Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

EXAMINING ATTORNEY’S APPEAL BRIEF

Applicant has appealed the trademark examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act of 1946 (as amended) (hereinafter “the Trademark Act”), 15 U.S.C.  §1052(d).

FACTS

Applicant  has applied for registration on the Principal Register for the mark “SEEDS” in stylized characters plus design for “Financial advisory and consultancy services, namely, wealth management services; providing financial services with respect to securities and other financial instruments and products, namely, providing money management services; Money management services” in class 36.  Registration was refused under Trademark Act Section 2(d), 15 U.S.C. 1052(d), based on likelihood of confusion with Registration No. 4,755,746 for the mark “SEED WEALTH MANAGEMENT, INC.” in standard characters for use with respect to “Financial services, namely, wealth management services for individuals and families; Financial advice and consultancy services for individuals and families,” also in Class 36, as to be likely, when used with the identified services, to cause confusion or to cause mistake or to deceive.  This appeal follows the Examining Attorney’s final refusal under Section 2(d).

 

ISSUE ON APPEAL

The sole issue on appeal is whether applicant’s mark so resembles the registered mark, when used in connection with their respective identified services, as to be likely to cause confusion under Section 2(d) of the Trademark Act.

 

ARGUMENT

I. APPLICANT’S MARK IS LIKELY TO CAUSE CONFUSION WITH THE REGISTERED MARK WHEN USED IN CONNECTION WITH THE SPECIFIED SERVICES 

 

Applicant’s mark makes a very similar commercial impression to registrant’s mark and, when combined with the relatedness of the associated services, is likely to cause confusion in consumers who are likely to mistakenly believe that applicant’s services and registrant’s services come from the same source or are affiliated services from the same entity.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

A.    Applicant’s Services are Within the Scope of Registrant’s Services

The registered mark uses broad wording to describe its services: “Financial services, namely, wealth management services for individuals and families; Financial advice and consultancy services for individuals and families,” which presumably encompasses services of the type described, including applicant’s more narrow “Financial advisory and consultancy services, namely, wealth management services; providing financial services with respect to securities and other financial instruments and products; Money management services.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

On appeal, applicant does not dispute that the services identified by the applicant and registrant are closely related to each other if not in fact identical, and are often found provided in the same trade channels under the same  mark.   Thus, it is not disputed that applicant’s and registrant’s services are related for likelihood of confusion purposes.

 

B.    The Marks Provide a Similar Commercial Impression

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

When comparing marks, “[t]he 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 [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

In the present case, applicant’s mark is SEEDS in stylized characters and design and the registered mark is SEED WEALTH MANAGEMENT, INC. in standard characters.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, the registrant has disclaimed the highly descriptive wording “WEALTH MANAGEMENT, INC.” and the dominant element of the registered mark is the sole non-disclaimed word, “SEED”. 

To recapitulate, the literal element of applicant’s mark is SEEDS and the sole non-disclaimed portion of the registrant’s mark is the word SEED.  Applicant argues that the use of the plural form in the applied-for mark, versus the singular form in the registration, plays a role in differentiating the commercial impression of the marks from another, however, this is a distinction without a difference.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

Additionally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

Applicant’s central arguments concern its design (what applicant terms a “logo”):

The key here is that Applicant's logo which is green and contains a leaf for the SEEDS gives a completely different appearance and commercial impression than the Registered Mark which merely looks like a corporate name with form words….Consumers are not going to confuse a green, stylized mark with a logo that is a major component of a mark with a mark that is singular  and  not  plural  and contains  just  a corporate  name.

 

In this case, the design portion of applicant’s mark is the word SEEDS in green, with two leaf designs, including a design for a leaf in green and lime green appearing to sprout from the letter “D”.   This design is evocative of nature, in which green leaves sprout from seeds.  Thus, this design points to and buttresses the wording SEEDS. The registered mark, on the other hand, does not include a design, but is in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Evidence submitted with the Office action of October 22, 2019 (p. 2) included a screenshot of the registrant’s website, http://seedwealthmgmt.com/ revealing that the registrant is using its freedom to present its mark with design elements that are similar to applicant’s, include green leaf designs.  Thus we see that the registrant too, uses a green sprouting leaf in association with the dominant wording of its mark, “SEED”.  This serves to highlight the primacy of the word “SEED” in the registration, as green, growing things like leaves are certainly evocative of the “SEED” from which they spring.

Applicant also argues that the putative sophistication of the users of these services precludes their confusion as to the origin of the services when confronted by these marks:

In the wealth management industry, there are sophisticated consumers. They certainly know how to distinguish between investment companies. They would immediately know that the Applicant's Mark which has color, is stylized and in the plural cannot possibly come from the same source as the Registered Mark.

 

Even assuming arguendo that the consumers of these services are particularly sophisticated, even sophisticated people like to discuss financial services with others orally, using plain speech in which reference to the coloration of a mark is not apt to be of primary importance.  Applicant’s mark SEEDS may, in spoken words, be mistaken as an abbreviated reference to the registered mark, as the possessive form of the wording “SEED” is “SEED’S”, which has the same pronunciation as “SEEDS.”  And registrant has chosen to pair its wording SEED with a sprouting green leaf that is evocative of applicant’s design.  Thus, even for a putatively “sophisticated” consumer, rather than militate against a finding of a likelihood of confusion, applicant’s design makes confusion even more likely in this instance. 

Finally, applicant asserts a “lack of actual confusion from the use of the marks.” The examining attorney notes that applicant has not provided any evidence to support its assertion that there has been no actual confusion between the marks.  Moreover, “[A] showing of actual confusion is not necessary to establish a likelihood of confusion.”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). 

Applicant’s mark creates a confusingly similar impression to that of registrant’s mark based on the nearly identical wording of the dominant literal portions of the respective marks, as well as a design in applicant’s mark that emphasizes the primacy of that wording, and evidence that the registrant uses its mark in a way that also emphasizes the dominance of essentially the same wording.  Thus, based on the high similarity of the marks, the intimate and uncontested relatedness of the services, and their common trade channels, consumers are likely to mistakenly believe that services provided under the applied-for mark and under registrant’s mark come from the same source.

CONCLUSION

For the foregoing reasons, the trademark examining attorney respectfully requests that the refusal based on Section 2(d) of the Trademark Act be affirmed.

 

                                                                      Respectfully submitted,

 

 

/James Prizant/

Trademark Examining Attorney

Law Office 128

(571) 270-3068

James.Prizant@USPTO.GOV 

             

 

 

Travis Wheatley

Managing Attorney

Law Office 128

571-270-3626

Travis.Wheatley@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Examining attorney’s appeal brief has issued

on May 22, 2020 for

U.S. Trademark Application Serial No. 88309008

 

Please follow the steps below.

 

(1)  Read the appeal brief.

 

(2)  Direct questions about the appeal proceeding to the Trademark Trial and Appeal Board at 571-272-8500 or TTABInfo@upsto.gov. 

 

(3)  Submit reply brief within 20 days of May 22, 2020, if you wish to do so.  A reply brief must be submitted using the Electronic System for Trademark Trials and Appeals (ESTTA) and received by the USPTO before midnight Eastern Time of the last day of the reply period.