Wall Street Alliance, Inc.

Trademark Trial and Appeal Board

Feb 22, 2019

No. 87496920 (T.T.A.B. Feb. 22, 2019)

Mailed: February 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Wall Street Alliance, Inc.
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Serial No. 87496920
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Zachary D. Messa of Johnson Pope Bokor Ruppel & Burns LLP,
for Wall Street Alliance, Inc.
Samantha Sherman, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
————
Before Zervas, Kuczma, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Wall Street Alliance, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark (WALL ST ALLIANCE disclaimed) for the
following services in International Class 36: 1

1 Application Serial No. 87496920, filed on June 20, 2017, based upon an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming June 22,
2013 as the date of first use and August 25, 2013 as the date of first use in commerce. The
description of the mark reads as follows: “The mark consists of the stylized wording ‘WALL
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 87496920
2
Estate planning; Estate trust planning; Financial planning; Financial
planning consultation; Financial planning, namely, the creation of
personalized strategies to achieve financial independence; Financial
planning, namely, comprehensive cash flow and tax planning; Financial
advice, namely, budget planning; Financial services, namely, mortgage
planning; Financial trust planning; Insurance brokerage; Insurance
brokerage services; Insurance consultancy; Insurance consultation;
Investment management; Investment advice; Investment advisory
services; Investment of funds; Advice relating to investments; Annuity
services, namely, account and investment administration and the
investment and distribution of annuity funds; Financial investment
analysis and stock research; Financial investment brokerage services;
Financial planning for retirement; Financial retirement plan consulting
services; Financial risk management consultation; Financial and
investment services, namely, management and brokerage in the fields
of stocks, bonds, options, commodities, futures and other securities, and
the investment of funds of others; Financial consultancy and insurance
consultancy; Financial planning and investment advisory services;
Financial services, namely, investment advice, investment
management, investment consultation and investment of funds for
others, including private and public equity and debt investment
services; Financial services, namely, a total portfolio offering for high
net worth clients consisting of both separate accounts and mutual funds
for equity and fixed income investments; Financial services, namely,
administration of transactions involving funds drawn from securities,
stocks, funds, equities, bonds, cash, or other types of financial
investments in retirement plans using a check or negotiable order of
withdrawal over a global data network; Financial services, namely,
administration of transactions involving funds drawn from securities,
stocks, funds, equities, bonds, cash, or other types of financial
investments in retirement plans using a credit or debit card over a global
data network; Financial services, namely, coordination, within a single
account, of an investment portfolio's maintenance, trading, rebalancing,
and tax management needs; Financial services, namely, providing an
investment option available for variable annuity and variable life
insurance products; Life insurance underwriting; Mutual fund
investment; Mutual funds and capital investment; On-line financial
planning services; Providing investors with financial information;
Providing information in the field of employee financial benefit plans.

ST ALLIANCE’ on top of two upward sloping street sign backgrounds. The two street sign
backgrounds are connected and resemble a ribbon design. The stylized wording ‘WALL ST’
is on the top street sign background and the stylized wording ‘ALLIANCE’ is on the bottom
street sign background.” Color is not claimed as a feature of the mark.
Serial No. 87496920
3
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 of
likelihood of confusion with the mark (WALL STREET
ALLIANCE GROUP disclaimed) registered on the Principal Register for “Financial
investment in the field of securities, life insurance; Financial planning and
investment advisory services; Financial planning consultation; Financial planning
for retirement; Financial portfolio analysis services; Financial portfolio management”
in International Class 36.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We reverse the refusal to register.3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

2 Registration No. 4196718, issued on August 28, 2012; Section 8 accepted/Section 15
acknowledged on November 29, 2017. The description of the mark reads as follows: “The
mark consists of the design of two clasped shaking hands appearing over the design of a
border comprised of three concentric circles with the hands and the second circle and hands
design in white outlining and the inner and outer circles in blue to the left of the stylized
wording ‘WALL STREET’ in blue lettering over the stylized wording ‘ALLIANCE GROUP’ in
black lettering.” The colors black, white and blue are claimed as a feature of the mark.
3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 87496920
4
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper 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
[or services] and differences in the marks.”).
A. Similarity of the Services
We initially consider the similarity of the services at issue, the second du Pont
factor. In making our determination regarding the relatedness of the services, we
must look to the services as identified in Applicant’s application and the cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comps.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Registrant’s identified services are “Financial investment in the field of securities,
life insurance; Financial planning and investment advisory services; Financial
planning consultation; Financial planning for retirement; Financial portfolio analysis
services; Financial portfolio management.” Applicant’s identification includes the
following services which are identical to those of Registrant: “financial planning
Serial No. 87496920
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consultation,” “financial planning for retirement,” and “investment advisory
services.” The fact that Applicant’s services include services not identified in
Registrant’s identification of services is of no consequence. Registration of an
international class must be refused if Applicant’s mark for any of its identified
services is likely to cause confusion with the Registrant’s mark for any of its identified
services. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015)
(“it is sufficient for finding a likelihood of confusion if relatedness is established for
any item encompassed by the identification of goods within a particular class in the
application.”).
Because both Applicant and Registrant offer identical services under their
respective marks, the second du Pont factor strongly favors a finding of likelihood of
confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications of Applicant’s services and Registrant’s
services are legally identical in part and have no meaningful restrictions as to
channels of trade or classes of customers, it is presumed that the trade channels and
classes of purchasers are the same for these overlapping services. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods
[or services] are presumed to travel in same channels of trade to same class of
purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (where there are legally identical goods [or services], the channels of trade and
Serial No. 87496920
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classes of purchasers are considered to be the same); In re Am. Cruise Lines, Inc., 128
USPQ2d 1157, 1158 (TTAB 2018).
Thus, the third du Pont factor also weighs in favor of finding a likelihood of
confusion.
C. Similarity of the Marks
We finally turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. Similarity in any
one of these elements may be sufficient to find the marks similar. In re Thor Tech
Inc., 90 USPQ2d at 1635; In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586
(TTAB 2007); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). In
comparing the marks, we are mindful that where, as here, the services are legally
identical in part, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the services.
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prods. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the [owners].” Coach Servs. Inc., 101 USPQ2d at 1721 (internal quotation
Serial No. 87496920
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marks omitted). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. Geigy Chem. Corp. v.
Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark is . The cited mark is . Both
the Examining Attorney and Applicant recognize that, in determining likelihood of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Where Applicant and the
Examining Attorney differ is which element of Applicant’s mark should be considered
the dominant feature. Applicant argues that because it has disclaimed all the words
in its mark, i.e., WALL ST ALLIANCE, the design element in its mark must be
considered the dominant portion.4 Similarly, Applicant maintains that since the
entirety of the literal portion of the cited mark has been disclaimed, the dominant
element in Registrant’s mark is the design element incorporated therein.5 The

4 Applicant’s Appeal Brief, pp. 4-5, 7 TTABVUE 7-8.
5 Id. In support of its argument, Applicant relies on several prior Board decisions which are
designated as nonprecedential, e.g., In re Real Estate USA, Inc., ex parte appeal 78408332
(TTAB July 24, 2006); In re Murray, ex parte appeal 77029078 (TTAB March 26, 2009) and
Outdoor Kids, Inc. v. Parris Mfg. Co. Inc., Cancellation No. 92045687 (TTAB March 9, 2009),
Serial No. 87496920
8
Examining Attorney, on the other hand, cites Board decisions for the principle that,
if a mark comprises both a word and a design, the word is normally accorded greater
weight.6
We initially note that there is no per se rule that words must always dominate
over designs. See Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007).
And, even if an element of a mark is dominant, this does not mean that other elements
may simply be ignored in the likelihood of confusion analysis. Id. at 1016; see also In
re Electrolyte Labs. Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“There
is no general rule as to whether letters or design will dominate in composite marks;
nor is the dominance of letters or design dispositive of the issue”). Moreover, when
the word portion of marks are highly suggestive or descriptive, the presence of a
design may be a more significant factor. See In re Hamilton Bank, 222 USPQ 174,
179 (TTAB 1984). Thus, in our consideration of the marks as a whole, we must
consider the design portion of both Applicant’s and Registrant’s marks as a
distinguishing element.

aff’d, 385 Fed. Appx. 992 (Fed. Cir. 2010); and In re DDMB, Inc., ex parte appeal 86312296
(TTAB Jan. 29, 2016). Id. at 2-4; 7 TTABVUE 5-7; Applicant’s May 14, 2018 Request for
Reconsideration; TSDR p. 2. As noted, the Outdoor Kids decision was affirmed by the U.S.
Court of Appeals for the Federal Circuit, our reviewing court. The Federal Circuit’s decision,
however, was also designated as nonprecedential. Although parties may cite to
nonprecedential decisions, these decisions are not binding on the Board and because they
have no precedential effect, the Board generally will not discuss them in other decisions. See
In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011). We choose not to discuss the
cited nonprecedential cases in this decision.
6 Examining Attorney’s Brief, pp. 6-7; 9 TTABVUE 7-8.
Serial No. 87496920
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While the literal portions of Applicant’s and Registrant’s marks are highly similar
in sound, appearance, connotation and commercial impression, we nonetheless find
that the wording in each mark is either highly descriptive of the identified services
or constitutes a non-source indicating element, i.e., an entity designation. We come
to this conclusion based on the dictionary definitions of record of the literal portions
of the marks. The term “Wall Street” is defined as “the US financial industry.”7 The
term “alliance” is defined as “a close association of nations or other groups, formed to
advance common interests or causes.”8 The term “group” is defined as “[a] collection
of individuals who have regular contact and frequent interaction … and who work
together to achieve a common set of goals.”9 Accordingly, since this disclaimed
wording informs consumers, in a highly descriptive manner, that the services offered
by both Applicant and Registrant under their respective marks are financial in
nature and are provided by a centrally-controlled group for the advancement of the
common financial interests of their consumers, it is the other elements in each of the
party’s marks that customers will look to as the source-indicating portion of the
marks.
Here, the design element of Applicant’s mark consists of two upward sloping street
signs connected by a ribbon design. In contrast, the design element of the cited mark
consists of two clasped shaking hands outlined in white within concentric circles. The

7 September 22, 2017 Office Action; TSDR pp. 27-28 (www.ahdictionary.com – American
Heritage Dictionary).
8 Id. at TSDR pp. 29-31 (www.ahdictionary.com – American Heritage Dictionary).
9 Id. at TSDR pp. 14-15 (www.businessdictionary.com).
Serial No. 87496920
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shaking hands and surrounding concentric circles appear in the color blue.
Additionally, the cited mark includes a rectangular background carrier. There is no
evidence of record that the design elements of Applicant’s mark or the cited mark
have non-source identifying meaning when used in association with the parties’
identified services. Moreover, the design elements in each mark clearly convey
differing connotations and evoke dissimilar commercial impressions.
In the present case, the extreme weakness of the literal portions of both
Applicant’s and Registrant’s marks and the differences in the design components of
the marks deserve greater weight in the likelihood of confusion analysis. As the Court
of Customs and Patent Appeals, the predecessor to the U.S. Court of Appeals for the
Federal Circuit, stated in Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d
158, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us that where a party chooses a
trademark which is inherently weak, he will not enjoy the wide latitude
of protection afforded the owners of strong trademarks. Where a party
uses a weak mark, his competitors may come closer to his mark than
would be the case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there is not the
possibility of confusion that exists in the latter case.

This especially holds true in this case since Registrant has disclaimed the
exclusive rights to the wording WALL STREET ALLIANCE GROUP in light of the
highly descriptive and non-source indicating nature of the terms. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.”)
Serial No. 87496920
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(internal quotation omitted); see also In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or
generic for a party’s goods is typically less significant or less dominant when
comparing marks). By disclaiming all the wording in its mark, Registrant has
conceded that it does not have exclusive rights in the wording WALL STREET
ALLIANCE GROUP alone, thereby effectively acknowledging the right of others to
use the disclaimed matter when necessary to describe their goods or services. The
purpose behind a disclaimer is to make clear that a party registering a composite
mark that includes a descriptive or generic term is not thereby abridging the right of
others who may need to use the term. In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB
1988) (“the basic purpose of a disclaimer is to make of record, if it might otherwise be
misunderstood, that a significant element of a composite mark is not being
exclusively appropriated, apart from the composite”).
Thus, when we view the marks at issue in their entirety, we find that the
differences outweigh the similarities for the reasons discussed above. Accordingly,
the first du Pont factor supports a finding that confusion is not likely.
D. Sophistication and Care of Consumers
Under the fourth du Pont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
du Pont, 177 USPQ at 567.
Applicant argues that since the financial services offered by both Applicant and
Registrant are directed toward sophisticated consumers, the marks at issue “may
come significantly closer to each other without causing a likelihood of confusion,
Serial No. 87496920
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because a ‘person seeking to invest monies — whether a highly sophisticated
professional investor or an average person with a modest income — will exercise care
in purchasing related services.’”10
Applicant has provided no evidence of this avowed sophistication. Even if there
were evidence supporting the sophistication of Applicant’s consumers, there is no
evidence that Registrant’s customers or potential customers are sophisticated.
Notwithstanding, even sophisticated purchasers are not immune from source
confusion. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) (citing Carlisle 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.”)). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690-91 (Fed. Cir. 1993); In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB
2016).
Thus, the fourth du Pont factor is neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. When we weigh
the relevant du Pont factors, we find that Applicant’s mark for its
identified services is not likely to cause confusion with the cited mark

10 Applicant’s Reply Brief, p. 2 n.2; 10 TTABVUE 3.
Serial No. 87496920
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for its identified services. In view of the weakness of the literal
portions of both Applicant’s and Registrant’s marks (which have been disclaimed in
their entirety), we find that the differences in the other components of the marks are
sufficient to distinguish Applicant’s mark from the cited mark, despite the fact that
the services are legally identical in part, must be deemed to travel in the same
channels of trade, and are offered to the same or overlapping consumers.
Decision: The refusal to register Applicant’s mark under Section
2(d) of the Trademark Act is reversed.