Tardus America LLC

Trademark Trial and Appeal Board

Aug 31, 2006

No. 76557678 (T.T.A.B. Aug. 31, 2006)

Mailed: 8/31/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tardus America LLC
________

Serial No. 76557678
_______

Bryce K. Earl of Santoro, Driggs, Walch, Kearney, Johnson &
Thompson for Tardus America LLC.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Drost and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Tardus America LLC to
register the mark MONEYWISE for “computer software for use
in the fields of financial, real estate and insurance
management, planning and education; computer software for
accessing, facilitating, conducting, analyzing, tracking,
maintaining, updating or reporting banking, loan, credit
line, cash flow, investment, real estate, charity and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76557678
2
insurance transactions, records and information; computer
software for electronic funds transfer” in Class 9.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), on the ground that applicant’s mark, if used in
connection with applicant’s goods, would so resemble the
previously registered mark MONEYWISE for “investment
services, namely, asset allocation investment management”
in Class 362 as to be likely to cause confusion. The
examining attorney also found the identification of goods
to be indefinite, and made final a requirement to submit an
acceptable identification.
When the refusal and the requirement were made final,
applicant appealed. Applicant and the examining attorney
filed briefs.
Identification of Goods
We turn first to the examining attorney’s requirement
that applicant submit an acceptable identification of
goods. The identification of goods, as originally worded,
reads as follows:
computer software for use in the fields
of financial, real estate and insurance
management, planning and education;

1 Application Serial No. 76557678, filed November 5, 2003,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 2606260, issued August 13, 2002.
Ser No. 76557678
3
computer software for accessing,
facilitating, conducting, analyzing,
tracking, maintaining, updating or
reporting banking, loan, credit line,
cash flow, investment, real estate,
charity and insurance transactions,
records and information; computer
software for electronic funds transfer.

The examining attorney states that the terminology
“computer software for use in the fields of financial, real
estate and insurance management, planning and education” is
unacceptable as indefinite. More specifically, the
examining attorney asserts, “when the identification of
goods includes computer software, the applicant must
specify the function of the software, e.g., for use in
database management, for use as a spreadsheet, for word
processing, etc. and, when software is content- or field-
specific, the field of use.” (Appeal Brief, unnumbered p.
5). The examining attorney also maintains that the use of
“or” in the identification is indefinite.
Applicant consistently argued during prosecution that
the identification was definite in all respects,
highlighting several third-party registrations with
identifications of goods virtually identical to applicant’s
identification that the examining attorney finds
unacceptable. In its appeal brief, applicant maintains
that the identification is acceptable. In the alternative,
Ser No. 76557678
4
however, applicant indicates its willingness to amend the
identification of goods.3 (Appeal Brief, p. 23). Applicant
proposes the following identification (changes highlighted
in bold):
computer software for accessing,
facilitating, manipulating, analyzing,
tracking, maintaining, updating and
reporting data in the fields of
financial, real estate and insurance
management, planning and education;
computer software for accessing,
facilitating, conducting, analyzing,
tracking, maintaining, updating and
reporting banking, loan, credit line,
cash flow, investment, real estate,
charity and insurance transactions,
records and information; computer
software for electronic funds transfer.

The examining attorney, in her brief, is curiously
silent on applicant’s proposed amendment. The examining
attorney merely reiterates her earlier remarks in pointing
out the deficiencies in the original identification of
goods. Although we recognize that applicant proposed the
alternative amendment at a very late juncture, the
examining attorney should have, at the very least,
addressed it, especially here when the alternative

3 For future reference, applicant’s attention is directed to TBMP
§ 1205.01 (2d ed. rev. 2004) which indicates, in relevant part,
that if, at the time applicant files its appeal brief, it also
wishes to amend its application in order to attempt to comply
with a final requirement, the proper procedure is to file a
request for remand and a request to suspend proceedings in the
appeal pending the Board’s decision on the request for remand.
Ser No. 76557678
5
amendment responds to all of the examining attorney’s
concerns.4
We find that the original identification of goods is
indefinite for the reasons indicated by the examining
attorney. We further find, however, that the proposed
identification, as set forth in the appeal brief, is
acceptable.
Accordingly, applicant’s amended identification of
goods is accepted and entered in the application file.
This amended identification will be the one used to compare
applicant’s goods with registrant’s services.
The requirement to submit an acceptable identification
of goods is moot.
Likelihood of Confusion
In appealing the final refusal, applicant argues that
the examining attorney restricted her likelihood of
confusion analysis to the first two du Pont factors,
failing to address other relevant factors. More
specifically, applicant points to the following factors

4 For future reference, the examining attorney’s attention is
directed to TBMP § 1205.01 (2d ed. rev. 2004), which addresses
the situation where an applicant includes an amendment as part of
its brief. In the event that the Board does not note the
amendment (as is the case herein given that the amendment was not
made by a separate paper but rather was buried at the end of the
brief), the examining attorney, upon reviewing applicant’s brief,
may consider the amendment. If the examining attorney allows it,
the amendment will be entered.
Ser No. 76557678
6
that, applicant contends, are in its favor: the weakness
of the cited registered mark; the sophistication of
purchasers; the dissimilar trade channels; the lack of fame
of the registered mark; the absence of actual confusion;
and the de minimis nature of any potential confusion. In
support of its arguments, applicant submitted, in pertinent
part, a printout of a summary from the USPTO’s TESS
database; photocopies of certain third-party registrations;
copies of two Board prior decisions; excerpts of
registrant’s website; and the declaration of one of its
attorneys.
The examining attorney highlights the fact that the
involved marks are identical, and that applicant’s goods
and registrant’s services feature the field of financial
investments. Thus, the examining attorney concludes,
consumers familiar with registrant’s services would be
likely to believe that applicant’s software emanates from
the same source.
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.
Ser No. 76557678
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Cir. 2003). In any likelihood of confusion analysis,
however, 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).
In the present case, the marks are identical in all
respects. That is, applicant’s and registrant’s MONEYWISE
marks are identical in sound, appearance, meaning and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
Use of identical marks is a fact which “weighs heavily
against applicant.” In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 165, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993).
In considering the involved marks, we have taken into
account the third-party registrations of MONEYWISE marks.
We readily recognize the suggestiveness of the term
“moneywise” in relation to the involved goods and services.
The third-party registration evidence, however, does not
persuade us that confusion is not likely. With respect to
Ser No. 76557678
8
the TESS printout, this list does not show the goods and/or
services covered by the registrations and applications.
Therefore, the list, standing by itself, has extremely
limited probative value, since we cannot determine whether
the marks are for goods and/or services similar to those of
applicant and registrant.5 See TBMP § 1208.02 (2d ed. rev.
2004) [“The Board will not consider more than the
information provided by applicant. Thus, if applicant has
provided only a list of registration numbers and marks, the
list will have very limited probative value.”]. As
indicated above, however, applicant submitted copies of
certain of the third-party registrations listed in the TESS
printout.
The third-party registrations are not evidence of use
of the marks shown therein. Thus, they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of similar marks in the
marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476

5 In this connection, even if complete copies of all of these
third-party registrations had been submitted, any registrations
covering goods and/or services far removed from the goods and
services of applicant and registrant would be irrelevant to the
present likelihood of confusion analysis. Conde Nast
Publications, Inc. v. American Greetings Corp., 329 F.2d 1012,
141 USPQ 249, 252 (CCPA 1964). Further, third-party
applications, even if copies had been furnished, have no
probative value other than as evidence that the applications were
filed. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4
(TTAB 2002).
Ser No. 76557678
9
F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks,
Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). In
any event, even if we were to find, as applicant urges,
that registrant’s mark is weak and entitled to a narrow
scope of protection, the scope is still broad enough to
prevent the registration of an identical mark for related
goods. See In re Farah Mfg. Co., Inc., 435 F.2d 594, 168
USPQ 277, 278 (CCPA 1971).
We next turn to a consideration of the goods and
services. We note, at the outset of considering this du
Pont factor, that the greater the degree of similarity
between applicant’s mark and the cited registered mark, the
lesser the degree of similarity between applicant’s goods
and/or services and registrant’s goods and/or services that
is required to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
2001). If the marks are the same, as in this case, it is
only necessary that there be a viable relationship between
the goods and/or services in order to support a finding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Contrary to the gist of applicant’s remarks, it is
well recognized that confusion may occur from the use of
the same or similar marks for goods, on the one hand, and
Ser No. 76557678
10
for related services, on the other. See, e.g., In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988) [BIGG’S (stylized) for retail grocery and general
merchandise store services held likely to be confused with
BIGGS and design for furniture]; In re United Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986) [design for
distributorship services in the field of health and beauty
aids held likely to be confused with design for skin
cream]; and In re Industrial Expositions, Inc., 194 USPQ
456 (TTAB 1977) [POLLUTION ENGINEERING EXPOSITION for
programming and conducting of industrial trade shows held
likely to be confused with POLLUTION ENGINERING for a
periodical magazine]. Further, applicant’s argument that
the different classification of the involved goods and
services illustrates the goods and services are not related
is irrelevant. The classification of goods and services by
the USPTO is a purely administrative determination and has
no bearing on the issue of likelihood of confusion. Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed.
Cir. 1993); and National Football League v. Jasper Alliance
Corp., 16 USPQ2d 1212 (TTAB 1990).
With respect to the goods and services, applicant’s
computer software may be used for analyzing, tracking and
maintaining data in the financial field, including
Ser No. 76557678
11
accessing investment information. Registrant’s services
feature asset allocation investment management. Thus, the
goods and services both involve financial investments, and
may be utilized by the same classes of purchasers. It is
easy to envision the same individual using applicant’s
software at home to keep track of his/her investments,
while at the same time utilizing registrant for
professional investment management.
Applicant attempts to draw distinctions between the
trade channels and the classes of purchasers for the goods
and services. Although we recognize that the goods and
services, in all likelihood, move in somewhat different
trade channels, the goods and services ultimately make
their way to, and are used by the same classes of
purchasers. Applicant contends that its goods are targeted
primarily to individuals interested in reducing their debt
whereas registrant’s services are directed to individuals
and/or businesses seeking banking and investment services.
The problem with applicant’s argument is that the involved
identifications of goods and services include no limitation
as to the classes of purchasers. Thus, it is presumed that
the goods and services would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). As indicated above, there is an overlap in
Ser No. 76557678
12
purchasers who might avail themselves of both applicant’s
software in tracking investments and registrant’s
investment services.
Applicant urges us to find that a high degree of care
is taken in purchasing computer software dealing with
financial matters and in selecting banking and investment
services. In support of this proposition, applicant relies
on reported decisions in two civil actions, one involving
financial services and the other involving computer
software for financial applications.
Although many customers of applicant’s software and
registrant’s investment services may be sophisticated, we
see no reason to assume that the potential customers could
not include ordinary individuals who are dealing with their
finances and investments. Even assuming that the financial
aspect of applicant’s goods and registrant’s services
demands a discerning purchase, even sophisticated
purchasers are not immune from source confusion, especially
in cases such as the instant one involving identical marks
and closely related good and services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), citing 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
Ser No. 76557678
13
not infallible.”]. See also In re Decombe, 9 USPQ2d 1812
(TTAB 1988). We find that the identity of the marks and
the relatedness of the goods and services 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].
Applicant’s contention that the cited mark is not
famous is not persuasive. The lack of fame of the cited
mark is not dispositive in an ex parte proceeding.
Although fame of a registered mark is relevant to
likelihood of confusion, there is no converse rule that
likelihood of confusion is precluded by a registered mark’s
not being famous. In re Majestic Drilling Co., Inc., 65
USPQ2d at 1205.
The absence of actual confusion, as reported by
applicant’s attorney, is of little moment. There is no
evidence that there has been an opportunity for confusion
to occur between the marks. Although applicant contends
that there can be no actual confusion due to registrant’s
abandonment of the registered mark, this assertion is
improper and may not be considered (see discussion, infra).
Ser No. 76557678
14
In any event, particularly in an ex parte proceeding,
“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value.” In re Majestic
Drilling Co., 65 USPQ2d at 1205. See also In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Moreover, it
is unnecessary to show actual confusion in establishing a
likelihood of confusion. Weiss Associates Inc. v. HRL
Associates Inc., 14 USPQ2d at 1842.
Applicant’s reliance on the nonprecedential
dispositions in two prior Board opposition proceedings is
of no moment. Neither proceeding involved applicant or
registrant; and different marks and goods/services were at
issue in those cases that were not the subjects of a final
decision on the merits (both oppositions were dismissed
prior to trial pursuant to withdrawals filed by the
opposers).
Applicant contends that registrant has abandoned, or
at a minimum, is not presently using the registered mark.
In support of its contention, applicant submitted the
declaration of Steven Gibson, one of applicant’s attorneys,
and excerpts from registrant’s website. To the extent that
applicant is asserting that the registered mark has been
abandoned, no consideration has been given to applicant’s
argument in this specific regard. Applicant’s allegation
Ser No. 76557678
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constitutes an impermissible collateral attack on
registrant’s registration. Section 7(b) of the Trademark
Act provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the
validity of the registration, of the registrant’s ownership
of the mark and of the registrant’s exclusive right to use
the mark in connection with the goods or services
identified in the certificate. During ex parte
prosecution, including an ex parte appeal, an applicant
will not be heard on matters that constitute a collateral
attack on the cited registration (e.g., a registrant’s
nonuse of the mark). In re Dixie Restaurants, 41 USPQ2d at
1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992). See TMEP § 1207.01(d)(iv) (4th ed. 2004).
We conclude that consumers familiar with registrant’s
investment services rendered under its mark MONEYWISE would
be likely to believe, upon encountering applicant’s
computer software for use in certain fields, including
financial investments, sold under the mark MONEYWISE, that
the goods and services originate with or are associated
with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
Ser No. 76557678
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registrant. In re Hyper Shoppes (Ohio), Inc., 6 USPQ2d at
1026; and In re Martin’s Famous Pastry Shoppe, Inc., 223
USPQ at 1290.
Decision: The requirement to submit an acceptable
identification of goods is moot. The refusal to register
under Section 2(d) is affirmed.