strength of the registered TIB
BONDSTAR mark, and we accordingly make no finding on
whether it is – or is not – famous. Cf. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed.
Cir. 2000). Accordingly, we find that the cited
registration is entitled to the normal scope of protection
that would be afforded such a mark and this du Pont factor
is neutral.
The Services
We turn now to our consideration of the identified
services, noting that it is not necessary that the services
at issue be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
Ex Parte Appeal No. 85231245

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the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s services are “financial
portfolio analysis services” and registrant’s services are
“accounting services.” The examining attorney has made of
record evidence from four informational and commercial
internet web sites suggesting that firms providing
accounting services also provide financial services of the
type recited in the involved application. The following
samples are illustrative:
Accounting and Financial Analysis Services.
In addition to the tax planning and preparation
services which constitute our primary service,
our firm also provides small businesses and their
owners with several types of accounting
assistance and support. … Third, finally, our
firm can also provide detailed financial and
business planning services such as for real
estate investment pro formas and business plan
forecasts.
(stephenlnelson.com);

The firm employs a disciplined team approach that
exploits the collective wisdom of a highly
qualified group of professionals. The
Metzler/Payden team interacts on a day-to-day
basis at each level of the investment process,
including research, strategy, trading, accounting
and operations.
(metzlerpayden.com); and

Kevin L. Kirkpatrick is the Chief Financial
Officer of Marcus Adams Properties, LLC and
Morgan Adams, Inc. and is responsible for the
Ex Parte Appeal No. 85231245

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accounting, finance, budgeting and tax functions
of both companies. Mr. Kirkpatrick’s duties
include overseeing the accounting department,
directing annual financial audits, income tax
return preparation, budgeting, financing and
financial planning. Mr. Kirkpatrick’s experience
in public accounting has provided Marcus Adams
Properties, LLC and Morgan Adams, Inc. with the
ability to provide a full service accounting
department including timely and accurate
financial information, income and estate tax
planning and personal financial planning to its
clients.
(marcusadams.com).

The foregoing evidence suggests that registrant’s
accounting services may emanate from the same sources as
financial services of a type related to applicant’s
financial portfolio analysis services.
In addition, the examining attorney has made of record
three use-based third-party registrations which show that
various entities have adopted a single mark for services of
a type similar to those identified in the involved
application and cited registration. See, for example:
Registration No. 3621481 for, inter alia,
accounting, financial advisory and consulting
services;

Registration No. 3641004 for, inter alia,
accounting services, financial advisory and
consulting services, financial planning and
advisory services; and

Registration No. 2824076 for, inter alia,
accounting services, financial services, namely
financial planning, financial research, financial
management services.

Ex Parte Appeal No. 85231245

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Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The evidence of record establishes that applicant’s
services are related to the services identified in the
cited registration, and further may be identified under the
same mark. As such, this du Pont factor favors a finding
of likelihood of confusion.
Channels of Trade
In making our determination regarding the relatedness
of the parties’ channels of trade, we look as we must to
the services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
It is presumed that the financial and accounting services
at issue move in all channels of trade normal for such
services, and that they are purchased by all of the usual
consumers for such services. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,
Inc., 119 USPQ 139 (CCPA 1958). Here, the examining
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attorney’s third-party evidence clearly suggests that the
services are not only related, but may in fact be offered
by the same firms, to the same customers. Thus, even if
applicant’s financial portfolio management services are
marketed in trade channels that differ from those in which
accounting services are marketed, they nonetheless will be
made available to the same consumers. As such, this du
Pont factor is, at worst, neutral or slightly favors a
finding of likelihood of confusion.
Sophistication of Purchasers
Neither the application nor the cited registration
includes any limitation on the customers to whom the
respective services are rendered so we must consider the
relevant purchasers to include all of the usual customers
for the recited services. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
While both accounting and portfolio analysis services
suggest that the relevant customers for the services at
issue include customers of substantial means, we note that
small businesses (including sole proprietorships) and
individuals often employ accountants for tax, payroll, and
other purposes, and that many individuals of relatively
modest means utilize financial planners, stock brokers, or
others who provide portfolio analysis services. While some
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of these customers are undoubtedly sophisticated in
financial matters, the potential purchasers for these
services also include those of modest means and no more
than an ordinary level of sophistication.
Even if we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
may be the subject of sophisticated purchases, even careful
purchasers are likely to be confused by highly similar
marks used in connection with related services. As stated
by our primary reviewing court, “[t]hat the relevant class
of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970).
Therefore, even if it is true in this case, the fact
that the purchasers may exercise care before purchasing
these services does not mean there can be no likelihood of
confusion. In the present case, the similarity between the
marks and the similarity between the services as identified
outweigh any sophisticated purchasing decision. See HRL
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Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods). As such, this du Pont factor is, at
best, neutral or slightly favors a finding of no likelihood
of confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s services sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark,
that the services originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant and not, as urged by applicant, in its favor.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir.
1984).
Ex Parte Appeal No. 85231245

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Decision: The refusal under Section 2(d) of the Act
is affirmed.