The Pilot Funds

Trademark Trial and Appeal Board

Jun 5, 1998

No. 74551253 (T.T.A.B. Jun. 5, 1998)

Paper No. 16
GDH/AKP
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
MAY 5, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Pilot Funds
________
Serial No. 74/551,253
_______
Glenn A. Gundersen of Dechert Price & Rhoads for The Pilot Funds.
Katherine Stoides, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney).
_______
Before Simms, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by The Pilot Funds to
register the mark "THE PILOT FUNDS" for a "mutual fund investment
service offered to bank and trust company customers."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
mark "PILOT PLUS," which is registered for "security brokerage

1 Ser. No. 74/551,253, filed on July 19, 1994, which alleges dates of
first use of June 1, 1994. The words "THE" and "FUNDS" are
disclaimed.
Ser. No. 74/551,253
2
services; namely, securities executions in a brokerage account on
an annual fee basis in lieu of commissions on individual
transactions,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not held.3 We reverse the refusal to register.
Turning first to the respective marks, the Examining
Attorney asserts that they are "highly similar" in sight, sound
and commercial impression. Although the Examining Attorney
correctly observes that applicant has offered "no argument
opposing the [E]xamining [A]ttorney’s assertion that the marks
are highly similar," we note that the shared term "PILOT" in
applicant’s "THE PILOT FUNDS" mark and registrant’s "PILOT PLUS"
mark is highly suggestive, as applied to their respective mutual
fund investment services and securities brokerage account
services, since such term projects an image of experienced
guidance or well qualified leadership.4 The ambit of protection

2 Reg. No. 1,791,887, issued on September 7, 1993, which sets forth
dates of first use of November 17, 1992.
3 Applicant, while initially requesting an oral hearing, subsequently
withdrew such request the day before the hearing was scheduled to take
place.
4 For instance, we judicially notice in this regard that Webster’s New
World College Dictionary (3d ed. 1997) at 1025 defines "pilot" as,
inter alia, a noun meaning "1 a) org. HELMSMAN b) a person licensed
to direct ships into or out of a harbor or through difficult waters 2
a person qualified to operate the controls of an aircraft or
spacecraft 3 a guide; leader ..."; a verb signifying "1 to act as a
pilot of, on, in, or over 2 to guide; conduct; lead"; and an
adjective connoting "1 that which serves as a guide ...." It is
settled that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Ser. No. 74/551,253
3
for each of such marks is correspondingly less than that which
would be afforded an arbitrary or fanciful mark.
With respect to the specifically different financial
services offered by applicant and registrant, the Examining
Attorney argues that "the applicant’s ’mutual fund investment
services offered to bank and trust company customers’ are
related, if not closely related, to the registrant’s ’security
brokerage services; namely, securities executions in a brokerage
account on an annual fee basis in lieu of commissions on
individual transactions.’" In particular, the Examining Attorney
insists that (footnote omitted):
It is customary for financial
institutions to offer securities brokerage
services, mutual fund brokerage services and
a number of other ancillary services therefor
to its customers-–be they bank customers,
trust company customers or other types of
customers. The customer's/consumer's
familiarity with this common practice is
substantiated by the numerous third-party
registrations [of record] identifying both
securities brokerage services and mutual fund
services offered under the same service mark.
Consequently, when a consumer encounters a
similar mark on the services of the nature
identified by the applicant and the
registrant, he is likely to believe that
there two services, albeit different
services, are offered by the same
institution.
While the Examining Attorney, in support of her
position, has indeed made of record over a dozen use-based third-
party registrations which list, in each instance, both mutual

Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 74/551,253
4
funds and securities brokerage services of various kinds, only
two of such registrations also include banking services and thus
were issued to banking institutions.5 The other registrations,
in contrast, were issued to securities brokers or insurance
companies. Nevertheless, because registrant’s services, unlike
those of the applicant, are not restricted to bank and trust
company customers but are, instead, defined "very broad[ly] with
respect to its intended customers," the Examining Attorney
maintains that "it is presumed that the [cited] registration
encompasses services offered to all types of customers, including
those in the applicant’s more specific identification." In view
of this overlap of consumers, the Examining Attorney insists that
confusion as to origin of affiliation is likely because "the same
potential customer will encounter the similar marks, PILOT PLUS
and THE PILOT FUNDS, on financial investment-oriented services."
We agree with applicant, however, that "the Examining
Attorney has not provided any real-world rationale for how
confusion is likely to occur, given the parties’ respective
identification[s] of services." In this regard, as applicant
points out, its mutual fund investment services, as identified,

5 Such registrations also respectively include "estate trust management
services" and "trust and fiduciary services". Moreover, while not
listing banking services, there are three other registrations of
record which set forth, respectively, "trust services," "financial
investment and brokerage services in the field of ... trusts" and
"providing information regaarding [sic] the administration of trust
accounts by electronic means" in addition to mutual fund and
securities brokerage services. We have focused our attention,
however, on any overlap of securities brokerage services with mutual
fund investment services offered by banking institutions since both
applicant’s and the Examining Attorney’s arguments are directed to
whether there is a likelihood of confusion among banking customers--
specifically, those customers who patronize a bank and trust company.
Ser. No. 74/551,253
5
are offered only to bank and trust company customers, while
registrant’s securities brokerage services are limited to a
particular kind of brokerage account which provides securities
executions on an annual fee basis in lieu of commissions on
individual transactions. The respective services are therefore
not only specifically different, but the channels of trade in
which such services are rendered--banking institutions versus
securities brokerages--are distinctly different, notwithstanding
that the same customer could admittedly do business with both.
By thus "limit[ing] the context in which consumers are likely to
encounter the [respective] marks," the prospect for confusion as
to source or sponsorship is significantly lessened, particularly
in light of the suggestiveness inherent in the marks "THE PILOT
FUNDS" and "PILOT PLUS".
Moreover, while ordinary investors may not necessarily
be sophisticated and highly knowledgeable with respect to various
financial investments and arrangements, the purchase of mutual
funds and the establishment of securities brokerage accounts
typically involve, due to the not insubstantial sums of money
necessary for such transactions, a significant amount of care and
deliberation prior to the selection and execution thereof. 6 Such

6 Applicant also raises the argument that:
[T]he sale of mutual fund investment services is
highly regulated and involves extensive prospectus and
disclosure requirements. No mutual fund may be offered for
sale without an accompanying prospectus which clearly
identifies the names of the fund administrator and advisor.
Similarly, any instrument through which the PILOT PLUS
account [of registrant] is sold will inevitably make clear
the connection between the PILOT PLUS mark and its owner
Ser. No. 74/551,253
6
activities clearly are not done impulsively. Thus, as applicant
persuasively notes in its reply brief:
While all investors may not be "sophisticated
in trademark matters," it is also true that
people are likely to be more careful when
investing their money than in other
situations, a fact which has been observed by
the courts. See, e.g., Wachovia Bank & Trust
Co. v. Crown Nat’l Bankcorp., 835 F. Supp.
882, 27 U.S.P.Q.2d 1698 (W.D.N.C. 1993)
(consumers for financial services less likely
to be confused than the general public) ....
Investing in a mutual fund or opening a
securities brokerage account are clearly not
inexpensive, impulsive transactions that an
ordinary consumer might be expected to enter
into lightly. Rather, as the federal
securities laws presume, a reasonably prudent
person would only make such an investment or
open such an account after careful review and
consideration of the mutual fund prospectus
or the instrument by which the brokerage
account was sold. ....
We find, therefore, on this record that, in light of
high degree of suggestiveness possessed by the respective marks,
the specific differences in the nature and channels of trade for
the respective services, and the care and deliberation

.... Thus, disclosure requirements will make consumer
confusion very unlikely. In failing to consider this
factor, the [E]xamining [A]ttorney overstated the risk of
consumer confusion.
We note, however, that notwithstanding such disclosure requirements,
Section 2(d) of the statute precludes registration of "a mark which so
resembles a mark registered in the Patent and Trademark Office ... as
to be likely ... to cause confusion ...." The issue of likelihood of
confusion must accordingly be decided on the basis of the mark sought
to be registered and the mark shown in the cited registration. The
fact, therefore, that applicant and registrant may use--or even be
required to use--their respective marks with added matter, such as
house marks and/or trade names, is simply irrelevant and immaterial.
See, e.g., Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456, 459
(CCPA 1959); Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110
USPQ 272, 273-74 (CCPA 1956); Hat Corp. of America v. John B. Stetson
Co., 223 F.2d 485, 106 USPQ 200, 203 (CCPA 1955); and ITT Canteen
Corp. v. Haven Homes Inc., 174 USPQ 539, 540 (TTAB 1972).
Ser. No. 74/551,253
7
customarily exercised by consumers in connection with the types
of financial activities involved herein, confusion as to source
or sponsorship is not likely to result from contemporaneous use
of the mark "THE PILOT FUNDS" for a "mutual fund investment
service offered to bank and trust company customers" and the mark
"PILOT PLUS" for "retail brokerage services; namely, securities
executions in a brokerage account on an annual fee basis in lieu
of commissions on individual transactions."7
Decision: The refusal under Section 2(d) is reversed.8
E. W. Hanak

7 We further note, in this regard, that notwithstanding an overlap of
customers for the respective services in this case, our principal
reviewing court has nonetheless cautioned that:
We are not concerned with mere theoretical confusion,
deception or mistake or with de minimis situations but with
the practicalities of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), citing Witco Chemical
Co. v. Whitfield Chemical Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-45
(CCPA 1969), aff’g, 153 USPQ 412 (TTAB 1967).
8 It would appear from the dissent that once again, as previously noted
by our principal reviewing court in Amalgamated Bank of New York v.
Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308
(Fed. Cir. 1988), "the board lays claim to an arsenal of superior
knowledge about the banking business". However, to the extent that
the dissent relies upon facts not disclosed by the present record,
suffice it to say that while we might indeed decide this appeal
differently on a more extensive and compelling evidentiary record, we
are not at liberty to consider additional adjudicative facts--not
properly the subject of judicial notice--from outside of the record,
such as information from Yellow Pages advertisements or asserted
approvals of merger activity by the cited registrant. The dissent’s
consideration of such evidence would appear to be in violation of the
Board’s published policy with respect to matters which are appropriate
for judicial notice under Fed. R. Evid. 201. See TBMP §712.01. As a
final point, we note that it is misleading for the dissent to state
that "some financial institutions ... have registered marks for mutual
fund investment services, securities brokerage services and banking
services" (emphasis added) when the record contains, as previously
indicated, only two such registrations by our count.
Ser. No. 74/551,253
8
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Simms, Administrative Trademark Judge, dissenting:
I dissent from the majority’s conclusion that confusion is
unlikely.
First, I disagree with the majority’s statement that the
registered mark PILOT PLUS, owned by Wheat, First Securities,
Inc., is “highly suggestive” for securities brokerage services.
Aside from the fact that applicant never argued that this mark
was in any way “weak” (applicant never even argued that confusion
was unlikely because of any differences in the marks), I cannot
agree with this assessment of the registered mark. I believe
that the mark PILOT PLUS may be arbitrary but, at most, it is
only marginally suggestive of registrant’s services. In any
event, with respect to the marks (THE PILOT FUNDS and PILOT
PLUS), it is clear that the dominant feature of each mark is the
word PILOT.
With respect to the relatedness of the services, it is
noteworthy that, up to the filing of the notice of appeal,
applicant and the Examining Attorney argued the issue of
likelihood of confusion on the basis of services described by
applicant originally as “mutual fund services” and then as
“mutual fund investment services”. The Examining Attorney argued
that mutual fund investment services and securities brokerage
Ser. No. 74/551,253
9
services are offered by the same entities under the same marks.
(Third-party registrations show that a number of entities,
including Charles Schwab, E. F. Hutton and Merrill Lynch, have
registered one or more marks covering these services and more.)
Then applicant, with its notice of appeal, amended the
description of services to indicate that its services were
offered to bank and trust company customers. Therefore, after
appeal, the focus shifted to the relatedness of securities
brokerage services and mutual fund services offered in the
banking environment. The Examining Attorney made of record
third-party registrations showing, in addition to those mentioned
above, that some financial institutions (such as KeyCorp. and
Deposit Guaranty Corp.) have registered marks for mutual fund
investment services, securities brokerage services and banking
services.
It is clear that applicant offers a variety of funds under
the mark sought to be registered. A portion of the specimens of
record, a letter sent to its customers, is reproduced below:
Ser. No. 74/551,253
10
I do not profess to be an expert on the financial services
industry. However, we are all aware of attempts in recent years
to modernize the nation’s banking industry to eliminate some of
the Depression-era restrictions on banking operations. As some
of the third-party registrations tend to show, financial
institutions now offer both mutual fund investment services
(witness this application) and some securities brokerage
services. One need look no further than today’s headlines to see
the rise in mergers between banking institutions and securities
firms. Some banks now have securities sales forces and the
public is becoming increasingly accustomed to seeing brokerage
activities in the banking environment. A glance at local Yellow
Ser. No. 74/551,253
11
Pages advertisements confirms that some banks are currently
offering investment advisory and brokerage services. Indeed, the
third-party registrations of record reflect this reality. And,
while outside of this record, it appears that the owner of the
very registration cited against applicant has recently been
acquired by a bank holding company (First Union). See Letter of
the Comptroller of the Currency, January 21, 1998, Conditional
Approval # 270, 1998 OCC Ltr. LEXIS 11; 84 Federal Reserve
Bulletin No. 1, January 1998; Announcement of Board of Governors
of the Federal Reserve System, H2, No. 48, November 29, 1997; and
Federal Reserve Orders, Order Approving Notice to Engage in
Nonbanking Activities, November 26, 1997. Such business merger
activity makes it all the more likely that the public will
believe that there is a connection, because of the similarity of
the marks, between a mutual fund offered by banks and a
securities brokerage account. Bills are now pending before
Congress which would allow even more securities activities by
banks.
However, even on this record, assuming that applicant’s
mutual fund services are and will be offered only to bank and
trust company customers, while registrant’s services are offered
only to a securities brokerage firm’s customers, what we said in
Freedom Savings and Loan Assn. V. Fidelity Bankers Life Insurance
Co., 224 USPQ 300, 304 (TTAB 1984)(holding marks for various
Ser. No. 74/551,253
12
financial services and life insurance services to be confusingly
similar), is particularly apt:
Moreover, it is not necessary as
as matter of trademark law that
goods or services be competitive
or be sold together or through the
same outlets if they can be shown to
be related in some manner that would
suggest to persons encountering them,
even at different locations, sources,
or offices, a likelihood of common spon-
sorship. (Emphasis added.)
The public encountering PILOT PLUS in connection with a
securities brokerage account are likely, I believe, to think that
this service is another one of THE PILOT FUND services which they
have encountered in banks and trust companies. To the extent
that there may be any doubt on this matter, in accordance with
well-established precedent, I would resolve any doubt in favor of
the registrant and against the newcomer, who had a duty to select
a mark that was dissimilar to any registered trademark or service
mark for closely related goods or services.
R. L. Simms
Administrative Trademark
Judge,
Trademark Trial
and Appeal Board
Ser. No. 74/551,253
13