Leading Capital SGPS, S.A.

Trademark Trial and Appeal Board

Apr 10, 2018

No. 86822386 (T.T.A.B. Apr. 10, 2018)

Mailed: April 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Leading Capital SGPS, S.A.
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Serial No. 86822386
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Erik M. Pelton and John C. Heinbockel of Erik M. Pelton & Associates, PLLC,
for Leading Capital SGPS, S.A.
Zachary Bello, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Bergsman, Ritchie, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Leading Capital SGPS, S.A., seeks to register on the Principal Register
the mark FASTTRACK.VC, in standard characters and with “VC” disclaimed, for
the following services in International Class 36:
venture capital services; venture capital funds; venture
capital funds featuring technology startup companies;
online website for matching venture capital funds and
startup businesses.1

1 Application Serial No. 86822386 was filed November 17, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 86822386
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The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
applied to the services identified in the application, so resembles the mark
FASTTRACK, previously registered on the Principal Register in standard
characters, as to be likely to cause confusion, to cause mistake, or to deceive. The
cited mark is registered for the following services in International Class 36:
providing financial commentary on investment strategies
relating to mutual funds [sic] stocks, and bonds; providing
an online computer database of investment information
and maintenance of that database for use with software
that provides access to a remote database for providing
analytical tools for examination and presentation of
investment information, namely, charting and ranking of
mutual funds, stocks and bonds performance indicators
and historical financial market indices; and, for displaying
such charts, ranking and statistical analysis.2
After the Examining Attorney made the refusal final, Applicant requested
reconsideration and appealed to this Board. After reconsideration was denied, the
appeal resumed and is now fully briefed.3 We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

2 Registration No. 2342084, issued April 18, 2000; renewed. The registration also identifies
goods in International Class 9.
3 On December 5, 2017, after submission on brief, the appeal was suspended until March 28,
2018 pending the status of a second cited registration, No. 4016041. The registration was
cancelled March 30, 2018 for failure to file a Section 8 affidavit of use and no longer
constitutes a bar to registration.
Serial No. 86822386
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(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
[services] and differences in the marks.”).
A. Similarity of the Marks
We first address the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of 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, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity of the marks is determined based on the marks in their
entireties, our analysis is not predicated on dissecting the marks into their various
components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015).
Serial No. 86822386
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On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, 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 Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Applicant’s mark FASTTRACK.VC begins identically to the cited mark
FASTTRACK, followed by a period and the initials “VC.” As we often have said, the
lead element in a mark has a position of prominence; it is likely to be noticed and
remembered by consumers and so to play a dominant role in the mark. See, e.g., Palm
Bay, 73 USPQ2d at 1692 (stating that VEUVE is a prominent part of the mark
VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(stating that consumers will first notice the identical lead word on encountering the
marks); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting
that the dominance of BARR in the mark BARR GROUP is reinforced by its location
as the first word in the mark).
The disclaimed lettering “VC,” an initialism for “venture capital,”4 is highly
descriptive in association with Applicant’s venture capital services. Consumers
therefore are likely to accord that phrase less weight and focus on the distinctive

4 September 5, 2016 Office Action at TSDR 9-12 (from acronymfinder.com).
Serial No. 86822386
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portion of Applicant’s mark, FASTTRACK, to identify source. See In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Because it is the first and only distinctive element in Applicant’s mark, we find
FASTTRACK to be the dominant portion of the mark. While there is no rule that
likelihood of confusion automatically applies where one mark encompasses another,
in this case, the fact that the entire cited mark is the dominant portion of Applicant’s
mark also increases the similarity between the two. See, e.g., Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In
re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST
POINT PEPPERELL and griffin design likely to cause confusion with WEST POINT);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark
VANTAGE TITAN confusingly similar to registered mark TITAN); In re Riddle, 225
USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE for automotive
service centers confusingly similar to ACCU-TUNE for automotive testing
equipment).
The addition of “.VC” to Applicant’s mark distinguishes it slightly from the cited
mark in appearance, sound, and connotation. Considered as a whole, however, we
find that Applicant’s mark FASTTRACK.VC makes a commercial impression very
similar to Registrant’s mark FASTTRACK. The first du Pont factor weighs strongly
in favor of a finding that confusion is likely.
Serial No. 86822386
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B. Similarity of the Services
We next consider the second du Pont factor, the similarity of the services. The test
is not whether consumers would be likely to confuse the services, but rather whether
they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d
1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it
is not necessary that the services be identical or even competitive. It is sufficient that
the services are related in some manner, or that the circumstances surrounding their
marketing are such that they would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the
sources. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
We must make our determination regarding the similarity of the services based
on the services as they are identified in the involved application and cited
registration, respectively, not on any extrinsic evidence of actual use. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014). In other words, an applicant may not restrict the scope of the services
covered in its application or the cited registration by argument or extrinsic evidence.
In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); see also
Thor Tech, 90 USPQ2d at 1638 (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”). For these reasons, Applicant’s
arguments concerning the specific details of the actual services it offers are not
probative. See Appeal Brief at 11, 9 TTABVUE 15.
Serial No. 86822386
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A likelihood of confusion may be found with respect to a particular class based on
any item within the identification for that class. Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). For purposes of
analyzing the similarity of the services, we compare Applicant’s “venture capital
services; venture capital funds” to the following services identified in the cited
registration: “providing financial commentary on investment strategies relating to
mutual funds [sic] stocks, and bonds.”
The Examining Attorney submitted the following evidence showing a relationship
between venture capital and investment strategies relating to mutual funds:
• A news story about the “Thomson Reuters Venture Capital Index Fund,” a
mutual fund that tracks an index of the performance of individual U.S.
venture capital-backed private companies;5
• A blog post about mutual fund investment in venture capital-backed
startup tech companies;6 and
• A discussion on a Reddit.com investing comment page concerning venture
capital “mutual funds” and comparable investment opportunities.7
In addition, with his May 11, 2017 denial of Applicant’s Request for
Reconsideration, the Examining Attorney made of record at least 10 existing, use-
based third-party registrations for the kinds of services identified by both Applicant
and Registrant, including both venture capital services and financial investment
information and consulting services. The most relevant registrations are shown in
the following chart:

5 October 3, 2016 Final Office Action at TSDR 2-4 (screen captures from DalyAlts.com).
6 Id. at TSDR 25-30 (screen captures from cbinsights.com).
7 Id. at TSDR 5-8.
Serial No. 86822386
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TSDR
Cite Mark / Reg. No.
Selected Services
Similar to Registrant’s
Selected Services
Similar to Applicant’s
68-71

Reg. No. 4602787
Investment services,
namely, financial
investment and
investment consultation
in the fields of … mutual
funds ... securities, bonds
Private equity and
venture capital
financing, strategy, and
management
10-12 CAPITAL IQ
Reg. No. 2840643
Investment services,
namely, financial
investment and
investment consultation
in the fields of … mutual
funds ... securities, bonds
Private equity and
venture capital funding
75-77

78-80
(same
owner)

Reg. No. 4653948
VENTURERANK
Reg. No. 4653949
Financial information
provided by electronic
means in the field of
finance, securities,
investments, private
equity, venture capital
and venture funds
Financial and
investment services,
namely, information,
advisory, analysis,
consultancy ... services
relating to ... venture
capital
81-83

Reg. No. 4646758
Information, advisory,
consultancy and research
services relating to
finance and investments;
financial investment in
the field of securities
Venture capital
financing; venture
capital fund
management; venture
capital advisory services;
venture capital funding
service to emerging and
start-up companies
21-23 PEOPLE.
IDEAS.
SUCCESS.
Reg. No. 3372441
Providing online financial
information through
electronic databases in
the fields of finance ...
asset management and
investment
Financial investment in
the fields of securities,
funds, real estate, and
venture capital
businesses
59-61 DPG
INVESTMENTS
Reg. No. 4508976
Financial evaluation,
tracking, analysis,
forecasting, consultancy,
advisory and research
services relating to
securities and other
financial instruments;
strategic financial
advisory services
Venture capital advisory
services
Serial No. 86822386
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TSDR
Cite Mark / Reg. No.
Selected Services
Similar to Registrant’s
Selected Services
Similar to Applicant’s
41-43 FRONTIER
VENTURES
Reg. No. 4336088
Investment services,
namely, capital
investment consulting
Venture capital services,
namely, the
arrangement of and
management of venture
capital funds
44-46

BIKA GROUP
Reg. No. 4388996
Financial services,
namely, investment
advice, investment
management, investment
consultation and
investment of funds for
others, including private
and public equity and
debt investment services
Providing venture
capital
53-55 INVESTING
INSIDE THE
TREND
Reg. No. 4334301
Information, advisory,
consultancy and research
services relating to
finance and investments;
investment advisory
services
Providing venture
capital

Although these registrations are not evidence that the marks are in use or that the
public is familiar with them, they suggest that the kinds of services identified in the
application and cited registration may emanate from a single source under the same
mark. See, e.g., Anderson, 101 USPQ2d at 1919; In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
Moreover, clients familiar with Applicant’s venture capital services are likely to
use services similar to Registrant’s services relating to mutual funds, stocks, and
bonds and assume that the services are associated or related in some way.
Based on the evidence discussed supra, we find that the services identified in the
application and cited registration are related in part. In our likelihood of confusion
Serial No. 86822386
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analysis, this finding under the second du Pont factor also supports a finding that
confusion is likely.
C. Consumer Sophistication
Finally, we address Applicant’s contention that financial services are purchased
with care. See Appeal Brief at 17-19, 9 TTABVUE 21-23. This argument concerns the
fourth du Pont factor, the “conditions under which and buyers to whom sales are
made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” 177 USPQ at 567. The
recitation of Applicant’s business investment services includes an “online website for
matching venture capital funds and startup businesses.” Precedent requires that we
base our decision on the least sophisticated potential purchasers, Stone Lion, 110
USPQ2d at 1163. Even assuming some consumers of the identified services exercise
care, it is well-settled that careful or sophisticated purchasers are not immune from
source confusion:
That 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.” (citation omitted). Sophistication of buyers and
purchaser care are relevant considerations, but are not
controlling on this factual record.
In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
Based on the inherent nature of the services, we find that even if Applicant’s
clients exercise a heightened degree of care in selecting investors, Registrant’s
customers may exercise less care in consuming financial commentary on investment
strategies relating to mutual funds, stocks, and bonds.
Serial No. 86822386
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II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. To the extent that any other du Pont factors for which no evidence
was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.
We have found that Applicant’s mark is highly similar to the cited mark, and that
the services identified in the subject application and cited registration are related in
part. We are not persuaded that even consumers exercising a higher degree of
purchasing care would not be confused when the marks FASTTRACK.VC and
FASTTRACK are used in connection with related services. Assuming consumers
exercise care with respect to the identified services, we find that the fourth du Pont
factor weighs slightly against a likelihood of confusion but does not outweigh the first
two du Pont factors. We find that Applicant’s mark is likely to cause confusion with
the mark in cited Registration No. 2342084 when used in association with the
services identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.