Prudential Insurance Company of Americav.Daryl Bank

Trademark Trial and Appeal Board

Apr 5, 2017

No. 91219616 (T.T.A.B. Apr. 5, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 5, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Prudential Insurance Company of America

v.

Daryl Bank
___

Opposition No. 91219616
___

David R. Barnard of Stinson Leonard Street LLP
for Prudential Insurance Company of America.

Daryl Bank, pro se.1
______

Before Mermelstein, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Daryl Bank (“Applicant”) seeks registration of ROCK SOLID INVESTMENT, in
standard characters (with INVESTMENT disclaimed), for:
Diamonds; Cut Diamonds in International Class 14;

Operating on-line marketplaces featuring precious stones;
Compilation, analysis and provision of information relating

1 Applicant’s counsel’s motion to withdraw, filed March 20, 2017, is granted. Applicant is
now representing himself. Petitioner’s change of correspondence address filed the same day
is noted, entered and also reflected above.
Opposition No. 91219616

2

to the trading of precious stones; Commercial and
industrial management assistance, in particular by means
of multimedia platforms in the field of online trading;
Providing business administration assistance for others in
the field trading in precious stones in International Class
35;

Commodities exchange services; Financial asset
management and investment services, namely trading,
hedging, providing valuation, and financial research and
consulting services in the field of precious stones; financial
services, namely, commodity trading; financial asset
management and brokerage services all relating to
commodities; financial information services provided
online from a computer database or a global computer
network, namely, providing information on trading in the
field of precious stones; Commodity trading; providing
information and data in the field of financial risk
management and trading; commodity trading for others,
namely, trading in precious stones; Providing financial
administration in the field trading in precious stones;
financial services, namely, on-line real time trading of
precious stones; financial analysis and research services in
International Class 36; and

Industrial research and analysis in the field of trading of
precious stones; providing information about computer
software for use in the field of precious stones exchange
trading; electronic storage and retrieval of information
relating to the trading of precious stones; authentication in
the field of precious stones traded via commodities
exchanges in International Class 42.2

In its notice of opposition, Prudential Insurance Company of America (“Opposer”)
alleges prior use (for more than 120 years) and registration of a purported “family” of
allegedly famous “ROCK and ROCK SOLID trademarks” for insurance and financial

2 Application Serial No. 86184144, filed February 4, 2014 under Section 1(b) of the
Trademark Act based on an alleged intent to use the mark in commerce.
Opposition No. 91219616

3

services.3 Opposer alleges as grounds for opposition that use of Applicant’s mark
would be likely to cause confusion with, and dilute, Opposer’s marks. In his answer
to the notice of opposition, Applicant “admits that [Opposer] is listed as the owner” of
its pleaded registrations, but otherwise denies the salient allegations in the notice of
opposition. Applicant also asserts a number of purported “affirmative defenses,”
which are in fact merely amplifications of his denials.
Procedural Background/Accelerated Case Resolution
On December 22, 2015, the Board issued an order denying without prejudice
Opposer’s motion for sanctions and suggesting that the parties engage in Accelerated
Case Resolution (“ACR”) (“Order Denying Sanctions”). 12 TTABVUE.4 More
specifically, the order proposed bifurcating Opposer’s likelihood of confusion and
dilution claims, and resolving the likelihood of confusion claim first, utilizing ACR.
The order pointed out that: (1) in likelihood of confusion cases “the most important
factors are typically the similarities between the parties’ marks and the relationship
between their respective goods or services”; (2) the parties’ marks are depicted on the
drawing pages of the involved application and pleaded registrations, “and no
additional evidence on [the similarity of the marks] factor is required”; (3) “we may
consider only the goods and services as set forth in the intent to use application, so

3 Registration Nos. 792738, 961764, 961765, 1121163, 1108211, 1443528, 1443527, 1452524,
1616000, 1576352, 2497700, 3428504, 3568475, 3844267, 3904843, 3908488 and 4392395.
4 Citations to the record reference TTABVUE, the Board’s online docketing system.
Specifically, the number preceding “TTABVUE” corresponds to the docket entry number, and
any number following “TTABVUE” refers to the page number of the docket entry where the
cited materials appear.
Opposition No. 91219616

4

no additional evidence on this factor is necessary”;5 (4) “absent trade channel
restrictions in the parties’ identifications of goods and services we must presume that
the parties’ goods and services move in all channels of trade normal for … goods and
services of that type, and that they are available to all classes of purchasers for those
goods and services”; and (5) “[i]f Opposer prevails on ACR, the opposition will be
sustained and registration to Applicant will be refused, making it unnecessary to
resolve” Opposer’s dilution claim. Id. at 7-8.
On September 28, 2016, the parties filed a stipulation to bifurcate Opposer’s
likelihood of confusion and dilution claims and resolve the likelihood of confusion
claim first, using ACR. 26 TTABVUE 1 (the “ACR Stipulation”). They also agreed
that the Board may “resolve all genuine disputes of material fact raised by the parties’
ACR briefs or the record,” and stipulated to certain facts. Id. at 1-2. Finally, the
parties stipulated, among other things, that: (1) “Applicant shall submit an
Unconsented Motion to Amend Application”; (2) “[e]ach party shall submit to the
Board its brief and evidence as if proceeding on summary judgment”; and (3)
“discovery requests and responses, discovery deposition transcripts, and exhibits and
attachments to all such documents are admissible and shall be entered into the record
by attachment to the party’s brief,” and that discovery depositions may be used as

5 The same is true with respect to Opposer’s pleaded registrations, but because Opposer also
pleads common law rights in its ROCK and ROCK SOLID marks, Opposer had the option to
introduce evidence of its use of these marks for goods or services which go beyond those
identified in the pleaded registrations.
Opposition No. 91219616

5

testimony. Id. at 2-4. The Board approved the ACR Stipulation on October 4, 2016.
27 TTABVUE.
Unconsented Motion to Amend Involved Application
On October 14, 2016, Applicant filed the previously-contemplated, and at the time
unconsented, motion to amend the involved application to limit certain identified
services to the field of “precious stones.” Specifically, Applicant proposes limiting the
identification of services in Classes 35 and 36 only as follows, with additions
underlined and deletions in strikethrough:
Operating on-line marketplaces featuring precious stones;
Compilation, analysis and provision of information relating
to the trading of precious stones; Commercial and
industrial management assistance, in particular by means
of multimedia platforms in the field of online trading in
precious stones; Providing business administration
assistance for others in the field trading in precious stones
in International Class 35; and

Commodities exchange services in the field of precious
stones; Financial asset management and investment
services in the field of precious stones, namely trading,
hedging, providing valuation, and financial research and
consulting services in the field of precious stones; financial
services, namely, commodity trading; financial asset
management and brokerage services all relating to
commodities; financial information services provided
online from a computer database or a global computer
network, namely, providing information on trading in the
field of precious stones; Commodity trading of precious
stones; providing information and data in the field of
financial risk management and trading in the field of
precious stones; commodity trading for others, namely,
trading in precious stones; Providing financial
administration in the field trading in precious stones;
financial services, namely, on-line real time trading of
precious stones; financial analysis and research services in
International Class 36.
Opposition No. 91219616

6

While Opposer did not originally consent to the proposed amendment, in its ACR
Brief, Opposer “provides its consent … for the Board to decide the likelihood of
confusion issue based on such amended recitation of services.” 29 TTABVUE 12.
Accordingly, because the amendment is limiting in nature as required by Trademark
Rule 2.71(a), and Opposer consents thereto, the amendment is approved and entered.
See Trademark Rule 2.133(a).
The ACR Record and Impact of the Order Denying Sanctions
The record consists of the pleadings, the “Stipulation as to Facts” included in the
ACR Stipulation and, by operation of Trademark Rule 2.122(b), the file of Applicant’s
involved application. In addition, and pursuant to the ACR Stipulation, Opposer
introduced the following evidence with its ACR Briefs:
copies of its pleaded registrations and Applicant’s involved
application (29 TTABVUE 26-172);

dictionary definitions (id. at 173-176);

website printouts from Fortune magazine, Fox Business
and CNBC (id. at 177-198);

Prudential Financial, Inc.’s Form 10-K Annual Report for
2015 filed with the Securities and Exchange Commission
(31 TTABVUE 21-374);

Opposer’s Deferred Compensation Plan effective December
1, 2015 (id. at 375-430);

printouts from the Prudential Investments website (id. at
431-33);

a copy of Opposer’s unpleaded Registration No. 2075860
(id. at 434-38);

Opposition No. 91219616

7

portions of the transcript of Opposer’s discovery deposition
of Applicant (id. at 439-448);

printouts from the Dominion Investment Group’s website
and LinkedIn page (id. at 449-454 and 458-465);

printouts from the websites of the Virginia State
Corporation Commission and Division of Corporations of
the Florida Department of State concerning Dominion
Diamonds LLC (id. at 455-457 and 466-467); and

a copy of the Complaint filed in Case No. 2:15-cv-00609—
SMM in the U.S. District Court for the District of Arizona
(id. at 468-501).

Applicant introduced the following evidence with its ACR Brief:
Applicant’s ACR testimony (via declaration6) (30
TTABVUE 2-5);

printouts of state insurance laws and regulations (id. at 6-
301); and

third-party insurance company and association rules and
guidelines (id. at 302-341).

The parties have different interpretations of the Order Denying Sanctions.
Opposer argues that the Order Denying Sanctions “made clear” that we “would only
consider evidence related to the first two du Pont factors,” based on the following
statements therein:
the most important factors [in a likelihood of confusion
analysis] are typically the similarities between the parties’
marks and the relationship between their respective goods
or services; and

Similarly, in assessing the similarities between the parties’
goods and services we may consider only the goods and

6 The declaration is executed “[p]ursuant to 28 U.S.C. § 1746,” but bears the heading
“Affidavit of Daryl Bank.”
Opposition No. 91219616

8

services as set forth in the intent to use application, so no
additional evidence on this factor is necessary. We may not
consider any evidence regarding the particular nature of
Applicant’s goods and services, the particular channels of
trade, or the classes of purchasers to which sales of the
goods or services are directed. See Octocom Syst. Inc. v.
Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).7

29 TTABVUE 14 (quoting 12 TTABVUE 7-8). Applicant argues, however, that “the
Board did not intend its language [in the Order Denying Sanctions] to be taken as a
restriction on Applicant’s ability to make arguments in its ACR Brief,” pointing out
that footnote 5 of the Order specifically “recognizes that the parties may submit
evidence probative of additional DuPont factors.” 30 TTABVUE 350-351 (quoting 12
TTABVUE 7 n.5).
Applicant is correct. While the first two du Pont factors are the most important in
this case as in many cases, that does not mean that other factors may not be more
important in particular cases (they sometimes are), or that even where, as here, the
first two factors are the most important, that other factors are not relevant. In any
event, footnote 5 of the Order Denying Sanctions clarifies that we will consider all
evidence relevant to the du Pont likelihood of confusion factors.
Standing and Priority
Opposer’s pleaded registrations establish its standing. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed.

7 Opposer did not in fact quote the first sentence of this passage (“Similarly, in assessing the
similarities …”) or include the case cite to Octocom. We have included both for context.
Opposition No. 91219616

9

Cir. 2000). And priority is not at issue with respect to the services identified in those
registrations. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). In any event, “Applicant does not contest Opposer’s
standing,” 30 TTABVUE 349, nor does it claim priority.
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 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
(CCPA 1976). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We
consider the likelihood of confusion factors about which the parties introduced
evidence or presented argument, and treat the remaining factors as neutral.
We focus our analysis on two of Opposer’s pleaded registrations:
ROCK SOLID in typed form for “… portfolio asset
management; the purchase and sale of real estate,
securities and commodities for others or in connection with
fund management; and securities and commodities
brokerage services and underwriting services.”8

ROCK SOLID RETIREMENT in standard characters for
“… investment advisory and management services; asset

8 Registration No. 1443527, issued June 16, 1987; renewed.
Opposition No. 91219616

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management services … investment consultation services
… commodities brokerage services ….”9

If we find confusion likely between these marks and Applicant’s mark, we need not
consider the likelihood of confusion between Applicant’s mark and Opposer’s other
pleaded marks. On the other hand, if we find no likelihood of confusion between
Applicant’s mark and these marks, we would not find confusion between Applicant’s
mark and Opposer’s other pleaded marks. See Rocket Trademarks Pty Ltd. v. Phard
S.p.A., 98 USPQ2d 1066, 1073 & n.14 (TTAB 2011); In re Max Capital Grp. Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
Opposer Has Not Established Ownership of a “Family” of Marks, or Fame
Opposer’s evidence consists primarily of definitions of the terms comprising the
parties’ marks, the registrations and application at issue, information about the
relationship between the parties’ goods and services and Applicant. Not surprisingly,
its evidence is not sufficient to establish either that it owns a “family” of marks or
that any of its marks are famous.
“[F]ame of a mark may be measured indirectly, among other things, by the volume
of sales and advertising expenditures of the goods traveling under the mark, and by
the length of time those indicia of commercial awareness have been evident.” Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002). Other relevant factors include “length of use of the mark, market share, brand
awareness, licensing activities, and variety of goods bearing the mark.” Coach

9 Registration No. 3428504, issued May 13, 2008; Section 8 affidavit accepted.
Opposition No. 91219616

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Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed.
Cir. 2012). Here, Opposer has not introduced evidence of sales or advertising
expenditures, market share, brand awareness or licensing activities. It has therefore
not met its burden to “clearly prove” fame. Id. Leading Jewelers Guild, Inc. v. LJOW
Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).10
Similarly, while Opposer pleaded ownership of a “family” of marks, it did not prove
it. Indeed
in order to establish ownership of a family of marks it must
be shown by competent evidence “first, that prior to the
entry into the field of the opponent’s mark, the marks
containing the claimed ‘family’ feature or at least a
substantial number of them, were used and promoted
together by the proponent in such a manner as to create
public recognition coupled with an association of common
origin predicated on the ‘family’ feature ….”

Marion Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218 (TTAB
1988) (quoting Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983)). See
also Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1657 (TTAB

10 The references in Applicant’s ACR Brief to “the fame enjoyed by Opposer (known for selling
insurance products),” and Opposer being “well-known – for selling insurance,” 30 TTABVUE
365-66, are not sufficient for us to find that any of Opposer’s specific pleaded marks are
famous. In any event, “[u]nder no circumstances, may a party’s opinion, earlier or current,
relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire
record.” Cf. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 929, 198
USPQ 151, 154 (CCPA 1978); see also, In re Hester Industries, Inc., 230 USPQ 797, 798 (TTAB
1986) (“we are not bound by the applicant’s conclusions on [descriptiveness] any more than
we are by the Examining Attorney’s”); Harco Labs.,, Inc. v. Decca Navigator Co., 150 USPQ
813, 814 n. 2 (TTAB 1966). ”Statements in a brief cannot take the place of evidence.” In re
Simulations Publ’ns. Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); see also Galen
Med. Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004); In re Teledyne
Indus., Inc., 696 F.2d 968, 217 USPQ 9, 11 (Fed. Cir. 1982).

Opposition No. 91219616

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2010) (“opposer has not established that it had a family of marks prior to applicant’s
first use of its mark. Therefore, the likelihood of confusion analysis will be based
solely on the use of the individual marks in opposer’s registrations”). Here, there is
no evidence that Opposer’s ROCK/ROCK SOLID marks were “used and promoted
together in such a manner as to create public recognition coupled with an association
of common origin predicated on the ‘family’ feature.” Marion Labs., 6 USPQ2d at 1218
(emphasis added). We therefore consider Opposer’s pleaded marks individually.
The Goods and Services and Channels of Trade
Applicant’s amended identification limits his Class 35 and 36 services to the field
of “precious stones.” Opposer’s evidence reveals that diamonds, a type of precious
stone, are increasingly desired and perceived as being suitable for investment
purposes:
A Fortune article, “For investors, diamonds might be the
new gold,” states that “now investors are setting their
sights on another precious material: diamonds.” The article
goes on to discuss “the potential of diamonds to become a
veritable asset class,” and states that they “may eventually
be available to investors via funds.” According to the
article, “[i]n March 2013, a group of hedge fund traders
launched the Los Angeles-based Investment Diamond
Exchange, where investors can buy physical diamonds
(with no intention of making them into jewelry) … And in
September, a Chicago company called GemShares
announced a partnership with the Nasdaq OMX Group to
develop the GemShares Global Investment Grade
Standard Diamond Basket Index, which could be used to
create an exchange traded fund backed entirely by real
diamonds.”11

11 Fortune.com, Feb. 19, 2014.
Opposition No. 91219616

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A Fox Business article, “Is Investing in Diamonds Smart or
a Fool’s Game?,” states that diamonds “are beginning to
attract wealthy investors as a commodity investment with
potentially high returns,” and that “companies are
emerging with plans to replicate the success of gold and
silver by developing diamond-backed exchange-traded or
mutual funds.” The article indicates that in addition to
GemShares, a company named Index IQ is attempting to
develop an ETF, or exchange-traded fund, “based on the
value of the gemstone.”12

A CNBC article, “How to Invest in Diamonds,” provides
tips for diamond investment, including: “You should
establish a relationship with a sophisticated investment
diamond advisor knowledgeable in the nuance of diamond
quality as well as international diamond pricing and
markets. Your investment advisor should also have direct
buy/sell trading access to the global diamond markets in
order to ensure fair market value bid/ask pricing.”13

29 TTABVUE 178-179, 183-186 and 194-195. This evidence establishes that
diamonds are assets, and specifically commodities, in which people may invest or seek
to invest.
As a result, Opposer’s services identified as “the purchase and sale of …
commodities for others” and “commodities brokerage services” in the ROCK SOLID
registration, as well as “commodities brokerage services” in the ROCK SOLID
RETIREMENT registration, encompass, or at the very least are closely related to,
Applicant’s services identified as “operating on-line marketplaces featuring precious
stones” in the amended identification of Class 35 services. Similarly, these same
services identified by Opposer in its ROCK SOLID and ROCK SOLID RETIREMENT

12 Foxbusiness.com, Sept. 24, 2013.
13 CNBC.com, Aug. 24, 2012.
Opposition No. 91219616

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registrations encompass, or are at the very least closely related to Applicant’s services
identified as “commodities exchange services in the field of precious stones,”
“commodity trading of precious stones” and “commodity trading for others, namely,
trading in precious stones” in the amended identification of Class 36 services.
Notwithstanding Applicant’s argument to the contrary, Opposer’s services identified
as “the purchase and sale of … commodities for others” and “commodities brokerage
services” are not limited to intangible financial instruments, nor are they limited in
any way which would exclude services in the field of precious stones, which may be
commodities, assets and investments.
Even if Opposer’s commodities brokerage and purchase and sale services did not
encompass some of Applicant’s services, it is settled that the parties’ services need
not be identical or even competitive in order to support a finding of likelihood of
confusion. It is enough that the services are related in some manner or that the
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used, to a mistaken belief that Applicant’s and Opposer’s services originate
from or are in some way associated with the same source or that there is an
association between the sources of the services. Hilson Research, Inc. v. Soc’y for
Human Res. Mgmt., 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507
(TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB
1978); In re Int’l Tel. & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue
Opposition No. 91219616

15

is not whether purchasers would confuse the services, but rather whether there is a
likelihood of confusion as to the source of the service. In re Rexel Inc., 223 USPQ 830,
832 (TTAB 1984). Here, both Applicant and Opposer identify commodities-related
services, including the purchase and sale of commodities, which can include precious
stones. Accordingly, there is a relationship between Opposer’s services and
Applicant’s Class 35 and 36 services.
As for channels of trade, while Applicant’s services are limited to the field of
precious stones, Opposer’s commodities brokerage services are unlimited with respect
to channels of trade. We must therefore presume that Opposer’s commodities
brokerage services could be targeted to customers interested in precious stones,
including the same customers participating in Applicant’s “on-line marketplaces
featuring precious stones” or customers to which Applicant offers “commodities
exchange services in the field of precious stones” or “commodity trading of precious
stones.” Stone Lion Capital, 110 USPQ2d at 1162; Citigroup Inc., 98 USPQ2d at 1261;
In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). This factor also weighs in favor of a finding of likelihood
of confusion with respect to Applicant’s Class 35 and 36 services.
However, there is no evidence that any of Opposer’s services are related to
Applicant’s Class 14 goods (diamonds) or Class 42 services (industrial research and
analysis, providing information, electronic storage and retrieval and authentication
services). Accordingly, these factors weigh against a finding of likelihood of confusion
with respect to Applicant’s Class 14 goods and Class 42 services.
Opposition No. 91219616

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The Marks
The marks are quite close “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). In fact, Applicant has incorporated the entirety
of Opposer’s ROCK SOLID mark, adding to it only the descriptive and disclaimed
term INVESTMENT. When applicants add terms to previously-registered marks,
likelihood of confusion is often found. See e.g. Coca-Cola Bottling Co. v. Jos. E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (confusion
found likely between BENGAL and BENGAL LANCER & Design for related goods);
International Paper Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA
1972) (DATA for “writing, typewriter and printing paper” likely to be confused with
DATA-SPEED for “paper sold in bulk rolls or bulk reams for conversion only into
business forms”); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB
2014) (PRECISION likely to be confused with PRECISION DISTRIBUTION
CONTROL); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS
MVP for casino services likely to be confused with MVP for casino services offered to
preferred customers identified by special identification cards); In re Rexel Inc., 223
USPQ 830, 832 (TTAB 1984) (“we are firmly of the opinion that purchasers who
encounter applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s ‘GOLIATH’
large diameter woodcased pencils are likely to believe … that both products emanate
from or are in some way associated with the same source”); Johnson Publishing Co.
Opposition No. 91219616

17

v. International Development Ltd., 221 USPQ 155 (TTAB 1982) (EBONY for cosmetics
likely to be confused with EBONY DRUM for hairdressing and conditioner).
Confusion is especially likely here, because Applicant added the merely
descriptive or generic and disclaimed term INVESTMENT to Opposer’s mark.
Cunningham, 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has noted
that the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”); In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009) (BINION’S, not disclaimed descriptive word ROADHOUSE, is dominant
element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (disclaimed descriptive matter is often “less significant in creating
the mark’s commercial impression”).
As a result, consumers familiar with Opposer’s ROCK SOLID mark for portfolio
asset management, fund management and commodities brokerage services could
believe that Applicant’s mark reflects a brand extension into investment, asset
management and commodities exchange services in the field of precious stones.
Similarly, consumers familiar with Opposer’s ROCK SOLID RETIREMENT mark,
aware that retirement planning often involves preparations to sustain people
financially after they stop working, could very well believe that Applicant’s mark
reflects an expansion from Opposer’s investment advisory and management services,
and investment consultation and brokerage services into other types of investment-
related services, specifically related to precious stones.
Opposition No. 91219616

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Such misimpressions are especially likely in this case because consumers are
likely to focus on the first part of Applicant’s mark, which is identical to Opposer’s
ROCK SOLID mark and the first part of Opposer’s ROCK SOLID RETIREMENT
mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”); see also Palm Bay Imports, 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 Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will
first notice the identical lead word).
While Applicant is of course correct that we must consider the entirety of his
mark, including the term INVESTMENT, and we have done just that, that term is
nevertheless entitled to less weight in our analysis for the reasons provided, and not
enough to avoid a likelihood of confusion. This is so despite Applicant’s evidence, and
vigorous argument in his brief, that the term INVESTMENT “is prohibited by the
proper governmental authorities from being used when advertising insurance.” 30
TTABVUE 353.14 Indeed, Opposer’s marks are not only registered for insurance-
related services, but also for commodities brokerage, portfolio asset management,
fund management and investment advisory and consultation services, so Applicant’s
argument that consumers will assume that Opposer offers only insurance-related

14 Applicant’s ACR Brief at 8.
Opposition No. 91219616

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products and services is baseless. Moreover, Applicant’s evidence concerning
prohibitions on use of the term INVESTMENT when “advertising insurance” is
simply irrelevant to Opposer’s offer and promotion of these non-insurance services.15
The issue before us is whether relevant consumers would be confused, but Applicant
has presented no evidence (other than a conclusory testimonial declaration)16
suggesting that those consumers are familiar with regulations on use of the term
INVESTMENT.
Other Factors
Although the involved application is based on an intent to use the mark in
commerce, Applicant claims that it has in fact been using its mark for unspecified
goods and services since February 2014 “without any evidence of actual confusion.”
30 TTABVUE 383. This is not persuasive in the absence of evidence showing how and
the extent to which Applicant has used its mark, or for which goods or services. In
other words, we cannot gauge whether or the extent to which there has been an
opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v.

15 Opposer’s identification of services separates its identified commodities brokerage, asset
and fund management and investment advisory and consultation services from its insurance
services with semicolons. Thus, these non-insurance services stand alone, and must be
considered entirely separate from Opposer’s insurance-related services. In re Midwest
Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (“Under standard
examination practice, a semicolon is used to separate distinct categories of goods or
services.”).
16 Applicant’s declaration testimony on this point is, in its relevant entirety, that “It is well
known in the financial services industry that the words ‘investment’ or ‘investment plan’
cannot be used when advertising or selling financial products such as life insurance,
annuities, and the like.” 30 TTABVUE 3-4 (Bank Declaration ¶ 3). Even if credited and
supported, this testimony only refers to those in the undefined “financial services industry,”
rather than all potential consumers of Opposer’s services; furthermore, it only relates to
Opposer’s insurance-related services, which are not our focus in this decision.
Opposition No. 91219616

20

E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The
absence of any showing of actual confusion is of very little, if any, probative value
here because (1) no evidence was presented as to the extent of ETF’s use of the
VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, “it is
unnecessary to show actual confusion in establishing likelihood of confusion.” Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983). This factor is neutral.
Finally, we accept Applicant’s argument that consumers of the parties’ services
will exercise care in purchasing. This factor weighs against a finding of likelihood of
confusion, but we find it outweighed by the other factors with respect to Applicant’s
services in Classes 35 and 36.
Conclusion
The parties’ marks are quite similar, and Applicant’s services in Classes 35 and
36 are closely related to if not encompassed by some of Opposer’s services, and the
channels of trade for those services overlap. These factors all outweigh the
sophistication of the relevant consumers such that confusion is likely with respect
Applicant’s services in Classes 35 and 36. However, because there is no evidence that
Applicant’s goods in 14 or services in Class 42 are related to Opposer’s services, or
that their channels of trade and classes of purchasers overlap, these factors outweigh
the similarity of the marks, and confusion is unlikely with respect to Applicant’s Class
14 goods and Class 42 services.
Opposition No. 91219616

21

Decision: The opposition is sustained and registration of Applicant’s mark is
refused with respect to Applicant’s services (as amended) in International Classes 35
and 36 under Section 2(d) of the Trademark Act. Opposer’s likelihood of confusion
claim is dismissed with respect to Applicant’s goods in International Class 14 and
services in International Class 42.
Opposer is allowed until THIRTY DAYS from the mailing date of this order to
file and serve a document indicating whether it wishes to pursue its dilution claim
against Applicant’s International Class 14 goods and International Class 42 services,
failing which the opposition will be dismissed with respect to those goods and
services. In the event Opposer elects to pursue its dilution claim, it shall indicate in
its filing whether it will also try that claim via ACR, and provide an appropriate
stipulation.