Stoxx AG

Trademark Trial and Appeal Board

Jan 24, 2017

No. 79174623 (T.T.A.B. Jan. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: January 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stoxx AG
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Serial No. 79174623
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Stewart J. Bellus of Collard & Roe P.C.,
for Stoxx AG.
Xheneta Ademi, Trademark Examining Attorney, Law Office 122,1
John Lincoski, Managing Attorney.
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Before Zervas, Ritchie, and Shaw,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Stoxx AG (“Applicant”) seeks registration on the Principal Register of the mark
TRU, in standard character format, for services identified in relevant part as
“provision of stock exchange information; financial services, namely, creation,
development, calculation, issuing, updating and rewriting of financial instruments,
securities, options, bonds, futures, forward contracts, funds and exchange traded

1 The case was reassigned to this Examining Attorney after the appeal was filed and Request
for Reconsideration was denied.
Serial No. 79174623
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funds; provision and supply of information and data in connection with stock
markets; provision and supply of financial information and information relating to
securities and indexes,” in International Class 36.2 The Trademark Examining
Attorney refused registration of Applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
applied to the identified services, so resembles the previously registered mark,
TRUE,3 also in standard character format, for, as relevant, “financial forecasting,” in
International Class 36, as to be likely to cause confusion, mistake, or to deceive. The
Examining Attorney also refused registration under Section 2(d) in view of the
previously registered mark, TRUE (and design), as shown below,4 for, “financial
services, namely ranking relative performance of investments, mutual funds and
hedge funds,” in International Class 36, and which is owned by a different registrant:

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for

2 Application Serial No. 79174623 was filed on August 17, 2015, under Section 66(a) of the
Trademark Act, claiming priority from International Registration No. 1269717. Other
services in other classes were not included in the final refusal to register.
3 Registration No. 3948976 issued April 19, 2011. The registration also includes services in
other classes which are not relevant to the refusal.
4 Registration No. 3357077 issued December 18, 2007. Sections 8 and 15 affidavits accepted
and acknowledged.
Serial No. 79174623
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reconsideration, the appeal was resumed. For the reasons discussed below, we affirm
the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 Company, 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont factors for which there were
arguments and evidence. The others, we consider to be neutral.
For purposes of our likelihood of confusion analysis, we focus on the most relevant
cited registration, Registration No. 3948976 (TRUE). We find this mark to be the
most relevant of cited registrations for our du Pont analysis. Accordingly, if we find a
likelihood of confusion as to this cited registration, we need not find it as to the other.
On the other hand, if we do not reach that conclusion, we would not find it as to the
other cited registration either. See In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
Serial No. 79174623
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The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In comparing the marks, we are mindful that the test is not whether the marks
can be distinguished when subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall commercial impression so
that confusion as to the source of the services offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
The entirety of the mark in Registration No. 3948976 is TRUE. Applicant’s mark
is TRU. Although there is no correct way to pronounce a trademark, it is most likely
that consumers would pronounce Applicant’s mark the same way as the mark in the
cited registration, with a hard “u” sound (and in the case of the mark in the cited
registration, in accordance with the typical rules of American English grammar, this
is followed by a silent “e.”). Thus, the marks are most likely to be pronounced the
same, as the word “true.” They thus also give the same commercial impression of
Serial No. 79174623
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providing “true” or accurate financial services as set forth in their respective
identifications. Finally, they have the same appearance, with Applicant’s mark just
deleting the final, silent, “e.” Thus the marks are substantially the same in sight and
commercial impression, and identical in sound.
Applicant argues that the term “TRUE” is very weak in International Class 36,
and thus the mark in the cited registration is entitled to a very narrow scope of
protection. To this end, Applicant submitted over one hundred live, use-based, third-
party registrations that include the term TRUE or TRU in the mark, with services in
International Class 36.5 We observe that evidence of third-party registrations is
relevant to “show the sense in which . . . a mark is used in ordinary parlance.” Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015), citing J. Thomas McCarthy, 2 McCarthy on Trademark and Unfair
Competition § 11:90 (4th ed. 2015); see also Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015).
A number of the third-party registrations submitted by Applicant include the term
TRUE or TRU combined with another term for financial or related services. See, for
example:
TRUAMERICA (Registration No. 4512682)
TRUBANK (Registration No. 4454604)
TRUFUND (Registration No. 4464063)
TRU STONE (Registration No. 3797088)
TRUE WIND (and design) (Registration No. 4982852)

5 We note that some of the registrations submitted by Applicant were not use-based, and
some were simply unregistered applications. We give these no consideration in our analysis.
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TRUE RATE (Registration No. 4830191) with “rate” disclaimed
TRUCOIN (Registration No. 4754576)
TRUWEST CREDIT UNION (and design) (Registration No. 4695589) with “credit
union” disclaimed
TRUECONNECT (Registration No. 4634293)
TRUECAST (Registration No. 4622552)
TRUBRIDGE (Registration No. 4404668)
TRUE VARIABLE ANNUITY (Registration No. 4256231) with “variable annuity”
disclaimed
TRUE BLUE (Registration No. 4576849)
TRUE HEDGE (Registration No. 4540281) with “hedge” disclaimed
TRUVISTA (Registration No. 4459104)
TRUFUND FINANCIAL SERVICES (Registration No. 4467823) with “financial
services” disclaimed
TRUFUND (Registration No. 4464063)
TRUE BALANCE (Registration No. 4464053)
TRUE LOCAL. TRUE BANKING (Registration No. 4291850) with “banking”
disclaimed
TRUE CREATIVE UNSTOPPABLE (Registration No. 4269630)
TRUE REWARDS (Registration No. 4228757) with “rewards” disclaimed
TRUPOINT (Registration No. 3916581)
TRUE GREEN CAPITAL (Registration No. 3913416) with “green capital” disclaimed
TRUMARK FINANCIAL (Registration No. 3082473) with “financial” disclaimed
TRUE MAIL (Registration No. 3490584) with “mail” disclaimed
TRUE VENTURES (Registration No. 3292050) with “ventures” disclaimed
TRUWEST (Registration No. 2867852)
TRUE EARNINGS (Registration No. 3225581)
TRUENORTH (Registration No. 3149332)
TRUELOAN (Registration No. 4526012)
TRUE TO YOUR MONEY (Registration No. 3867416)
TRUEPATH (Registration No. 3968551)
THE SEARCH FOR TRUE ADVISORS (Registration No. 3831882) with “advisors”
disclaimed
TRUE ADVISOR (Registration No. 3831739) with “advisor” disclaimed
TRUE PRICE (Registration No. 3846495) with “price” disclaimed
TRUE DIVERSIFICATION (Registration No. 3812954) with “diversification”
disclaimed
TRUE TO YOU (Registration No. 3768874)
TRUE FINANCIAL WEALTH MANAGEMENT FIRM (Registration No. 3373630)
with “financial wealth management firm” disclaimed

Serial No. 79174623
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Applicant further points out that Applicant itself was allowed to register STOXX
TRU6 for effectively the same services at issue in the current refusal. Finally,
Applicant notes the third-party registration for the stylized for payment
processing services (Registration No. 4357737). We find, based on the evidence of
record, that the term TRUE or TRU is suggestive of financial services in that
consumers will indeed likely look to other distinguishing terms. That said, there is
little to distinguish Applicant’s “TRU” from the mark “TRUE” in the cited
Registration No. 3948976. The sole absence of the final, silent letter “e” is insufficient
to distinguish the sight, sound or commercial impression. Indeed, absent the
inclusion of any other terms, design, or even stylization, Applicant’s mark TRU is
more similar to the mark in the cited Registration No. 3948976, TRUE, than are any
of the marks in the third-party registrations. In this regard, we keep in mind that
even weak marks are entitled to the presumptions of validity under Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b), and are entitled to protection against
registration of confusingly similar marks, especially where, as here, the evidence
shows that the marks are substantially similar and nearly identical. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus we find the marks overall to be substantially similar in sight, sound, and
commercial impression, and this first du Pont factor favors finding a likelihood of
confusion.

6 Registration No. 4962119, issued May 24, 2016, with a Section 2(f) claim as to “STOXX.”
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Services/Channels of Trade/Classes of Purchasers
We consider next the relatedness of the services. The cited Registration No.
3948976 identifies “financial forecasting.” Applicant identifies “provision of stock
exchange information; financial services, namely, creation, development, calculation,
issuing, updating and rewriting of financial instruments, securities, options, bonds,
futures, forward contracts, funds and exchange traded funds; provision and supply of
information and data in connection with stock markets; provision and supply of
financial information and information relating to securities and indexes,” which
would seem by its plain language meaning to include and incorporate “financial
forecasting.”
Applicant argues that there is no “per se” rule that the services are related.7 While
correct, we look to see if the services are of a type that consumers will believe they
emanate from a common source. In this regard, the Examining Attorney submitted
copies of use-based third-party registrations that include services of the type
identified in the application on the one hand, and services of the type identified in the
cited registration on the other hand. These include Registration No. 3124972
(Valleystone Credit Union (and design)); Registration No. 3522689 (T TENNESSEE
STATE BANK “YOUR KIND OF BANK” MEMBER FDIC (and design)); Registration
No. 4093031 (AMERICA’S WATCHDOG); Registration No. 428516 (BMO HARRIS);
Registration No. 4295127 (CONWAY MAKENZIE); Registration No. 4361323 (design
mark); Registration No. 4529525 (FINANCIAL SMARTNESS); Registration No.

7 7 TTABVUE 8.
Serial No. 79174623
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4611245 (DOMEYARD); Registration No. 4616693 (DREAMSPACE); Registration
No. 4628268 (CFOTODAY); Registration No. 4741099 (FINANCIAL HEALTH
INDEX); Registration No. 4803855 (MAKING COMMUNITIES GREAT); and
Registration No. 4963458 (EMPOWERING FINANCIAL WELLNESS). Copies of use-
based, third-party registrations may serve to suggest that the goods are of a type
which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993). Also, as noted, we find that Applicant’s “provision
and supply of information and data in connection with stock markets.” by its plain
language meaning includes and incorporates “financial forecasting.”
With regard to the channels of trade, in the absence of specific limitations in the
cited registration, we must presume that Registrant’s services will travel in all
normal and usual channels of trade and methods of distribution. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
1162 (Fed. Cir. 2014); see also In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992) (because there are no limitations as to channels of trade or classes of purchasers
in either the application or the cited registration, it is presumed that the services in
the registration and the application move in all channels of trade normal for those
services, and that the services are available to all classes of purchasers for the listed
services). Since there are no limitations on the channels of trade in Applicant’s
identification of services either, we must make the same presumption with regard to
Applicant’s services. There is no evidence of record to dispute these presumptions.
These du Pont factors favor a finding of likelihood of confusion.
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II. Conclusion on Likelihood of Confusion
On balance, after considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that despite suggestiveness of the
term “TRU,” the marks are substantially similar in sight and commercial impression
and identical in sound, and that the services are related and overlapping and would
be expected to travel through some of the same channels of trade to some of the same
consumers. We therefore find that Applicant’s mark TRU for the applied-for services
in International Class 36 is likely to cause confusion with the cited mark TRUE in
Registration No. 3948976 for “financial forecasting.”
Decision: The refusal to register Applicant’s mark for the services in
International Class 36 is affirmed.
The application will proceed to publication for the services in International
Classes 35, 41, and 42.