OCL Financial Services LLC

Trademark Trial and Appeal Board

Jun 23, 2020

87614160 (T.T.A.B. Jun. 23, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing for Serial No. 87614152:
May 13, 2020
Mailed: June 23, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re OCL Financial Services LLC
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Serial Nos. 87614152 & 876141601
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Mollie A. Newcomb of Ryan Kromholz & Manion SC
for OCL Financial Services LLC.

David Brookshire, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____
Before Taylor, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, and have similar records, the
appeals are hereby consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB
2012) (The Board sua sponte consolidated two appeals). Citations to the TSDR and TTABVUE
record are to Application Serial No. 87614152, except where otherwise indicated.
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I. Background and Evidentiary Issue
OCL Financial Services LLC (“Applicant”) seeks registration on the Principal
Register of the marks ONCOURSE and ONCOURSE LEARNING (with LEARNING
disclaimed), both in standard characters for “Educational services, namely, providing
online and live instruction in the fields of financial services, healthcare, and real
estate but not including the provision of services in those fields” in International
Class 41.2
The Examining Attorney refused registration in both cases under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered mark ON COURSE PERSONAL FINANCIAL NAVIGATION (with
PERSONAL FINANCIAL disclaimed), in standard characters for “Investment
brokerage; investment advice; financial planning” in International Class 36.3 After
the Examining Attorney made the refusals final, Applicant appealed. Both appeals
have been fully briefed. At Applicant’s request, an oral hearing took place for
Application Serial No. 87614152.
Applicant submitted nine exhibits to its Appeal Briefs.4 The Examining Attorney
objects to the new evidence on the ground that it is untimely. We sustain the
objection. As required by Trademark Rule 2.142(d), the record must be complete

2 Application Serial Nos. 87614152 and 87614160 were filed September 19, 2017 under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent
to use the marks in commerce.
3 Registration No. 5602361 issued on November 6, 2018.
4 6 TTABVUE (Application Serial No. 87614152); 4 TTABVUE (Application Serial No.
87614160).
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before an appeal is filed. 37 C.F.R. § 2.142(d). We therefore cannot consider
Applicant’s new evidence, which should have been submitted during prosecution. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE §§ 1203.02(e), 1207.01
(2019); TRADEMARK MANUAL OF EXAMINING PROCEDURE § 710.01(c) (Oct. 2018).
For the reasons set forth below, we affirm the refusals to register in both appeals.
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the
similarities between the marks and the relatedness of the services. See In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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 goods and differences in the marks.”).
A. Similarity of the Marks
We first compare Applicant’s ONCOURSE and ONCOURSE LEARNING marks
to the cited mark ON COURSE PERSONAL FINANCIAL NAVIGATION “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
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Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the services
offered under the respective marks is likely to result. Coach Servs. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
We find that the marks look and sound similar in large part because of the
identical wording ONCOURSE (or ON COURSE) that forms the entirety of one of
Applicant’s marks, and the beginning portion of Applicant’s other mark, as well as of
the cited mark. For rational reasons, we may give more or less weight to a particular
feature of a mark, such as a common dominant element, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Viterra, Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). As the first part of these
marks, ONCOURSE or ON COURSE is their dominant term. Presto Prods., Inc. v.
Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is
most likely to be impressed upon the mind of a purchaser and remembered.”); see also
Palm Bay Imps., 73 USPQ2d at 1692. We reject Applicant’s arguments that the
presence or absence of a space between ON and COURSE makes a significant visual
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or phonetic difference. Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54 (TTAB
1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that
the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The
word marks are phonetically identical and visually almost identical.”). As Applicant
acknowledges, even with ONCOURSE, consumers will recognize the distinct words.
We find that ONCOURSE and ON COURSE would be pronounced the same way.
The dominance of ONCOURSE in Applicant’s ONCOURSE LEARNING mark is
reinforced because the second word, LEARNING, is merely descriptive or generic for
Applicant’s educational services, and has been disclaimed. This reduces its
significance in the likelihood of confusion analysis because consumers are less likely
to rely on descriptive or generic wording to indicate source. See In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (in comparing THE DELTA
CAFÉ to DELTA, the generic term CAFÉ lacks sufficient distinctiveness to create a
different commercial impression). Similarly, in the cited mark, PERSONAL
FINANCIAL has been disclaimed as descriptive or generic, and NAVIGATION is
highly suggestive of the advice and planning services, thus reinforcing the dominance
of ON COURSE. So, while we do not ignore the additional wording in the analysis,
“the non-source identifying nature of the words and the disclaimers thereof constitute
rational reasons for giving those terms less weight in the analysis.” In re Detroit Ath.
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018).
As to the marks’ connotations and commercial impressions, we also find them
similar. We find that consumers would attribute the same meaning to, and derive the
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same impression from, the shared wording ONCOURSE/ON COURSE in Applicant’s
marks as they would in the cited mark. The additional word LEARNING in one of
Applicant’s marks, and the additional wording PERSONAL FINANCIAL
NAVIGATION in the cited mark, merely refer to the nature of the services, and do
not change the meaning or impression of the shared dominant term. The additional
wording in the two marks only minimally contributes to their overall meaning and
connotation, in that it conveys the nature of the services. Consumers familiar with
the cited mark ON COURSE PERSONAL FINANCIAL NAVIGATION likely would
view Applicant’s mark ONCOURSE as a short form of the same mark and Applicant’s
ONCOURSE LEARNING mark as a variation tailored to educational services from
the same source.
Given the resemblance in sound, appearance, connotation and commercial
impression when viewed in their entireties, we find both of Applicant’s marks very
similar to the cited mark. This factor weighs in favor of a likelihood of confusion.
B. The Services
“[L]ikelihood of confusion can be found ‘if the respective [services] are related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they emanate from the same source.’”
Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the
second DuPont factor, we look to the identifications in the applications and cited
registration. See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110
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USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The Examining Attorney maintains that the services in the applications and cited
registration are related. She introduced third-party websites on which instruction in
the field of financial services and investment advice and financial planning are
promoted together under the same mark. The records in both cases include:
• The Charles Schwab website offers its “Investment Management” and
“Trading” services, along with “Branch Workshops,” to “[l]earn about
investing, financial planning, retirement, and much more by attending one of
our complimentary seminars.”5
• The TD Ameritrade website promotes its “free online immersive courses” such
as “Stocks: Fundamental Analysis” and “Income Investing” as well as its
“Investment Management Services.”6
• The Merrill website offers “Merrill Guided Investing … by Merrill investment
professionals” along with the “Merrill Edge Investing Classroom” with “our in-
depth series of online courses, ranging from investing basics to sophisticated
strategies.”7

5 TSDR February 10, 2019 Office Action at 9-10 (client.schwab.com).
6 TSDR July 10, 2019 Office Action at 6-7 (tdameritrade.com).
7 Id. at 8-9 (merrilledge.com).
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• The Edward Jones website features financial advisor and investment services,
as well as “Financial Education” on investment considerations and investment
portfolio strategies.8
• The Small & Associates Financial website describes its business as a “private
wealth advisory practice” and offers educational seminars on “retirement
saving and spending plans” and how to “[m]aintain financial balance by being
prepared for risks and unexpected events.”9
• The website of Coastal Wealth Management promotes its “Retirement &
Financial Planning,” as well as “Seminars” on topics such as retirement and
estate planning.10
This evidence11 establishes the relatedness of Applicant’s and Registrant’s services,
showing that consumers are accustomed to seeing them promoted and offered under
the same mark. See Detroit Ath. Co., 128 USPQ2d at 1050 (crediting relatedness

8 Id. at 10-11 (edwardjones.com).
9 Id. at 12-13 (ameripriseadvisors.com).
10 Id. at 14-15 (coastalwealthmanagement24.com).
11 The record in Application Serial No. 87614152 also includes: the Morningstar website,
which promotes “Morningstar Managed Portfolios,” “Morningstar Retirement Manager,”
along with “Morningstar.com’s Investing Classroom,” with courses such as “Investing for the
Long Run” and “Stocks Versus Other Investments.” TSDR February 10, 2019 Office Action
at 7-8 (Morningstar.com); and the Prudential website promotes to advisors opportunities to
“Help Educate and Motivate Your Clients” with Prudential’s “timely educational materials
and seminars,” and offers personal investment advice and financial planning services. Id. at
11-13 (prudential.com).
The record in Application Serial No. 87614160 also includes: the Element Wealth Advisors
website, which describes its business as a “private wealth advisory practice” and offers a
seminar series on “Investing Matters” and “Planning for Healthcare in Retirement.” March
1, 2019 Office Action at 10; the Fidelity website, promoting “Accounts & Trade,” “Planning &
Advice” and “Branch Seminars” in the areas of wealth management, trading and investing,
and personal finance. Id. at 13-15.
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evidence that third parties use the same mark for the goods and services at issue
because “[t]his evidence suggests that consumers are accustomed to seeing a single
mark associated with a source that sells both”). This evidence also shows that the
same websites tend to promote and offer these types of services together. See Hewlett-
Packard, Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the
goods and services of both parties, if presented, is relevant to a relatedness analysis”).
Applicant contends that it provides no financial services, and that “Registrant’s
listing of services does not include education.”12 While acknowledging the evidence
that “some financial services companies also provide ‘educational services,’”
Applicant insists that those are just part of the financial services “whereby the
company educates its clientele on wealth management, retirement planning, etc.”13
Applicant stresses that its services are solely education-focused.
However, we emphasize that we rely on the services as identified, and they need
not overlap or even be competitive to find a likelihood of confusion. On-line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). The identified
services must only be related, in the sense that consumers might expect such services
to come from the same source. Coach Servs., 101 USPQ2d at 1722. This also is why

12 7 TTABVUE 5 (Applicant’s Brief).
13 Id. at 4.
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Applicant’s exclusionary language in its identifications14 does not foreclose
relatedness. Registrant’s services include investment advice and financial planning,
while Applicant has identified its services, in pertinent part, as “online and live
instruction in the field[] of financial services.” The Examining Attorney’s evidence
clearly shows that companies providing investment advice and financial planning
also frequently offer under the same marks online and live instruction about various
aspects of financial services, such as investing and financial planning. While
Applicant suggests that its educational services target professionals in the financial
services and other fields, its recitations are not so limited, and we must give full
sweep to its identification to include all types of provision of online and live
instruction in the fields of financial services – including that provided to individual
investors wishing to learn more about financial services. See In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”); see also Sw. Mgmt., Inc. v. Ocinomled, Ltd.,
115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an application or
registration are broadly described, they are deemed to encompass all the goods of the
nature and type described therein).
The second DuPont factor weighs in favor of likely confusion.

14 Applicant’s recitations include “but not including the provision of services in those fields.”
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C. The Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, the third-party evidence discussed
above also demonstrates that services such as Applicant’s and those in the cited
registration are featured together on the same websites, and would be encountered
by the same consumers.
Applicant attempts to read limitations into the recitations of services by resorting
to extrinsic evidence. However, “[t]he authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the identification
of [services] set forth in the application regardless of what the record may reveal as
to the particular nature of an applicant’s [services], the particular channels of trade
or the class of purchasers to which sales of the [services] are directed.” Octocom Syst.,
16 USPQ2d at 1787. We cannot consider alleged marketplace realities not reflected
in the identification of services. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the
identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”).
Thus, the third DuPont factor weighs in favor of likely confusion.
D. The Market Interface between Applicant and Registrant and the
Conditions under Which and Buyers to Whom Sales Are Made
Under the tenth DuPont factor, Applicant contends, without pointing to any
supporting evidence, that consumers of its services “are not seeking financial services
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but rather licensure to provide financial services,” such that “the markets served by
[it and Registrant] are starkly different.”15
Under the fourth DuPont factor, Applicant argues that its customers would be
careful and sophisticated because they would be professionals “in need of licensure,
continuing education, or to meet regulatory requirements, according to profession.”16
Similarly, Applicant claims that Registrant’s customers would not overlap with
Applicant’s, and that they “are savvy enough not to be confused between an
investment broker and a company that has zero relation to investment brokerage
services.”17 However, we note that the third-party evidence of record reflects that at
least some of the services at issue are easily accessible online, free of charge.
Applicant’s unsupported arguments under both these DuPont factors improperly
rest on limitations not in the identifications, but on alleged marketplace realities that
we cannot take into consideration. Octocom Syst., 16 USPQ2d at 1787. We find both
factors neutral.
E. The Length of Time and Conditions of Concurrent Use without
Evidence of Actual Confusion
Under this DuPont factor, Applicant relies on now-excluded evidence. As a result,
given the record in this case, “there is a lack of evidence that in the actual
marketplace, the same consumers have been exposed to both marks for the respective
services, such that we could make a finding as to the ‘length of time during and

15 7 TTABVUE 8.
16 7 TTABVUE 7.
17 Id.
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conditions under which there has been concurrent use without evidence of actual
confusion.’” In re Guild Mortg. Co., 2020 USPQ2d 10279 *25 (TTAB 2020). We also
note that “in this ex parte context, there has been no opportunity to hear from
Registrant about whether it is aware of any reported instances of confusion.” Id. at
*23. We find the eighth DuPont factor neutral.
III. Conclusion
The overall similarity of the marks for related services that move in some of the
same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed in both appeals.