KWM Advisors, LLC

Trademark Trial and Appeal Board

Aug 6, 2019

87492714 (T.T.A.B. Aug. 6, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: August 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re KWM Advisors, LLC
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Serial No. 87492714
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Sherry Flax of Saul Ewing Arnstein LLP,
for KWM Advisors, LLC
Samantha Sherman, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
KWM Advisors, LLC (“Applicant”) seeks registration on the Principal Register of
the mark DISCOVER TRUE INDEPENDENCE (in standard characters) for “Capital
investment services; Financial analysis; Financial planning; Financial services,
namely, wealth management services; Investment consultation; Securities trading
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and investing services for others via the internet; Management of portfolios
comprising securities; Trading in securities” in International Class 36.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground of likelihood of confusion with two registered marks owned by the same
Registrant: the standard character mark TRUE INDEPENDENCE2 and the
composite mark
,3
both for “financial services, namely, wealth management services” in International
Class 36.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.

1 Application Serial No. 87492714 was filed on June 16, 2017, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. 15 U.S.C. § 1051(b).

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.

2 Registration No. 5251152, issued on the Principal Register on July 25, 2017.
3 Registration No. 5275137 (FINANCIAL GROUP disclaimed), issued on the Principal
Register on August 29, 2017.
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I. Likelihood of Confusion
We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”));
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of the goods or services. In re
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FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018) (citing Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)).
A. Comparison of Services, Channels of Trade, and Classes of Consumers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014), while the third DuPont factor concerns “[t]he similarity or
dissimilarity of established, likely-to-continue trade channels.” Id. at 1161.
The Examining Attorney contends that the services recited in the subject
Application and Registrations are highly related. We agree. To begin with, the
respective services are identical in part, both reciting “financial services, namely,
wealth management services.” See Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (identical services);
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1037 (TTAB 2016) (parties’ assisted living facilities services identical in part). Beyond
that, Registrant’s “financial services, namely wealth management services”
encompass Applicant’s remaining recited services, “capital investment services;
financial analysis; financial planning; investment consultation; securities trading
and investing services for others via the internet; management of portfolios
comprising securities; trading in securities.” The Examining Attorney points out that
the term “wealth management” is broadly defined, encompassing a range of
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particular financial services.4 And the Examining Attorney has adduced evidence
that wealth management companies such Chapin Davis,5 Versant,6 and D.A.
Davidson7 commonly provide the other recited financial services, including capital
investment, financial analysis and planning, investment consultation, securities
trading, portfolio management, and more. Applicant does not contest this evidence.
When a registration describes services broadly, and contains no limitation as to
their nature, type, channels of trade, or class of purchasers, it is presumed that the
registration encompasses all services of the type described. See, e.g., Levi Strauss &
Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed.
Cir. 2013); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Applicant’s services thus are subsumed under Registrant’s services, and legally
identical thereto. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); In re Integrated Embedded, 120 USPQ2d 1504, 1514 (TTAB 2016).
Given that the respective services are identical in part and otherwise legally
identical, and given the lack of restrictions on trade channels and classes of customers
in the recitations of services, we presume that these services travel through the same
channels of trade to the same classes of customers, those seeking financial services,

4 Sept. 19, 2017 Office Action at 3, 11-25, citing Wikipedia.org, MorganStanley.com and
Fidelity.com, all accessed on 9/19/2017.
5 ChapinDavis.com 4/11/2019, April 11, 2018 Office Action at 7-15.
6 Versantcm.com 4/11/2018, April 11, 2018 Office Action at 16-19.
7 DADavidson.com 4/11/2018, April 11, 2018 Office Action at 20-27.
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namely wealth management services. See Stone Lion Capital v. Lion Capital, 110
USPQ2d at 1162.
The second and third DuPont factors thus weigh heavily in favor of finding a
likelihood of confusion. Applicant does not contest the Examining Attorney’s
arguments or evidence regarding these factors.
B. Comparison of Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
We focus on Registrant’s standard character TRUE INDEPENDENCE mark
because if we do not find a likelihood of confusion between Applicant’s DISCOVER
TRUE INDEPENDENCE mark and that mark, then we would not find a likelihood
of confusion with Registrant’s composite mark. See In re I-Coat Co., LLC, 126
USPQ2d 1730, 1734 (TTAB 2018); In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
Applicant argues:
[I]n comparing the marks, the focus should not be on the shared component
of the marks but rather on the marks in their entirety. …
Here, the marks are decidedly different. When considered in their
entireties, they are readily distinguishable in sight, sound, and meaning.
Of primary import is Applicant’s inclusion of the distinctive term
DISCOVER as the mark’s initial and most prominent term. As the first
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encountered term in the mark, it is the most meaningful to consumers. …
The term “DISCOVER” means “to make known or visible; to obtain sight
of knowledge of for the first time.” See Merriam-Webster at www.merriam-
webster.com/dictionary/discover.... Applicant’s use of DISCOVER as the
primary term gives the mark a distinctive meaning and commercial
impression.8

We agree with the Examining Attorney, however, that the marks are similar.
Where, as here, the services are identical in part and otherwise legally identical, the
degree of similarity between the marks necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the services. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir.
2012); Century 21 Real Estate. v. Century Life of America, 23 USPQ2d at 1700; United
Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014).
In this case, Applicant’s DISCOVER TRUE INDEPENDENCE mark encompasses
Registrant’s TRUE INDEPENDENCE mark in its entirety. “Marks have frequently
been found to be similar where one mark incorporates the entirety of another mark,
as is the case here. Coca-Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL
LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982)
(EBONY is similar to EBONY DRUM); In re S. Bend Toy Mfg. Co., 218 USPQ 479,
480 (TTAB 1983) (LIL’ LADY BUG is similar to LITTLE LADY).” TiVo Brands LLC
v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019) (TIVOTAPE and TIVOBAR are
similar to TIVO).

8 Applicant’s brief, 7 TTABVUE 12 (citations omitted).
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Applicant’s addition of the word DISCOVER before TRUE INDEPENDENCE does
not distinguish the marks. Rather, the word “DISCOVER,” in keeping with its
meaning, “to make known or visible; to obtain sight of [or] knowledge of for the first
time” appears to invite customers to discover Registrant’s TRUE INDEPENDENCE
brand of financial services.9 Consumers normally retain a general rather than a
specific impression of marks. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
2016). If they noticed the difference at all, they would be likely to perceive Applicant’s
mark as a variation of Registrant’s mark, urging customers to DISCOVER
Registrant’s TRUE INDEPENDENCE financial services. “Considering the
substantial similarities between the marks in this case, it seems to us that a
purchaser who sees one mark and later encounters the other is likely to think, if the
two marks are applied to the same or related goods and/or services, that the second
mark is the same mark he had seen earlier, or, if he realizes that there are some
differences in the marks, that the second is simply a slightly varied version of the
first, with both serving to indicate origin in the same source.” In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988).
Taken in their entireties, then, the respective marks look and sound very much
the same, and convey the same connotation and commercial impression. “‘Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.’
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-

9 Merriam-Webster.com 10/11/2018, Oct. 11, 2018 Request for Reconsideration at 5-6; quoted
in Examining Attorney’s brief, 9 TTABVUE 8.
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Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (‘It is sufficient if
the similarity in either form, spelling or sound alone is likely to cause confusion.’)
(citation omitted).” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018). In this case, all four elements favor a finding of similarity.
Applicant argues that “Both parties use their slogans [i.e., the subject marks] in
connection with their company names. … Because the slogans are not used in
isolation, consumers are not likely to be confused as to the source of the services.”10
As the Examining Attorney correctly points out, though, we compare the marks as
they appear in the Registration and Application, not as they are used in the
marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018) (citing
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
“To the extent applicant’s argument reflects anticipated use of the applied-for mark
with applicant’s house mark, it is well-settled that use of a house mark in conjunction
with a product mark will not serve to prevent a finding of likelihood of confusion when
the house mark is not included in the mark for which registration is sought.” In re
Microsoft Corporation, 68 USPQ2d 1195, 1198 (TTAB 2003).
The first DuPont factor thus favors a likelihood of confusion.
C. Number and Nature of Similar Marks in Use with Similar Services

Under the sixth DuPont factor, we consider “[t]he number and nature of similar
marks in use [in connection with similar services].” DuPont, 177 USPQ at 567.

10 Applicant’s brief, 7 TTABVUE 12.
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Applicant argues that “The proliferation of registrations and third party uses of
the term INDEPENDENCE entitles it to narrow protection,” citing a dozen use-based
registrations on the Principal Register for marks containing the term
INDEPENDENCE for wealth management and related financial services, e.g.:
• AMERICAN INDEPENDENCE FUNDS, Reg. No. 2615775;
• CAPITALIZE ON INDEPENDENCE, Reg. No. 3859998;
• INDEPENDENCE REFINED, Reg. No. 5077817;
• THE VALUE OF INDEPENDENCE, Reg. No. 4821915;
• YOUR FINANCIAL INDEPENDENCE AWAITS, Reg. No. 3900002;
• OPTIONS FOR INDEPENDENCE, Reg. No. 4036048.11
To this Applicant adds website evidence of a half-dozen third parties that have
used INDEPENDENCE in connection with financial services, submitted at pp. 32 –
37 of the March 19, 2018 Response to Office Action e.g.:
• IFS INDEPENDENCE FINANCIAL SERVICES12
• IF INDEPENDENCE FINANCIAL13
• INDEPENDENCE Financial Advisors14
• IPG INDEPENDENCE PLANNING GROUP15

11 March 19, 2018 Response to Office Action at 8-31.
12 IndependenceFinancialServices.com.
13 IndependenceFinancialLLC.com.
14 IFA-nh.com, March 19, 2018.
15 IPGroup.info.
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• INDEPENDENCE TRUST COMPANY16
• INDEPENDENCE FINANCIAL PARTNERS17
From these third-party registrations and uses, Applicant concludes that the term
INDEPENDENCE, when used in connection with financial services, is weak, highly
suggestive, and entitled to a narrow scope of protection.18
Evidence of extensive registration and use by others of a term on the same or very
similar goods or services can be “powerful” evidence of its conceptual weakness. See
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015). While Applicant’s third-party registration evidence demonstrates that
INDEPENDENCE is weak when used in connection with financial services,
Registrant’s mark is not just that term, but TRUE INDEPENDENCE, and Applicant
has not proven that this cited mark, taken as a whole, is weak. In fact, not one of the
third-party examples contained TRUE INDEPENDENCE. So even if the element
INDEPENDENCE in Registrant’s mark is weak, the mark as a whole is still entitled
to be protected against registration of a similar mark for identical or legally identical
services. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182
USPQ 108, 109 (CCPA 1974); In re Max Capital Grp., 93 USPQ2d at 1246 (“even

16 IndependenceTrust.com.
17 Indfp.com.
18 Applicant’s brief, 7 TTABVUE 12-13.
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suggestive or weak marks are entitled to protection from the use of a very similar
mark for legally identical services.”).
In this case, as Applicant’s proposed mark not only appropriates Registrant’s
mark in its entirety, but urges its customers to “DISCOVER” TRUE
INDEPENDENCE for identical or legally identical financial services. In such
circumstances, “the evidence fails to show that the cited mark should be afforded such
a narrow scope of protection that it would weigh in favor of finding a likelihood of
confusion.” In re I-Coat, 126 USPQ2d at 1735-36.
The sixth DuPont factor is therefore neutral.
D. Sophistication and Care of Customers

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant asserts that:
Consumers seeking wealth management and related financial services
consider the provider of those services with great care. The highly
specialized nature of the services, the expenditure of substantial sums in
connection with making investments or preparing wealth management
plans, and the time and deliberation required on the part of the consumer
demand that these consumers must be aware of the providers of those
services. Moreover, these consumers have direct and personal contact with
these service providers for the purpose of making significant financial and
investment decisions. This one-to-one communication makes it virtually
impossible that the consumer will be confused as to the source of the
services.19

19 Applicant’s brief, 7 TTABVUE 14.
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We note, however, that the same scenario arose in Stone Lion Capital v. Lion
Capital, where both parties were investment management companies. Stone Lion
filed an intent-to-use application proposing to use its mark in connection with
“financial services, namely investment advisory services, management of investment
funds and fund investment services.” 110 USPQ2d at 1159. Lion Capital’s
registrations covered inter alia “financial and investment planning and research,”
“investment management services.” Id. at 1158-59. Both parties agreed that their
current investors were sophisticated. Id. at 1162. The Board, however, focused on the
sophistication vel non of all potential customers of the parties’ services as recited in
the application and registrations, respectively. Id. The Federal Circuit agreed and
affirmed, stating:
the Board properly considered all potential investors for the recited
services, including ordinary consumers seeking to invest in services with
no minimum investment requirement. Although the services recited in the
application also encompass sophisticated investors, Board precedent
requires the decision to be based “on the least sophisticated potential
purchasers.” … Substantial evidence supports the Board’s finding that
such ordinary consumers “will exercise care when making financial
decisions,” but “are not immune from source confusion where similar
marks are used in connection with related services.” … The Board’s
conclusion that the fourth DuPont factor weighs in opposer Lion’s favor is
consistent with Stone Lion’s application, Lion’s registrations, and with
applicable law.

Id. at 1163-64 (citations omitted).
The Board continues to adhere to these standards. In re FCA US LLC, 126
USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based
on the least sophisticated potential purchasers.”); In re Integrated Embedded, 120
USPQ2d at 1516 (“In this case, the legal identity or similarity of the services and
Serial No. 87492714
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similarity of the marks outweigh any sophisticated purchasing decision”).
Accordingly, here, as in Stone Lion, we find that the fourth DuPont factor is neutral,
and does not avoid a likelihood of confusion.
II. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with Registrant’s
services offered under its mark would be likely to believe, upon encountering
Applicant’s proposed mark, that its services originate with or are associated with or
sponsored by the same entity. There is therefore a likelihood of confusion under
Section 2(d).
Decision: The refusal to register Applicant’s proposed mark DISCOVER TRUE
INDEPENDENCE is affirmed.