Sirios Capital Management, L.P.v.SIRI Capital LLC

Trademark Trial and Appeal Board

Aug 3, 2015

No. 91212193 (T.T.A.B. Aug. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: August 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sirios Capital Management, L.P.
v.
SIRI Capital LLC
_____

Opposition No. 91212193
to Application Serial No. 85779263
_____

Michael J. Bevilacqua and Barbara A. Barakat of Wilmer Cutler Pickering Hale and
Door for Sirios Capital Management, L.P.

Luke Brean of Breanlaw LLC for SIRI Capital LLC.
_____

Before Cataldo, Taylor and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

SIRI Capital LLC (“Applicant”) filed an intent-to-use application to register the
mark SIRI CAPITAL (in standard characters) for:
Financial Services, namely, consulting in the fields of Global
Investments, Alternative Investment Management, Alternative
Energy Investments, Socially Impacting Responsible Investments in
International Class 36.1

1 Application Serial No. 85779263 was filed on November 14, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 USC § 1051(b). “CAPITAL” is disclaimed.
Opposition No. 91212193
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Sirios Capital Management, L.P. (“Opposer”) opposes registration of Applicant’s
mark on the ground of likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). Opposer alleges that Applicant’s SIRI CAPITAL mark,
when used in connection with Applicant’s identified services, so resembles Opposer’s
earlier used and registered marks as to be likely to cause confusion, mistake or
deception in violation of Trademark Act § 2(d).
Opposer is the owner of Registration Nos. 2663642 for the mark SIRIOS
CAPITAL PARTNERS2, 2729463 for the mark SIRIOS3, 2735035 for the mark
SIRIOS OVERSEAS FUND4, and 2764552 for the mark SIRIOS CAPITAL
MANAGEMENT5 all reciting the following services:
financial services; namely, investment advisory services, investment
management services; and asset management services, all in the nature of
managing and investing the funds of others in private equity and high net
worth investment vehicles, hedge funds, stocks and mutual funds in
International Class 36.

2 Registration issued December 17, 2002, and has been renewed. “CAPITAL PARTNERS” is
disclaimed. Mark is in “typed” drawing format. Prior to November 2, 2003, “standard
character” drawings were known as “typed” drawings. A mark in typed format is the legal
equivalent of a standard character mark.
3 Registration issued June 24, 2003, and has been renewed. Mark is in “typed” drawing
format.
4 Registration issued July 8, 2003, and has been renewed. “OVERSEAS FUND” is
disclaimed. Mark is in “typed” drawing format.
5 Registration issued September 16, 2003, and has been renewed. “CAPITAL
MANAGEMENT” is disclaimed. Mark is in “typed” drawing format.
Opposition No. 91212193
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Applicant denied the salient allegations of the Notice of Opposition and it
alleged defenses, which it categorized as affirmative defenses, including lack of
likelihood of confusion, mistake or deception as to origin.6
I. The Record
By rule, the record includes Applicant’s application file and the pleadings.
Trademark Rule § 2.122 (b), 37 CFR § 2.122 (b). Additionally, Opposer introduced
the following testimony and evidence:
A. Opposer’s Evidence
Opposer’s First Notice of Reliance (12 TTABVUE 2-3)7:
Trial Ex. 1: U.S. Registration No. 2663642 for SIRIOS CAPITAL
PARTNERS (12 TTABVUE 4-10);

Trial Ex. 2: U.S. Registration No. 2764552 for SIRIOS CAPITAL
MANAGEMENT (12 TTABVUE 11-17);

Trial Ex. 3: U.S. Registration No. 2729463 for SIRIOS (12 TTABVUE
18-24); and

Trial Ex. 4: U.S. Registration No. 2735035 for SIRIOS OVESEAS
FUND (12 TTABVUE 25-31).

Opposer’s Second Notice of Reliance (12 TTABVUE 32-33):

Trial Ex. 5: Applicant Siri Capital LLC’s Responses to Opposer’s First
Set of Interrogatories 5, 7, 8, 9, 16 (12 TTABVUE 34-42);

6 Applicant’s defenses are not true affirmative defenses. They are amplifications of
Applicant’s denials of the allegations of likelihood of confusion. See Trademark Rule
2.106(b)(1), 37 CFR § 2.106(b)(1).
7 Record citations are to TTABVUE, the Board’s publically available docket history system.
See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Opposition No. 91212193
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Trial Ex. 6: Applicant Siri Capital LLC’s Supplementary Responses to
Opposer’s Request for Documents 2, 7, 15, 16 (12 TTABVUE 43-52);
and,

Testimony Deposition of Jeffrey Kimmel October 16, 2014, and accompanying
Exhibits 1-9 (13 TTABVUE).

Applicant did not submit any evidence or testimony, nor did it submit a trial
brief.
II. Standing and Priority
Opposer bears the burden of proving both standing to oppose and at least one
valid ground for refusal of registration. Ritchie v. Simpson, 170 F.3d 1092, 1095, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999); Sanyo Watch Co., Inc. v. Sanyo Electric Co.,
Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982). To establish standing in
an opposition, an opposer must show both “a real interest in the proceedings as well
as a ‘reasonable basis’ for his belief of damage.” Ritchie v. Simpson, 50 USPQ2d at
1025. Because Opposer has properly made its pleaded Registrations for the marks
SIRIOS CAPITAL PARTNERS, SIRIOS CAPITAL MANAGEMENT, SIRIOS, and
SIRIOS OVERSEAS FUND of record, it has established standing to oppose
registration of Applicant’s mark and its priority is not an issue as to those services
covered by the registrations. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 1402, 182 USPQ 108, 110 (CCPA 1974).
III. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of all of the relevant probative evidence in the record related to a likelihood
Opposition No. 91212193
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of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Pansardin
Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and services. See Federated
Foods, Inc., v. Fort Howard 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.”).
For purposes of our likelihood of confusion analysis, we focus on pleaded
Registration Nos. 2663642 (SIRIOS CAPITAL PARTNERS) and 2764552 (SIRIOS
CAPITAL MANAGEMENT). We find the marks in those registrations to be the
most relevant of Opposer’s pleaded registrations for our du Pont analysis. If we find
a likelihood of confusion as to these two registrations, we need not find it as to the
others. On the other hand, if we do not reach that conclusion, we would not find it
as to the other pleaded registrations. See Fiserv, Inc. v. Electronic Transaction
Systems Corp., 113 USPQ2d 1913, 1917 (TTAB 2015); In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of Services, Channels of Trade, Classes of Purchasers
Turning to the second du Pont factor, we look to the parties’ respective services
to determine their similarity or dissimilarity. Opposer’s services include:
“investment advisory services; investment management services . . . all in
the nature of managing and investing the funds of others in private equity
and high net worth investment vehicles, hedge funds, stocks and mutual
funds” (emphasis added)
Opposition No. 91212193
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while Applicant’s services include:
“consulting in the fields of Global Investments, Alternative Investment
Management . . . . ” (emphasis added).

On their face, Opposer’s “investment advisory” services and Applicant’s “consulting
in global investments” services include essentially the same services. This is
confirmed by the definitions, of which we take judicial notice,8 of the terms
“advisory” and “consulting.” The definition of “advisory” is:
“having or exercising power to advise,”9

with the definition of “advise” being:

“to give (someone) a recommendation about what should be done: to
give advice to.”10

Meanwhile, the definition of “consulting” is:
“providing professional or expert advice.”11
In view of the foregoing, both Applicant’s and Opposer’s services include providing
“advice” as to “investments.” Thus, consumers could utilize either Applicant’s
“consulting in global investments” services or Opposer’s “investment advisory”
services to aid them in making global investments. Accordingly, the parties’

8 The Board may take judicial notice of dictionary definitions, The University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB
2006).
9 http://www.meriam-webster.com/distionary/advisory.
10 http://www.meriam-webster.com/dictionary/advise.
11 http://www.merriam-webster.com/dictionary/consulting.
Opposition No. 91212193
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respective financial services in Class 36 as identified in Applicant’s application and
in Opposer’s registrations are legally identical in-part.
The evidence of record further confirms this finding. Applicant admits in its
Interrogatory responses that it will be “providing investment advice and related
financial services to consumers” and that its “customers are consumers with assets
seeking investment advice, particularly consumers interested in socially responsible
investments.” Applicant also admitted that its principal competitors “include other
firms providing investment advice to consumers.”12 Applicant’s marketing materials
for its Siri Systematic AlphaMining Fund, an investment fund marketed by
Applicant, provides information such as strategy, investment objectives and the
goals of the fund. It contains similar information to that which Opposer provides to
its investors and potential investors.13
We note that we have not addressed all of Applicant’s identified Class 36
services in finding that the parties’ services are similar. Opposer need not prove and
we need not find similarity as to each and/or all of the different services identified
in a single class in the application in order to sustain the opposition as to all of the
identified Class 36 services. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
209 USPQ at 988; Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482,

12 Opp. Tr. Ex. 5 Applicant’s Objections and Responses to Opposer’s First Interrogatories,
Responses to Interrogatory Nos. 8 and 16. (12 TTABVUE 34-35, 38, 39-40).
13 See Exhibits 5 (Sirios Capital Management promotional piece) (13 TTABVUE i104-i157)
and 8 (Siri Systematic AlphaMining Fund L.P. brochure produced in response to Request
for Production of Documents) (13 TTABVUE i21-i25) to Deposition of Jeffrey Kimmel (13
TTABVUE).
Opposition No. 91212193
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1492 n.30 (TTAB 2007); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 n.9 (TTAB 2004).
Turning to the channels of trade, there are no restrictions in the identifications
of services as to the parties’ respective channels of trade. The authority is legion
that the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application regardless of what the
record may reveal as to the particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the sales of goods are directed.
See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (citations omitted).
Because and to the extent that Applicant’s services as identified in the
application and Opposer’s services as identified in its registrations are in-part
legally identical, we presume and find that the trade channels and purchasers for
the respective services likewise are in-part legally identical. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding that the Board is
entitled to rely on this legal presumption in determining likelihood of confusion);
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002) (“absent restrictions in the application and registration, [related]
goods and services are presumed to travel in the same channels of trade to the same
class of purchasers”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846-47 (Fed. Cir. 2000) (substantial evidence supported Board determination
that parties’ goods would be offered to same purchasers in same channels of trade,
Opposition No. 91212193
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based on “identical in part” and otherwise closely related goods); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011).
Accordingly, these factors weigh in favor of a finding of likelihood of confusion.
B. Similarity of Marks
We next consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay, 73 USPQ2d at
1692. The test is whether the marks are sufficiently similar in their entireties such
that confusion is likely to result. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
Applicant’s mark SIRI CAPITAL incorporates the first four letters of the six
letters in the first word of Opposer’s marks, followed by the term CAPITAL, which
appears as the second word in Opposer’s two marks. Thus, Applicant’s SIRI
CAPITAL mark is very similar in sound and appearance to Opposer’s SIRIOS
CAPITAL MANAGEMENT and SIRIOS CAPITAL PARTNERS marks, particularly
in view of the descriptiveness of the terms “MANAGEMENT” and “PARTNERS.”
Additionally, to the extent that Applicant’s mark SIRI CAPITAL and Opposer’s
marks SIRIOS CAPITAL MANAGEMENT and SIRIOS CAPITAL PARTNERS are
used for at least some of the same services in the financial services industry, they
have the same connotation and commercial impression. While the term “CAPITAL”
Opposition No. 91212193
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has been disclaimed by both parties14 due to its descriptiveness in the financial
area, it contributes to the similarity of the marks when viewed in their entireties.
See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 223 USPQ 1281, 1283
(Fed. Cir. 1984).
The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether they are sufficiently similar in terms of
their overall commercial impression. We note that while we have placed the parties’
marks together for purposes of our discussion, consumers may not encounter the
marks in such proximity and must rely upon their recollections thereof. Viewing the
marks in their entireties, we find that consumers will perceive the marks SIRI
CAPITAL and SIRIOS CAPITAL MANAGEMENT and SIRIOS CAPITAL
PARTNERS as having the same meaning and engendering the same commercial
impression.
C. Fame
Fame for purposes of likelihood of confusion is a matter of degree that “varies
along a spectrum from very strong to very weak.” Palm Bay, 73 USPQ2d at 1694
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)).
Relevant factors include sales, advertising, length of use of the mark, market share,
brand awareness, licensing activities, and variety of goods bearing the mark. Coach
Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720
(Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896

14 The terms MANAGEMENT and PARTNERS in registrant’s marks have also been
disclaimed.
Opposition No. 91212193
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(Fed. Cir. 2000); see also Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[O]ur cases teach that the fame 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.”).
The party asserting that its mark is famous has the burden to prove it. Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)
(“It is the duty of a party asserting that its mark is famous to clearly prove it.”).
Inasmuch as there is only limited evidence of record regarding the strength of
Opposer’s marks, we accord them an ordinary scope of protection in our likelihood of
confusion analysis.
D. Customer Sophistication
We next consider the conditions under which and buyers to whom Applicant’s
and Opposer’s services are provided, i.e., “impulse” versus careful sophisticated
customers. Opposer does not dispute that “most investors in its funds are
financially sophisticated or that it is highly unlikely that a person or entity would
invest in one party’s fund with the mistaken belief that it was investing in the other
party’s fund.”15 Opposer also concedes that this is not likely to be a case in which
consumers will purchase Applicant’s services with a misunderstanding as to the
party with which it is conducting business.16 However, Opposer maintains that

15 Opp. Brf. p. 16 (14 TTABVUE 17).
16 Id.
Opposition No. 91212193
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initial interest confusion, and/or confusion of investors and the industry at points
prior to the point of actual investment, is particularly likely here given how
reputation is developed in the investment services industry and how Opposer
solicits potential investors and investment.17
We recognize that some of the purchasers of Applicant’s and Opposer’s services
could be expected to exhibit a degree of care and deliberation in the purchasing
decision. However, the identification of services is not restricted to such purchasers.
We thus must presume that the parties’ services are offered not only to such larger
institutional investors that may possess a high degree of sophistication, but also to
small private investors that may be less sophisticated in their purchasing decisions.
Additionally, to the extent that the parties’ services may be offered to and
purchased by sophisticated purchases, even careful purchasers are likely to be
confused by similar marks used in connection with the same or highly related
services. As recognized by our primary reviewing court, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks for similar services. In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403,
168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating
purchasers … are not infallible.”). Therefore, the fact that some purchasers may

17 Id.
Opposition No. 91212193
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exercise care before utilizing these services does not mean there can be no likelihood
of confusion.
In this case, the similarity between Applicant’s mark and Opposer’s marks, as
well as the relationship between the services as identified, outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc.,
12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision, and expensive
goods). Therefore, we find this factor to be neutral.
IV. Conclusion
Applicant’s mark SIRI CAPITAL is similar to Opposer’s marks SIRIOS
CAPITAL PARTNERS and SIRIOS CAPITAL MANAGEMENT. Additionally, based
on the in-part identical and otherwise related nature of the services set forth in the
application and in Opposer’s registrations, and the presumed in-part identical trade
channels and classes of customers, the du Pont factors of the similarity of the
services, trade channels and customers also favor a finding of likelihood of
confusion. It is sufficient to find likelihood of confusion as to the entire class if
likelihood of confusion is found with respect to use of the mark on any item in a
class that comes within the identification of services. To the extent that any other
du Pont factors for which no evidence or argument were presented may nonetheless
be applicable, we treat them as neutral.
Opposition No. 91212193
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Decision: The opposition to registration of the mark SIRI CAPITAL shown in
Serial No. 85779263 is sustained.