Openlink Financial LLC

Trademark Trial and Appeal Board

May 14, 2021

87599035 (T.T.A.B. May. 14, 2021)

Mailed: May 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Openlink Financial LLC
_____

Application Serial No. 87599035
_____

Michael R. Friscia and Carissa L. Rodrigue of McCarter & English, LLP
for Openlink Financial LLC.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney
_____

Before Taylor, Bergsman and Dunn, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Openlink Financial LLC (Applicant) seeks registration on the Principal Register
of the mark OPENLINK and design, reproduced below, for the goods listed below:
Computer software, namely, commercial software
application for the trading, risk management and
operations processing of transactions in the field of
commodities; computer software, namely, development
tools used in the customization and integration of computer
software used for the trading, risk management and
operations processing of transactions in the field of
commodities; computer software for application and
database integration for use in the field of commodity
trading, risk and logistics management; computer software
for the collection, editing, organizing, modifying, book
marking, transmission, storage and sharing of data and
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
Serial No. 87599035

- 2 -

information for use in the field of commodity trading, risk
and logistics management; computer software for the
visual reporting of data and information in the field of
commodity trading, risk and logistics management;
computer software that provides real-time, integrated
business management intelligence by combining
information from various databases and presenting it in an
easy to understand user interface; database management
software for the visual reporting of data and information in
the field of commodity trading, risk and logistics
management; downloadable software for the visual
reporting of data and information in the field of commodity
trading, risk and logistics management, in International
Class 9; and
Instruction sheets in the field of risk management, multi-
commodity supply, trading and risk management software
and services; manuals in the field of risk management,
multi-commodity supply, trading and risk management
software and services; publications, namely, brochures,
booklets, and printed teaching materials in the field of risk
management, multi-commodity supply, trading and risk
management software and services; computer user
manuals, computer program manuals, instruction manuals
and brochures, all the aforementioned goods for use in the
field of management of supply and trade transactions, risk
assessment and risk management, scheduling, inventory
management, logistics, settlement, trading, supply,
business analysis, contract and purchase and sales
management; publications, namely, brochures, booklets,
training manuals and printed teaching materials in the
field of management of supply and trade transactions, risk
assessment and risk management, scheduling, inventory
management, logistics, settlement, trading, supply,
business analysis and purchase and sales management, in
International Class 16.1

1 Serial No. 87599035 filed September 7, 2017, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
Serial No. 87599035

- 3 -

The description of the mark in the application reads as follows:
The mark consists of a stylized “O” design with generally
flat sides in the form of a diamond formed by dots of
different sizes followed by “OPENLINK” in stylized letters.
Color is not claimed as a feature of the mark.
The Examining Attorney refused to register Applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the registered mark reproduced below as to be likely to cause confusion:2

The description of the mark reads as follows:
The color(s) orange is/are claimed as a feature of the mark.
The mark consists of an orange circular kinesis design.3

2 Registration No. 4268314 registered January 1, 2013; Sections 8 and 15 declarations
accepted and acknowledged.
3 The Oxford English Dictionary (lexicon.com) defines “kinesis” as “movement, motion.”
September 1, 2020 Request for Reconsideration (TSDR 15).
Citations to the examination record refer to the USPTO Trademark Status and Document
Retrieval system (TSDR) by page number in the downloadable .pdf format.
Serial No. 87599035

- 4 -

The description of goods in the cited registration includes, inter alia, the goods
listed below:
Prerecorded CD-ROMs providing research and practical
engagement guidance for use by accounting professionals
in providing consulting services, namely, business
valuation, litigation support and fraud investigations for
their client; Computer programs for accessing a variety of
databases in the fields of business, law; Computer software
and instruction manuals for research and educational
purposes and information gathering, all sold as a unit for
use in the field of legal research; Computer software for
research and information gathering for use in the field[s]
of law; communications software to facilitate the transfer
of electronic data by providing access to databases which
provide information on business; computer operating
programs; computer programs for use in trading stocks and
bonds; computer software relating to the collection and
distribution of data, financial exchanges, share dealing,
stock dealing, financial transactions and news agencies, in
International Class 9; and
Printed publications, namely, books, magazines, journals,
directories, pamphlets and brochures containing reference
information on a variety of topics in the fields of finance,
investments, banking regulations, corporate ownership,
businesses, taxation and accounting and law; printed
reports featuring information about corporations and other
organizations in the public and private sectors; technical
reference manuals, newsletters and catalogs for use in the
areas of accounting, auditing, taxation and business
management; Publications, namely, books and journals, for
conducting legal research; non-fiction books, periodicals
and publications, namely, brochures, pamphlets and
magazines in the field of the provision of financial and
commercial information and news, and current affairs;
printed instructional and teaching material relating to
economic and financial information, computer software
and news and current affairs; photographic prints, in
International Class 16.
We based our determination under Section 2(d) on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
Serial No. 87599035

- 5 -

of confusion. 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. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
DuPont factor that is relevant or for which there is evidence of record. See In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
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.”). “[E]ach case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973).
“Not all DuPont factors are relevant in each case, and the weight afforded to each
factor depends on the circumstances. … Any single factor may control a particular
case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994,
2020 USPQ2d 10341, *3 (Fed. Cir. 2020). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1945-46 (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.”). See also In re i.am.symbolic, llc, 866 F.3d
Serial No. 87599035

- 6 -

1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but ‘may focus … on
dispositive factors, such as similarity of the marks and relatedness of the goods’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
I. The similarity or dissimilarity and nature of the goods.4
As noted above, Applicant is seeking to register its mark for, in part, computer
software for trading commodities and instruction sheets, manuals, and publications
in the field of trading commodities.
Registrant registered the mark in the cited registration for, inter alia, the
following products in International Class 9:
communications software to facilitate the transfer of
electronic data by providing access to databases which
provide information on business; … computer programs for
use in trading stocks and bonds; computer software
relating to the collection and distribution of data, financial
exchanges, share dealing, stock dealing, financial
transactions and news agencies.
And, the following products in International Class 16:
Printed publications, namely, books, magazines, journals,
directories, pamphlets and brochures containing reference
information on a variety of topics in the fields of finance,
investments, banking regulations, corporate ownership,
businesses, taxation and accounting and law; … magazines
in the field of the provision of financial and commercial
information …; … printed instructional and teaching
material relating to economic and financial information.

4 Applicant, in its brief, did not argue that the goods are not related.
Serial No. 87599035

- 7 -

“A commodity is a basic good used in commerce that is interchangeable with other
commodities of the same type.”5 Traditional examples of commodities include grain,
gold, beef, oil, and natural gas. Commodities have expanded to include financial
products, such as foreign currencies and indexes, as well as cell phone minutes and
bandwidth.6 “Investors and traders can buy and sell commodities directly in the spot
(cash) market or via derivatives such as futures and options.”7 “[S]ince commodities
do not typically trade in tandem with equity and bond markets, some commodities
can also be used effectively to diversify an investment portfolio.”8 Trading
commodities, like stocks and bonds, are financial transactions.
Registrant’s broad identification of goods – communications software providing
information on business and computer software relating to the collection and
distribution of data, financial exchanges and financial transactions – is broad enough
to encompass software in the field of commodities. Where an applicant or registrant
broadly identifies their products in an application or registration, we must presume
that the description of goods encompasses all products of the type identified. See In
re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (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); In re Hughes Furniture Indus.,

5 “Commodity,” Investopedia (investopedia.com) attached to the October 26, 2020 Denial of
the Request for Reconsideration (TSDR 22).
6 Id.
7 Id. at 23.
8 Id. at 24.
Serial No. 87599035

- 8 -

Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”).
Likewise, Registrant’s printed publications in the field of finance and investments
are broad enough to include Applicant’s publications in the field of trading
commodities.
In addition, the Examining Attorney submitted 15 copies of use-based, third-party
registrations for computer software for trading commodities, stocks, bonds, and other
financial transactions.9 Third-party registrations based on use in commerce that
individually cover a number of different goods might have probative value to the
extent that they serve to suggest that the listed goods are of a type that may emanate
from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). We list below representative
registrations, with relevant portions of their identifications of goods:
MARK REG. NO. GOODS
X_TRADER 2232001 Computer software for use in connection
with trading commodities, securities,
futures, options, equity and debt
instruments, currencies and foreign
exchange
TRADERSTUDIO 2948807 Computer software for us in trading in
financial markets, commodities, futures,
securities, options, including manuals
therefor

9 Id. at 43-65. See also March 1, 2020 Office Action (TSDR 11-32).
Serial No. 87599035

- 9 -

MARK REG. NO. GOODS
FXDD 3991011 Computer programs for trading
commodities, futures, options, equities,
debt instruments and foreign exchange
TRADE-X 4384401 Computer software for trading securities
and commodities
TORO 4608792 Computer software for trading securities
and commodities, including downloadable
electronic publications in the nature of
technical and operation guides in the field
of electronic trading of financial products

Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to every product listed in the description of goods. It is sufficient
for a refusal based on likelihood of confusion that the Examining Attorney establish
relatedness for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar,
Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]t is sufficient for finding a
likelihood of confusion if relatedness is established for any item encompassed by the
identification of goods within a particular class in the application.”).
Because the products in Registrant’s broad description of goods is broad enough
to include Applicant’s products, we find that the goods in both classes are in part
legally identical.
II. Established, likely-to-continue channels of trade and classes of
consumers.
Because the goods described in the application and the cited registration are in
part legally identical, we presume that the channels of trade and classes of
Serial No. 87599035

- 10 -

purchasers for those goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel
in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same).
III. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “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-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 comparing the marks, we are mindful that where, as here, the goods are in part
legally identical, the degree of similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012).
“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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). In this regard,
Serial No. 87599035

- 11 -

the marks “‘must be considered … in light of the fallibility of memory ….’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1
(CCPA 1977)). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. Geigy Chem. Corp. v.
Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Because the relevant goods are computer software
and publications in the field of trading commodities, stocks, and bonds, the average
customer is a consumer in the field of financial transactions and, presumably, that
consumer exercises a higher degree of purchasing care than a consumer or ordinary
commercial products.
For convenience, we reproduce the marks below:
Applicant’s Mark Registrant’s Mark

Applicant argues that the mark in its application differs from the mark in cited
registration specifically, but not limited to the fact, that Applicant’s mark includes
Serial No. 87599035

- 12 -

the word “openlink.”10 In addition, Applicant points out what it considers specific
differences in the design elements.11
Applicant’s Mark comprises dots of three different sizes
that are not arranged by size in any regular or predictable
manner. The dots in Applicant’s Mark have no pattern.
Also, no concentric circles appear in Applicant’s Mark. In
contrast, the Cited Mark is composed of five concentric
circles. Each concentric circle comprises dots of seven
different sizes that are arranged in a regular and
predictable gradation of size from larger to smaller to
larger to smaller to larger again.
The concentric circles in the Cited Mark are placed relative
to one another such that the largest dots of each circle are
offset slightly from the largest dots of the adjacent
concentric circle. This arrangement of dot sizes is highly
organized and gives the impression of swirling or spiraling
movement. Notably, the description of the Cited Mark in
Registration No. 4,268,314 is “an orange circular kinesis
design” (emphasis added). “Kinesis” is defined in the online
Oxford English Dictionary as “movement; motion.”
(Citation omitted). Unlike the Cited Mark, Applicant’s
Mark does not relate to and gives no impression of
movement or motion.
Moreover, the stylized “O” design in Applicant’s Mark has
generally flat sides and calls to mind a diamond shape. The
open space in the center of Applicant’s design also appears
diamond-like. In contrast, the Cited Mark has a
configuration of a true circle.12
When we compare the design elements, we analyze the similarity of the marks
based on their visual similarity. See In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044,
2047 (TTAB 1990). Undoubtedly, if consumers were to view the marks side by side

10 Applicant’s Brief, p. 6 (8 TTABVUE 10).
11 Applicant’s Brief, p. 5 (8 TTABVUE 9).
12 Id.
Serial No. 87599035

- 13 -

for comparison, consumers could detect specific differences and those differences
might be enough to distinguish one from the other. However, as indicated above,
“[t]he 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.”
When consumers see the marks at issue at different times on such similar goods,
the recollection of the first viewed mark will be a general impression likely without
the details noted by Applicant. Consumers do not tend to scrutinize marks’ details,
In re Info. Builders Inc., 2020 USPQ2d 10444, *6 (TTAB 2020), and must rely upon
their imperfect recollections thereof. In re Integrated Embedded, 120 USPQ2d 1504,
1513 (TTAB 2016). See also B.V.D. Licensing Corp. v. Body Action Design, Inc., 846
F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe,
does not indulge in such recognitional contortions but sees things as they are.”);
Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973) (differences in marks not likely to be recalled by consumers at spaced
intervals; purchasers do not engage in trademark dissection); In re Johnson Prods.
Co., 220 USPQ 539, 540 (TTAB 1983) (“studied analysis” of marks is unlikely to
occur).
What consumers will remember is a circular design composed of circles. In re Info.
Builders Inc., 2020 USPQ2d 10444, at *6 (“We note particularly that both designs
consist of a broken circle with three parallel lines or bars emanating from the top
Serial No. 87599035

- 14 -

right of the circle to the bottom left of the circle. Accordingly, when encountering
Applicant’s mark, consumers, given their general rather than specific impressions of
marks, may mistakenly believe Registrant’s design mark is being used in Applicant's
mark.”). See also Time Warner Ent. Co. L.P. v. Jones, 65 USPQ2d 1650, 1660 (TTAB
2002) (both marks consist of a “fanciful cartoon depiction of a roadrunner bird. In
terms of the marks’ overall commercial impressions, these basic similarities outweigh
any specific dissimilarities that might be apparent upon side-by-side comparison of
the marks, whether those dissimilarities are considered alone or in combination.”);
Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064, 1066
(TTAB 1984) (“While specific differences might be noted in a side-by-side comparison
of applicant’s and opposer’s leaping, running, feline animals, this fact is not
determinative.” … “[R]epresentations of large, wild, feline animals in what appear to
be running, leaping or stalking poses evoke commercial impressions similar to those
produced by opposer’s design marks….”).
With respect to the fact that Applicant’s mark includes the term “openlink,”
Applicant contends that “openlink” is the dominant part of Applicant’s mark because
consumers will refer to Applicant’s products as OPENLINK software.13 While we
acknowledge that the term “openlink” constitutes the dominant portion of Applicant’s
mark, the design is nonetheless a salient, distinctive feature of Applicant’s mark that
we must consider. In other words, the design element is an integral part of Applicant’s
mark.

13 Applicant’s Brief, p. 6 (8 TTABVUE 7) (citing Trademark Manual of Examining Procedure
§ 1207.01(c)(ii) (2018) (citing Viterra, 101 USPQ2d at 1911).
Serial No. 87599035

- 15 -

As noted above, when we compare Applicant’s mark with the mark in the cited
registration, we are of the opinion that the two designs have substantial visual
similarities. The similar designs render the marks more similar than dissimilar
because Registrant’s mark has no other elements to distinguish it from Applicant’s
mark. Accordingly, when encountering Applicant’s mark, consumers, given their
general rather than specific impressions of marks, may mistakenly believe
Applicant’s mark incorporates Registrant’s design mark, or consumers may perceive
the registered mark as a stylistically modified version of Applicant’s mark.
An individual relies on the recollection of the various marks that he or she has
previously seen in the marketplace, see, e.g., Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“Those who comprise the purchasing
public for these goods ordinarily must depend upon their past recollection of marks
to which they were previously exposed.”) (citation omitted), and, more frequently than
not, such recollection is not enhanced with minute details or specific characteristics
of the marks, but is determined by an overall or general impression of the many and
various marks that exist in the marketplace. Viewing the respective marks of
Applicant and Registrant from this standpoint, it is apparent, as discussed above,
that there are important resemblances in the overall design format and in the
commercial impression that they convey to customers.
We find Applicant’s mark is similar to the mark in the cited registration.
Serial No. 87599035

- 16 -

IV. The conditions under which and buyers to whom sales are made,
i.e., impulse vs. careful, sophisticated purchasing.
Applicant contends that the purchasers of Applicant’s goods and Registrant’s
goods will exercise a high degree of purchasing care.
Applicant’s Goods and Registrant’s Goods and Services will
be purchased by sophisticated professionals in the
commodities, financial, business, legal and/or information
technology fields who are knowledgeable about the goods
and services in their fields and the sources of these goods
and services. Such professional purchasers are likely to
carefully consider the features of the goods and services,
their professional needs and other considerations, before
making a purchase.14
“[I]n light of the inherent nature of the goods … involved, some degree of
purchasing care may be exercised by Applicant’s potential or actual consumers.” In
re Info. Builders Inc., 2020 USPQ2d 10444, at *4. Even though the relevant class of
buyers may exercise care in selecting software and publications in the field of trading
commodities, that “does not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar goods [or services]. ‘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) (quoting Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)) quoted in In re Info. Builders Inc., 2020 USPQ2d 10444 at *4).
Given the similarity of the marks, as well as the overlap in the goods and trade
channels, we find that the marks at issue are likely to confuse even careful

14 Applicant’s Brief, p. 10 (8 TTABVUE 14).
Serial No. 87599035

- 17 -

purchasers. See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043,
1063 (TTAB 2017) (citing Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d
1840, 1841-42 (Fed. Cir. 1990)). Given those similarities, “even careful purchasers
who do notice the difference in the marks will not ascribe it to differences in the source
of the goods, but will see the marks as variations of each other, pointing to a single
source.” In re I-Coat, 126 USPQ2d 1730, 1739 (TTAB 2018). Consequently, while this
DuPont factor weighs slightly against a likelihood of confusion, it is not outweighed
by the in-part identity of the goods and the similarity of the marks. See HRL Assoc.,
Inc. v. Weiss Assoc., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Assoc., Inc.
v. HRL Assoc., Inc., 902 F.2d 1546, 14 USPQ2d 1840. 1841-42 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods).
V. Conclusion
Because the marks are similar, the goods are in part legally identical and,
therefore, we presume they are offered in the same channels of trade to the same
classes of consumers, we find Applicant’s mark for, inter alia, software
and publications in the field of trading commodities is likely to cause confusion with
the registered mark for, inter alia, communications software providing
information on business, computer software relating to the collection and distribution
of data, trading stocks, financial exchanges and financial transactions, and
publications in those fields.
Serial No. 87599035

- 18 -

Decision: We affirm the Section 2(d) of the Trademark Act refusal to register
Applicant’s mark .