Miguel VillasanteDownload PDFTrademark Trial and Appeal BoardJul 10, 2017No. 86826362 (T.T.A.B. Jul. 10, 2017) Copy Citation Mailed: July 10, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Miguel Villasante _____ Serial No. 86826362 _____ Alvaro A. Acevedo, Jr. of Acevedo Associates Law Group PA for Miguel Villasante. Mark S. Tratos, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Zervas, Wolfson and Hightower, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Miguel Villasante (“Applicant”) seeks registration on the Principal Register of the mark INTRINSIC CAPITAL (in standard characters, “Capital” disclaimed) for “capital investment services” in International Class 36.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in association with the recited services, so resembles the two 1 Application Serial No. 86826362 was filed on November 19, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to use the mark in commerce. This Opinion is Not a Precedent of the TTAB Serial No. 86826362 - 2 - registered marks set forth below, owned by two different entities, as to be likely to cause confusion, to cause mistake, or to deceive: Registration No. 4255196 for the mark INTRINSIC WEALTH COUNSEL (“Wealth Counsel” disclaimed), in standard characters, for “Financial planning; Investment advisory services” in International Class 36;2 and Registration No. 4097985 for the mark for: Business management; business administration; providing office functions; business organization and business economics consultancy; interim business management; business management consultancy services, namely, managing commercial projects for business purposes; business management of companies, enterprises, institutions and organizations in International Class 35, and Financial affairs, namely, financial information, management and analysis services; investment management; financial analysis and budget estimate planning; financial advice and consultancy services; fiscal valuations consultation; financial asset management in the field of securities, publicly-listed investment funds, and separately managed client accounts; financial management of companies, enterprises and institutions 2 Issued December 4, 2012. Serial No. 86826362 - 3 - in International Class 36.3 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. 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 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key, though not exclusive, 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 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 3 Issued February 14, 2012, with a claim under Section 2(f), 15 U.S.C. § 1052(f), of acquired distinctiveness of the wording “Intrinsic Value Investors,” and with a disclaimer to the term “Investors.” The colors blue and gray are claimed as a feature of the mark. The description of the mark statement reads: “The mark consists of an image of three V-like shapes positioned next to each other, not touching, to form a semi-circle. The first, gray-colored, shape lies on its side, the opening of the shape facing left, and with the upper part of the shape forming an ‘I’; the second, blue-colored, shape is in the center with the opening of the shape facing upward, forming a ‘V’; the third, gray-colored, shape lies on its side, the opening of the shape facing right, and with the upper part of the shape forming an ‘I’; beneath the image, printed in blue uppercase letters are the words ‘INTRINSIC’, ‘VALUE’ and ‘INVESTORS’, each word placed one above the other with a solid gray line placed beneath the words ‘INTRINSIC’ and ‘VALUE’.” Serial No. 86826362 - 4 - The Services We first address the second du Pont factor, concerning the relatedness of the services. In making our determination under this factor, we look to the services as they are identified in the involved application and cited registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant’s services are identified as “capital investment services.” The record defines “capital investment” as “the money paid to purchase a capital asset or a fixed asset.”4 “Capital” is defined in the record as “cash or goods used to generate income either by investing in a business or a different income property” and as “the money, property, and other valuables which collectively represent the wealth of an individual or business.”5 Capital investment services enable companies to invest, for the purpose of furthering their business objectives, in a firm or enterprise or to acquire property, such as a manufacturing plant, machinery, or equipment. For example, Kroll Capital advertises that they “provide company owners with the capital required to make an acquisition…” as well as “actively identify potential acquisition targets” for companies with the necessary capital looking to make an acquisition.6 4 At http://www.investorwords.com/712/capital_investment.html, attached to March 11, 2016 Office Action, TSDR 15. 5 At http://www.investorwords.com/694/capital.html, May 27, 2016 Office Action, TSDR 77. 6 At http://www.krollcapital.com/advisory-services, attached to December 19, 2016 Denial of request for reconsideration, TSDR 52. Serial No. 86826362 - 5 - The services in cited registration No 4255196 for the mark INTRINSIC WEALTH COUNSEL are “financial planning” and “investment advisory services.” In cited registration No. 4097985 for the mark INTRINSIC VALUE INVESTORS and design, the services are, inter alia, “financial affairs, namely, financial information, management and analysis services;” “investment management;” “financial advice and consultancy services;” “fiscal valuations consultation;” and “financial management of companies, enterprises and institutions.” Applicant acknowledges that he provides a means for “pooling funds to make investments,”7 but argues that his endeavor “provides nothing in the mark or registration related to advisory, consultancy, informative, or managerial services” and that he does not intend his mark “to be associated with any type of advisory, analytical, informative, managerial or consultancy services of any kind.”8 The third-party websites submitted by the Examining Attorney demonstrate that capital investment services providers customarily offer, under a single mark, financial information, planning, advice and consulting, and funds management for the benefit of private investors (companies or individuals) interested in making capital investments, as well planning, advice, consulting and management of funds for companies seeking an infusion of capital from such investors. For example: • ZNZ Capital Private Ltd. advertises that it represents “private equity, strategic, and family office investors” looking for investment opportunities. As part of their “Capital Services,” they “provide worldclass advisory services for early and growth stage companies in 7 9 TTABVUE 15. 8 9 TTABVUE 11. Serial No. 86826362 - 6 - Merger & Acquisition, Business Valuation, Corporate Finance, Due Diligence, Exit Planning and Fund Raising.”9 • Merk Capital describes a range of services it provides under the rubric of “investment services”:10 • B.C. Ziegler and Company, a “privately held specialty investment bank, capital markets and wealth management firm,” offers capital investment services, financial planning, trust services, alternate investments, and wealth management services.11 • Mercator Advisors LLC “provides a wide array of financial consulting services to public and private sponsors of major infrastructure projects and capital assistance programs.”12 • Bauhaus Capital Partners offers financial advice to businesses “having made the decision to raise capital,” as well as investment banking services and financial planning.13 • Davenport Capital Management, LLC offers financial advice, planning and consultation to privately-held businesses and public companies to optimize their capital structure and financing needs.14 9 At http://www.znzcapital.com/capital-services.html, attached to December 19, 2106 Denial of request for reconsideration, TSDR 48. Elsewhere, ZNZ uses “Capital Raising” instead of “Fund Raising” to describe its investment services. Id. at TSDR 49. 10 From Merk Capital’s webpage headed “Investment Services,” at http://www.merkcapital.com/investment_services.html, attached to December 19, 2016 Denial of request for reconsideration, TSDR 45. 11 At https://www.ziegler.com/, attached to December 19, 2106 Denial of request for reconsideration, TSDR 54-58. 12 At http://mercatoradvisors.com/, attached to December 19, 2106 Denial of request for reconsideration, TSDR 59-61. 13 At http://www.bauhauscapitalpartners.com/, attached to December 19, 2106 Denial of request for reconsideration, TSDR 68. 14 At http://www.davenportcap.com/, attached to December 19, 2106 Denial of request for reconsideration, TSDR 69-73. Serial No. 86826362 - 7 - In addition, the Examining Attorney submitted copies of 30 third-party registrations to show that a single entity provides, under one mark, both capital investment services and other financial services (such as financial planning, advice and consultation, information management and analysis). 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 Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988)). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). Illustrative examples, from the December 19, 2016 Denial of Applicant’s request for reconsideration, include: • Reg. No. 5094651 for the mark STONE HATCHER FINANCIAL PLANNING & WEALTH MANAGEMENT and design: for, inter alia, capital investment and financial planning and investment advisory services; providing investors with financial information; investment management;15 • Reg. No. 5036460 for the mark IT’S TIME TO BENCH THE BENCHMARKS for, inter alia, capital investment services; financial analysis, management, consulting and advisory services; financial information and evaluation services;16 • Reg. No. 5064081 for the mark 1857 ADVISORS and design: for, inter alia, capital investment services; financial 15 Registered December 6, 2016, TSDR 37-39. 16 Registered September 6, 2016, TSDR 29-31. Serial No. 86826362 - 8 - information, management and analysis services; financial advice and consultancy services;17 • Reg. No. 5029671 for the mark BOVEDA ASSET MANAGEMENT for, inter alia, capital investment services; financial and investment services, namely, asset and investment acquisition, consultation, advisory and development; management of a capital investment fund;18 • Reg. No. 4904185 for the mark RAVINGFANS for, inter alia, capital investment services; information, advisory, consultancy and research services relating to finance and investments; management of a capital investment fund; providing information and research in the field of finance and financial investments.19 Given the definition of “capital investment” and the showing that capital investment services are related to other financial services such as offering financial advice and consultation, financial investment planning, management and analysis, we find that Applicant’s capital investment services are closely related to the “financial planning” and “investment advisory services” of Reg. No. 4255196 and to the “financial information, management and analysis services; investment management” and “financial advice and consultancy services” of Reg. No. 4097985. Moreover, because the recitation of services in the cited registrations are broadly worded, without limitation as to category or to a specific financial field or area, they are presumed to include planning, advice, consultation and management in the field of capital investment, capital investment advice, and capital investment management services. These services encompass Applicant’s services in part and to this extent, the services are legally identical. 17 Registered October 18, 2016, TSDR 34-36. 18 Registered August 30, 2016, TSDR 5-7. 19 Registered February 23, 2016, TSDR 11-13. Serial No. 86826362 - 9 - Accordingly, the second du Pont factor—the similarity or dissimilarity and nature of the services—favors a finding of likelihood of confusion. Channels of Trade and Classes of Consumers Because the services are in part legally identical, and neither Applicant’s application nor the cited registration contain any limitations on the channels of trade or classes of purchasers, we must presume that the channels of trade and classes of purchasers for these legally identical services are the same. See Stone Lion Capital Partners, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). As such, the third du Pont factor also favors a finding of likelihood of confusion. Consumer Sophistication Both Applicant and the Registrants provide their services to corporate entities and individuals seeking a capital investment opportunity, whether as a buyer or a seller of capital assets. Applicant argues that the consumer is “a careful and sophisticated client” inasmuch as “[m]aking a capital investment decision takes time, analysis of a prospectus, audited financial statement, financial forecast and projections, and it often involves negotiation with many regulated professionals involved in a transaction.”20 20 9 TTABVUE 9-10. Serial No. 86826362 - 10 - We agree that such consumers are likely to exercise a heightened level of care in selecting capital investment opportunities. Nonetheless, the Board properly considers all potential investors for the recited services, “including ordinary consumers seeking to invest in services with no minimum investment requirement.” Stone Lion Capital Partners, 110 USPQ2d at 1163. Such consumers, despite exercising care when making financial decisions, are not immune from source confusion. “Human memories even of discriminating purchasers … are not infallible.” 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)). The fourth du Pont factor—the conditions under which and buyers to whom sales are made—weighs slightly in Applicant’s favor. The Marks We next turn to the first du Pont factor, i.e., whether Applicant’s mark INTRINSIC CAPITAL is similar or dissimilar to the registered marks INTRINSIC WEALTH COUNSEL and (INTRINSIC VALUE INVESTORS and design) when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Stone Lion Capital Partners, 110 USPQ2d at 1160 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). We note initially that because the services are legally identical in part, the degree of similarity between the marks which is required to support a finding of likelihood of confusion need not be as great as where Serial No. 86826362 - 11 - there is a recognizable disparity between the services. See In re Viterra Inc., 101 USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). See also In re Dixie Restaurants, Inc., 41 USPQ2d at 1534. The test under the first du Pont factor 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 terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, both Applicant and the Registrants provide their services to corporate entities and individuals seeking a capital investment opportunity, whether as a buyer or a seller of capital assets. The Examining Attorney contends that the term “Intrinsic” in Applicant’s mark and in the cited marks creates the impression that the services provided under the marks “create, maintain, or deal with the essential or inherent value of investments, finances and capital.”21 Applicant agrees that “Intrinsic” means essential or inherent, but disputes the Examining Attorney’s assertion that the term relates to the “essential value of investment, finances or capital.” (emphasis in original).22 We find the term 21 11 TTABVUE 10. 22 9 TTABVUE 12. We judicially notice the definition of “intrinsic” in the Merriam-Webster online dictionary: “belonging to the essential nature or constitution of a thing • the intrinsic worth of a gem • the intrinsic brightness of a star.” At https://www.merriam- webster.com/dictionary/intrinsic?utm_campaign=sd&utm_medium=serp&utm_source=jsonld, accessed July 7, 2017. The Board may take judicial notice of dictionary definitions, including Serial No. 86826362 - 12 - “intrinsic” as a modifier of the term “capital,” “wealth counsel” or “value investor” to be, at worst, suggestive of the services, whether perceived as dealing with the underlying monetary value of an investment, or the concept that the advice that Applicant and the Registrants give their clients regarding capital investments is inherently valuable. Under either interpretation, the word “INTRINSIC” in the cited marks, being suggestive, is considered inherently distinctive. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010); Nautilus Group Inc. v. ICON Health and Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (“A mark that is fanciful, arbitrary, or suggestive is considered to be inherently distinctive, and thus automatically qualifies for trademark protection under 15 U.S.C. §1051.”). “In determining the strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” Am. Lebanese Syrian Assoc. Charities, 101 USPQ2d 1022, 1028 (TTAB 2011); see also Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). On this record, neither of the Registrants’ marks suffer from marketplace dilution. Applicant has not shown that any other entity uses the term “Intrinsic” in a mark. Nor has Applicant adduced any evidence of third-party registrations that include the term. Applicant points out that the two cited registrations are owned by different entities, and argues that this shows that “the definitions or entries from references that are the electronic equivalent of a print reference work. See Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009). Serial No. 86826362 - 13 - dominant mark word is not as relevant as examining attorney argues,”23 but the fallacy in Applicant’s argument is that we have not been provided with any insight into the file history of either registration and we do not know to what extent there is evidence in the files of either of the other registrations that would tend to suggest that the term “Intrinsic” is weak as a source indicator. Regardless, there is no such evidence in this record. As is often stated, each case must stand on its own and, in any event, the Board is not bound by the actions of prior examining attorneys. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). See also In re International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect to third- party registrations which include disclaimers … we do not have before us any information from the registration files as to why an Examining Attorney required and/or why the applicant/registrant offered such disclaimers.”). Applicant’s mark and the Registrants’ marks are similar in appearance and pronunciation to the extent that both include the term INTRINSIC. The marks have similar meanings because of this shared element. They project the idea that the services provided to the client are essential; they also project the idea of intrinsic value. We find that the term INTRINSIC retains and projects the same meaning (“essential, inherent”) whether appearing as part of Applicant’s mark or of Registrants’ marks. 23 9 TTABVUE 9. Serial No. 86826362 - 14 - The addition of the terms WEALTH COUNSEL and VALUE INVESTORS in the registered marks and the addition of the term CAPITAL in Applicant’s mark do not sufficiently distinguish the marks. These terms are descriptive of financial services. “Wealth counsel” describes services that are directed to counseling clients in furthering the goal of wealth accumulation. Likewise, “investors” are Applicant’s and the Registrants’ target clients and “value” (whether read together with “intrinsic” as “intrinsic value” or as “value investors”) evokes a desired result: maximizing one’s return on investment. However, while such examination of the terms of each mark separately is useful, we are mindful that our comparison of the marks is not predicated on dissecting the marks into their various components; rather, our decision is based on a comparison of each entire mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). Nonetheless, different features may be given greater weight in determining whether the marks are similar. Given the suggestive or even arbitrary nature of the term INTRINSIC in association with the services and the descriptive nature of the terms WEALTH COUNSEL, VALUE INVESTORS and CAPITAL, we find that prospective consumers, when encountering either Applicant’s mark or the mark of either Registrant, will focus primarily on the term INTRINSIC in the mark and not the additional wording.24 National Data, 224 USPQ at 751 (nothing 24 We note the disclaimer of the term “Capital” in Applicant’s mark, and of “Wealth Counsel” in Reg. No. 4255196. We further note that Reg. No. 4097985 issued with a claim under Section 2(f) as to “Intrinsic Value Investors,” with “Investors” further disclaimed as matter incapable of acquiring distinctiveness. Serial No. 86826362 - 15 - improper in giving more or less weight to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties). The term INTRINSIC also has significance as the dominant element of each mark due to its position as the first term in each mark. See Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). We also consider whether the design feature in Reg. No. 4097985 sufficiently avoids confusion between the marks, and find that it does not. The blue-and-gray V-shaped designs are set apart from the words and create a separate commercial impression that does not detract from the dominance of the term INTRINSIC in the phrase INTRINSIC VALUE INVESTORS. The gray lines between the words (which also appear in gray) simply underscore the words, which are more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods. The mark’s design elements would not be articulated in referring to the services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); see also In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“In the case of a composite mark containing Serial No. 86826362 - 16 - both words and a design, ‘the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.’”) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Cf. In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1381 (TTAB 2012) (“A purchaser’s (even a sophisticated one) recollection of design marks is often of a general, rather than specific, nature; thus the marks may be confusingly similar despite differences between them.”). In view of the foregoing, we find that the first du Pont factor also weighs in favor of a finding of likelihood of confusion. Summary We have considered all of the arguments and evidence of record as they pertain to the du Pont likelihood of confusion factors. To the extent that 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. In light of our findings that the marks are similar; the services are legally identical in-part and otherwise related; that the services move in the same trade channels and are marketed to the same consumers; and that these considerations outweigh the sophistication of the consumers, we conclude that Applicant’s mark so closely resembles the registered marks as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods. Decision: The refusal to register Applicant’s mark INTRINSIC CAPITAL under Section 2(d), 15 U.S.C. § 1052(d), is affirmed. Copy with citationCopy as parenthetical citation