Exemplar Financial Network LLC

Trademark Trial and Appeal Board

Jan 31, 2012

No. 77907213 (T.T.A.B. Jan. 31, 2012)

Mailed:
January 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Exemplar Financial Network LLC
________

Serial No. 77907213
_______

Stephen T. Scherrer of Scherrer Patent & Trademark Law,
P.C. for Exemplar Financial Network LLC.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Bergsman and Shaw,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Exemplar Financial Network LLC (“applicant”) filed an
intent-to-use application for the mark YOUR PATHWAY TO
SUCCESS, in standard character form, for “estate planning;
financial planning; financial planning for retirement;
insurance information and consultancy,” in Class 36.
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with the identified services, so resembles
the registered mark PATHWAYS TO SUCCESS, in standard
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77907213
2
character form, for the services set forth below as to be
likely to cause confusion.1
Educational software featuring
instruction in financial planning and
management for professional persons
relating to the management of a
professional practice, in Class 9;

Educational publications, namely,
training manuals in the field of
financial planning and management for
professional persons relating to the
management of a professional practice,
and printed instructional, educational,
and teaching materials in the field of
financial planning and management for
professional persons relating to the
management of a professional practice,
in Class 16; and

Educational services, namely, providing
courses of instruction at the college
level, educational services, namely,
conducting seminars, conferences, and
workshops in the field of financial
planning and management for
professional persons relating to the
management of a professional practice,
and distributing course materials in
connection therewith, educational
services, namely, conducting programs
in the field of financial planning and
management for professional persons
relating to the management of a
professional practice, educational
services, namely, providing a website
featuring programs for financial
planning and management for
professional persons relating to the
management of a professional practice,
in Class 41.

1 Registration No. 3002571, issued September 27, 2005; Section 8
affidavit accepted.

Serial No. 77907213
3
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are very similar:
PATHWAYS TO SUCCESS vs. YOUR PATHWAY TO SUCCESS
There is no material difference between the singular
and plural form of the word “Pathway” and, therefore,
PATHWAY and PATHWAYS will be regarded as the same. Wilson
v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)
(“there is no material difference, in a trademark sense,
between the singular and plural forms of the word ‘Zombie’
and they will therefore be regarded here as the same
mark”); Edison Brothers Stores, Inc. v. Brutting E.B.
Serial No. 77907213
4
Sport-International GmbH, 230 USPQ 530, 532 (TTAB 1986)
(“The marks [EBS vs. EB and design] differ only by the
single letter ‘s’ in opposer’s mark and the diamond-shaped
outline in applicant’s. Neither of these differences is
adequate, in our opinion, to obviate confusion among
purchasers of shoes”); In re Pix of America, Inc., 225 USPQ
691, 692 (TTAB 19855) (“As for the marks [NEWPORT vs.
NEWPORTS] except for the plurization of applicant’s mark
which is almost totally insignificant in terms of the
likelihood of confusion of purchasers, the marks are
essentially identical in sound, appearance and commercial
impression”).
Likewise, applicant’s addition of the pronoun “your”
before the term “Pathway To Success” does not distinguish
the marks. The pronoun “your” tells the viewer whose
pathway to success. Applicant’s mark YOUR PATHWAY TO
SUCCESS, thus, encompasses registrant’s entire mark
PATHWAYS TO SUCCESS. In such circumstances, likelihood of
confusion has been found where the entirety of one mark is
incorporated within another. See Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons,
Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s
mark BENGAL LANCER for club soda, quinine water and ginger
ale is likely to cause confusion with BENGAL for gin);
Serial No. 77907213
5
Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM
for hairdressing and conditioner is likely to cause
confusion with EBONY for cosmetics); In re Cosvetic
Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s
mark HEAD START COSVETIC for vitamins for hair conditioners
and shampoo is likely to cause confusion with HEAD START
for men’s hair lotion and after-shaving lotion).
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

It is well settled that applicant’s services and the
registrant’s goods and services do not have to be identical
or directly competitive to support a finding that there is
a likelihood of confusion. It is sufficient if the
respective products and services are related in some manner
and/or that the conditions surrounding their marketing are
such that they would be encountered by the same persons
under circumstances that could, because of the similarity
of the marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
Serial No. 77907213
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USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The question of likelihood of confusion is determined
based on the identification of services in the application
and the goods and services as set forth in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
In addition, the greater the degree of similarity
between the marks, the less similarity between the goods
and/or services is required to support a finding of
likelihood of confusion. Where as here, the marks are very
similar, there need be only a viable relationship between
the goods and services to find that a likelihood of
confusion exists. In re Opus One, Inc., 60 USPQ2d 1812,
1815 (TTAB 2001); In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
When we are determining whether the goods and services
are related, we must consider the goods and services as
they are identified in the respective identification of
goods and recitation of services. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
Serial No. 77907213
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descriptions of goods”). See also Octocom Systems, Inc. v.
Houston Computers Services 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”). Therefore, we
may not read limitations into the identification of goods
or recitation of services. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”).
The registrant has registered its mark for, inter
alia, educational software [Class 9], publications [Class
16], and educational services [Class 41] in the field of
financial planning for professional persons relating to the
management of a professional practice. Applicant is
seeking to register its mark for, inter alia, financial
Serial No. 77907213
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planning.2 Because there are no limitations or restrictions
in applicant’s recitation of services, applicant’s
financial planning services encompass financial planning
for professional persons relating to the management of a
professional practice. As indicated above, because we may
not read limitations into applicant’s recitation of
services, we may not restrict or limit applicant’s
services, as applicant asserts, to read “general estate and
financial planning services, insurance information and
consultancy provided to individuals requiring those
services, sold through the channels of trade generally used
for selling these services, while the Registrant’s goods
are very clearly limited to ‘educational services.’”3
(Emphasis in the original). Thus, there is no basis for
applicant’s argument that applicant’s services and
registrant’s goods and services are dissimilar, move in
different channels of trade and are offered to different
customers.4

2 The fact that applicant’s recitation of services includes
additional services is not dispositive. It is sufficient for a
finding of likelihood of confusion if the relatedness is
established for any item encompassed by the identification of
goods or services in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
3 Applicant’s Brief, p. 13.
4 Applicant’s Brief, pp. 10-14.
Serial No. 77907213
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To support his position that the applicant’s services
and the registrant’s goods and services are related, the
Examining Attorney has submitted numerous use-based, third-
party registrations for goods and services listed in both
the application and registration at issue. Third-party
registrations which individually cover a number of
different goods and services that are based on use in
commerce may have some probative value to the extent that
they serve to suggest that the listed services are of a
type which may emanate from the same source. In re Albert
Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The registrations listed below are representative.5
Mark Reg. No. Goods/Services
THE PROFIT
ZONE
3242285 Publications in the field of
financial planning; consulting
services in the field of financial
planning; educational services in
the field of financial planning

2597008 Personal and business planning,
estate planning, retirement
planning; educational services in
the field of financial planning

2994674 Prerecorded audio and video tapes
in the field of financial planning;
printed educational materials in
the field of financial planning;
providing financial information,
analysis and consultation;

5 We have not included the entire description of goods and
services for each of the registrations. Only the goods in both
applicant’s application and registrant’s registration are listed.
Serial No. 77907213
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Mark Reg. No. Goods/Services
educational services in the field
of financial planning
CALSTRS 2994785 Printed educational materials in
the financial field; financial
planning; educational services in
the field of financial planning
MONEY DANCING 3562541 Printed materials in the field of
personal finance; financial
planning; personal coaching
services in the field of financial
planning

We would expect that customers for financial planning
services would request educational materials and services
relating to the financial planning services offered by both
registrant and applicant for use in making their financial
planning purchasing decisions and it would be odd if
applicant and registrant did not have such materials and
provide educational services about financial planning.
Indeed, it is logical that an entity that renders financial
planning services would provide educational materials and
services in order to market its financial planning
services.
In view of the foregoing, we find that applicant’s
services and registrant’s goods and services are related,
move in the same channels of trade, and are sold to the
same classes of consumers.

Serial No. 77907213
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C. The conditions under which and buyers to whom sales
are made, i.e., “impulse” vs. careful, sophisticated
purchasing.

Applicant argues, and we acknowledge, that consumers
for financial planning goods and services may exercise a
high degree of care. However, this high degree of care
relates to financial planning goods and services rather
than to trademarks. Since applicant did not introduce any
evidence regarding the decision making process under which
consumers exercise their high degree of care, we cannot
speculate as to role trademarks play in the purchasing
decision and whether this high degree of care will preclude
consumers from mistaking one trademark for another when the
marks are as similar as those before us and cover goods and
services in the same field. See Educational Development
Corporation v. Educational Dimensions Corporation, 183 USPQ
492, 496 (TTAB 1974).
D. Balancing the factors.
In view of the facts that the marks are very similar,
the goods and services are related, move in the same
channels of trade and are sold to the same consumers, we
find that applicant’s mark YOUR PATHWAY TO SUCCESS for
“estate planning; financial planning; financial planning
for retirement; insurance information and consultancy,” is
Serial No. 77907213
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likely to cause confusion with the mark PATHWAYS TO SUCCESS
for the goods and services recited in the registration.
Decision: The refusal to register is affirmed.