Janney Montgomery Scott, LLC

Trademark Trial and Appeal Board

Jul 15, 2011

No. 77781288 (T.T.A.B. Jul. 15, 2011)

Mailed: July 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Janney Montgomery Scott, LLC
________

Serial No. 77781288
_______

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

Laurie Mays, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Janney Montgomery Scott,
LLC to register the standard character mark BONDSTAR on the
Principal Register for the following services:
financial information and advisory services;
financial information provided by electronic
means; financial investment in the field of fixed
income securities; financial research and
information services; management of portfolios of
transferable securities

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77781288
2
in International Class 36.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be 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,

1 Application Serial No. 77781288 was filed on July 15, 2009,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce.
2 Registration No. 2833196 issued on April 13, 2004. Section 8
and 15 affidavits accepted and acknowledged.
Ser. No. 77781288
3
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 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.
In this case, registrant’s mark, TIB BONDSTAR, wholly
incorporates applicant’s mark, BONDSTAR. Likelihood of
confusion is often found where the entirety of one mark is
incorporated within another. In re Denisi, 225 USPQ 624,
626 (TTAB 1985); Johnson Publishing Co. v. International
Ser. No. 77781288
4
Development Ltd., 221 USPQ 155, 156 (TTAB 1982); and In re
South Bend Toy Manufacturing Company, Inc., 218 USPQ 479,
480 (TTAB 1983). The presence of the additional term TIB
in registrant’s mark does not eliminate the likelihood of
confusion because the remaining term in registrant’s mark
is identical to the applied-for mark, BONDSTAR. See, e.g.,
In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir. 2010);
China Healthways Inst., Inc. v. Wang, 83 USPQ2d 1123 (Fed.
Cir. 2007); and In re United States Shoe Corp., 229 USPQ
707 (TTAB 1985).
As a result of the foregoing, we find that the
similarities in the marks in appearance, sound and
connotation far outweigh the dissimilarities and, when
viewed in their entireties, the marks convey highly similar
commercial impressions. Accordingly, this du Pont factor
favors a finding of likelihood of confusion.
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,
not made of record during prosecution of its application,
for various BOND-formative marks for undisclosed goods or
services. Because these registrations were not made of
record, they have not been considered. See generally TBMP
Ser. No. 77781288
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§1208.02 (3d ed. 2011). See also In re Duofold Inc., 184
USPQ 638 (TTAB 1974). We further note 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., supra at 567. Applicant’s list of registrations
contains no information regarding the goods or services
identified in the listed registrations. We note in
addition that none of the listed marks contain 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. Finally, we note that third-party
registrations 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 introduced evidence that the
owner of the cited registration owns three other TIB-
formative marks, and argues that the “TIB ‘family’ of marks
Ser. No. 77781288
6
establishes conclusively that the prominent identification
of source TIB is relied upon by consumers.”3 Applicant’s
argument is flawed for a number of reasons. First, merely
noting that registrant owns several registrations
comprising the common term TIB and making of record copies
of those registrations fails to establish a family of TIB
marks. See, for example, J&J Snack Foods Corp. v.
McDonald’s Corp., 18 USPQ2d 1889 (Fed Cir. 1981). Second,
and more importantly, applicant has failed to establish
that the term TIB in registrant’s TIB BONDSTAR mark is more
distinctive than the term BONDSTAR. Third, applicant cites
to no authority for its apparent position that ownership by
registrant of other TIB marks (or even a “family” of TIB
marks) diminishes the similarities between its TIB BONDSTAR
mark and applicant’s mark, BONDSTAR.
In addition, applicant argues that “[b]ecause
Registrant’s mark is not famous, it is entitled to only a
narrow scope of protection….”4 It is well-settled that in
the context of an inter partes proceeding, 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

3 Applicant’s brief, p. 2.
4 Id. at 4.
Ser. No. 77781288
7
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). 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.
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
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Ser. No. 77781288
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In this case, applicant’s services are
financial information and advisory services;
financial information provided by electronic
means; financial investment in the field of fixed
income securities; financial research and
information services; management of portfolios of
transferable securities

and registrant’s services are “accounting services.” The
examining attorney has made of record evidence from
informational and commercial Internet web sites suggesting
that firms providing accounting services also provide the
services recited in the involved application. The
following samples are illustrative:
Tax, Accounting, Business Consulting & Financial
Planning Services. Our firm provides three sorts
of accounting services…. We also provide two
sorts of financial analysis and planning
services….
(stephennelson.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);

EPL Financial Group represents the evolution of
financial services: The complexity of financial
decisions requires a wholistic [sic] approach to
each area of asset management. With investment
advisory, insurance, real estate and accounting
branches, EPL Financial Group is equipped to
assist you in making decisions that are truly in
your best interest.
Ser. No. 77781288
9
(eplgroupaz.com); and

Kevin L. Kirkpatrick is the Chief Financial
Officer of Marcus Adams Properties, LLC and
Morgan Adams, Inc. and is responsible for the
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 applicant’s accounting
services may emanate from the same sources as applicant’s
various financial services.
In addition, the examining attorney has made of record
a number of use-based third-party registrations which show
that various entities have adopted a single mark for goods
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

Ser. No. 77781288
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Registration No. 2824076 for, inter alia,
accounting services, financial services, namely
financial planning, financial research, financial
management services.

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 must look 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) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
Ser. No. 77781288
11
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) It is
presumed that services move in all channels of trade normal
for such service, 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
attorney’s third-party evidence clearly suggests that the
services are not only related, but may in fact be commonly
offered by the same firms, to the same customers.
Sophistication of Purchasers
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
Ser. No. 77781288
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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 high
degree of similarity between the marks and the similarity
between the services as identified outweigh any
sophisticated purchasing decision. See HRL 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).
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.
Ser. No. 77781288
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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. 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). It is well established that one who
adopts a mark similar to the mark of another for the same
or closely related goods or services does so at his own
peril. See J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir.
1988); and W.R. Grace & Co. v. Herbert J. Meyer Industries,
Inc., 190 USPQ 308 (TTAB 1976).
Decision: The refusal under Section 2(d) of the Act
is affirmed.