Topping

Trademark Trial and Appeal Board

Sep 20, 2006

No. 78294931 (T.T.A.B. Sep. 20, 2006)

Mailed: September 20, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Topping
________

Serial No. 78294931
_______

William D. O’Neill of Senniger Powers for Ross E. Topping.

Rebecca Smith, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Ross E. Topping has filed an application to register
the mark THE MORTGAGE DOCTORS for “residential mortgage
brokerage services; mortgage brokerage and mortgage lending
consultation services for residential properties” in class
36.1

1 Serial No. 78294931, filed September 2, 2003, alleging a date
of first use anywhere of January 1, 2000 and a date of first use
in commerce of January 10, 2001. The word MORTGAGE is disclaimed
apart from the mark as shown. The application also includes
“radio programming” services in class 41. These services are not
at issue in this appeal.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78294931
2
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 used in connection with
applicant’s services, so resembles the mark DOCTOR MORTGAGE
which is registered for “mortgage brokering, lending,
purchasing and selling,”2 as to be likely to cause
confusion, mistake or deception.
Applicant and the examining attorney have filed
briefs, but an oral hearing was not requested.
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 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).

2 Registration No. 2,004,291 issued January 1, 1996; renewed.
The word MORTGAGE is disclaimed apart from the mark as shown.
Ser No. 78294931
3
Considering first the services, applicant argues that
there is no likelihood of confusion because it specializes
in residential mortgage services and registrant specializes
in commercial mortgage services. In this regard, applicant
submitted a printout of registrant’s Internet homepage
which describes registrant’s services.
However, as the examining attorney correctly notes, it
is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application
vis-à-vis the goods or services recited in the
registration, rather than on the basis of what the record
reveals the services to be. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Further, where the
services in an application or cited registration are
broadly described, such that there are no restrictions as
to trade channels and purchasers, it is presumed that the
identification of services encompasses not only all
services of the nature and type described therein, but that
the identified services are offered in all the normal
channels of trade, and that they would be purchased by all
Ser No. 78294931
4
the usual customers. See, e.g., In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
It is true that, as identified in his application,
applicant’s “residential mortgage brokerage services;
mortgage brokerage and mortgage lending consultation
services for residential properties” are specifically
limited to residential properties. However, because
registrant’s services of “mortgage brokering, lending,
purchasing and selling” are not limited to any particular
type of properties, we must assume that they encompass
residential mortgage brokering, lending, purchasing and
selling. Thus, for purposes of our likelihood of confusion
analysis, the services of applicant and registrant are
identical and otherwise closely related. Also, the
customers and trade channels for the respective services
are consequently deemed to be the same.
Turning then to a consideration of the marks, the
examining attorney argues as follows:
Applicant’s mark is THE MORTGAGE DOCTORS. The
registered mark is DOCTOR MORTGAGE. The
applicant’s mark is essentially a transposition
of the registrant’s mark. Such a transposition
does not create a different commercial impression
that would negate the likelihood of confusion.
(citations omitted). Strictly viewed, the
Ser No. 78294931
5
applicant has adopted the identical terms DOCTOR
and MORTGAGE from the registered mark and simply
transposed the order of them creating a
likelihood of confusion between the marks.
(Brief at 3).

Applicant, on the other hand, contends that the marks
are very different in terms of connotation and commercial
impression. Specifically, applicant argues that his mark
THE MORTGAGE DOCTORS suggests a group of trained
professionals in the mortgage industry and that
registrant’s mark DOCTOR MORTGAGE suggests a business title
or personal name referring to a single individual in the
mortgage field. Applicant submitted copies of third-party
registrations of pairs of transposed marks for various
goods and services. Applicant argues that the marks
involved in this case are similar to the pairs of marks in
these third-party registrations and therefore his mark
should be allowed to register. Further, applicant argues
that marks containing the term “DOCTOR,” “DOC” or “DR.” are
weak marks which are therefore entitled to only a limited
scope of protection. Applicant maintains that the term
“DOCTOR” suggests an expert or professional. In support of
his position, applicant submitted copies of third-party
registrations that contain the term “DOCTOR,” “DOC” or
“DR.” for various goods and services.

Ser No. 78294931
6
Registrant’s mark is for the term DOCTOR MORTGAGE
while applicant’s mark is for the words THE MORTGAGE
DOCTORS. Both marks contain the identical words
“doctor(s)” and “mortgage.” Applicant has taken the only
two words in registrant’s mark, transposed the words, and
placed the word “the” before them. These differences do
not serve to distinguish the marks in terms of sound and
appearance. Further, we are not persuaded that reversing
the order of the words in the marks makes a significant
difference in commercial impression. As the Board has
previously stated:
Further, the reversal in one mark of the
essential elements of another mark may serve as a
basis for a finding of no likelihood of confusion
only if the transposed marks create distinctly
different commercial impressions. See: Bank of
America National Trust and Savings Assn. v.
American National Bank of St. Joseph, 201 USPQ
842 (TTAB 1978), and cases cited therein. Here,
where the goods in question are legally
identical, and where both marks, when applied to
the goods in question, are likely to be perceived
by purchasers as signifying that the product sold
thereunder busts through, or breaks up, rust, we
agree with the Examining Attorney that the marks
create substantially similar commercial
impressions, and there is a likelihood of
confusion. Cf. In re Inco, 154 USPQ 629 (TTAB
1967) [“GUARDIAN OF POSTURE for mattresses versus
“POSTURGUARD” for mattresses – registration
refused], and McNamee Coach Corp. v. Kamp-A-While
Industries, Inc. v. 148 USPQ 765 (TTAB 1965)
[“KING KAMPER” for camping trailers versus “KAMP
KING KOACHES” for campers – registration
refused].

Ser No. 78294931
7
In re Nationwide Industries, Inc., 6 USPQ2d 1882, 1884
(TTAB 1988)(RUST BUSTER for rust-penetrating spray
lubricants confusingly similar to BUST RUST for penetrating
oil).
As to applicant’s disagreement with the examining
attorney’s determination that applicant’s and registrant’s
marks have the same commercial impression, we find his
argument on this point unpersuasive. Specifically,
although there may be subtle differences in the meanings of
the marks when they are subjected to close analysis, we do
not believe that consumers will undertake such an analysis.
The test for likelihood of confusion is not whether the
marks can be distinguished when subjected to a side-by-side
comparison. Also, in evaluating similarities between the
marks, the emphasis must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Registrant’s mark DOCTOR MORTGAGE and applicant’s mark THE
MORTGAGE DOCTORS have virtually the same meaning and
commercial impression, when used in connection with
mortgage services. Both marks indicate a mortgage
expert/experts. Thus, when the marks are considered in
Ser No. 78294931
8
their entireties, we find that they are similar in sound,
appearance, meaning and commercial impression.
In reaching our decision herein, we have considered
the third-party registrations of marks that contain the
word DOCTOR or variations thereof. The probative value of
this evidence is very limited in our determination of the
specific issue of likelihood of confusion in this case.
There is no evidence that the marks are in use or that
purchasers are familiar with them. See: Spice Islands,
Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 184 USPQ 35
(CCPA 1974); and Red Carpet Corp. v. Johnstown American
Enterprises, Inc., 7 USPQ2d 1404 (TTAB 1988). Further,
although the third-party registrations indicate that the
word DOCTOR is suggestive of an expert or authority, this
fact does not help to distinguish THE MORTGAGE DOCTORS and
DOCTOR MORTGAGE. The word DOCTOR, as used in both marks,
conveys the same suggestive significance. In short, the
marks here are virtually identical in meaning and
commercial impression such that when used on legally
identical and closely related mortgage services, the marks
are likely to cause confusion among purchasers.
Insofar as the third-party registrations of transposed
marks are concerned, they do not compel a different result
herein. It is well settled that each case must be
Ser No. 78294931
9
determined on its own merits. See e.g., In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
[“Even if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance
of such prior registrations does not bind the Board or this
court”].3
Applicant also argues that the customers of
applicant’s and registrant’s services “make their purchase
decisions only after a very deliberate and studied
decision-making process.” (Brief at 12). We recognize
that mortgage services are not impulse purchases. This,
however, does not require a finding of no likelihood of
confusion. Even assuming that the purchasers of these
services exercise care, this does not mean that such
purchasers are immune from confusion as to the origin of
the respective services, especially when sold under
substantially similar marks. Wincharger Corp. v. Rinco,
Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and In re
Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
Applicant also asserts that he and the registrant have

3 Also, as the examining attorney correctly observes, in many of
the examples “the goods/services of the respective registrants
are not identical” and in other examples “there are additional
design elements or wording that further distinguishes the marks.”
(Brief at 4-5).
Ser No. 78294931
10
used their marks concurrently without any incidents of
actual confusion, and that this shows that confusion is not
likely to occur. We are not persuaded by this argument.
Applicant has not provided any evidence as to the extent of
his use, nor is there any evidence as to registrant’s use,
such that we can determine whether there has been a
meaningful opportunity for confusion to occur.
We conclude that consumers familiar with registrant’s
mortgage brokering, lending, purchasing and selling
services offered under the mark DOCTOR MORTGAGE would be
likely to believe, upon encountering applicant’s
substantially similar mark THE MORTGAGE DOCTORS for
residential mortgage brokerage services, mortgage
brokerage, and mortgage lending consultation services for
residential properties, that the respective services
originate from or are somehow associated with or sponsored
by the same source.
Finally, to the extent that any of applicant’s
arguments raise a possible doubt about our conclusion of a
likelihood of confusion, we resolve such doubt, as we must,
in favor of the registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Ser No. 78294931
11
Decision: The Section 2(d) refusal to register
applicant’s “residential mortgage brokerage services;
mortgage brokerage and mortgage lending consultation
services for residential properties” in class 36 is
affirmed. The application will go forward as to the “radio
programming” services in class 41.