GL Rogers & Associates, Inc.

Trademark Trial and Appeal Board

Aug 12, 2016

No. 86214782 (T.T.A.B. Aug. 12, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re GL Rogers & Associates, Inc.
_____

Serial No. 86214782
_____

Matthew H. Swyers of The Trademark Company, PLLC for GL Rogers & Associates,
Inc.

Barbara Brown, Trademark Examining Attorney, Law Office 116 (Christine Cooper,
Managing Attorney).
_____

Before Taylor, Shaw, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
GL Rogers & Associates, Inc. (“Applicant”) has filed an application to register the
mark LIGHTHOUSE FINANCIAL GROUP in standard characters for “Investment
management,” in International Class 36.1 The Trademark Examining Attorney
refused registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark, as used in connection with Applicant’s services, so

1 Application Serial No. 86214782, filed March 7, 2014 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), stating November 2009 as the date of first use of the mark and
first use of the mark in commerce.
Serial No. 86214782

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resembles the registered marks shown below as to be likely to cause confusion, or to
cause mistake, or to deceive.
Reg. No. Mark Services
4556548

Real estate funds investment
services.2
4560771 LIGHTHOUSE OPPORTUNITY
FUND
Real estate funds investment
services.3

4548212 LIGHTHOUSE REALTY
ADVISORS
Real estate asset management
services.4

Reg. Nos. 4556548 and 4560771 appear to be owned by the same entity. The
Examining Attorney contends that the third cited registration belongs to a “related
company,” as is purportedly shown in the prosecution records underlying the
registrations.5 However, the Examining Attorney did not submit the prosecution
records as evidence, and they are not before us.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney have filed briefs.
Our determination 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 issue of

2 Registered June 24, 2014; OPPORTUNITY FUND disclaimed; color is not a feature of the
mark.
3 Registered July 1, 2014; OPPORTUNITY FUND disclaimed.
4 Registered June 10, 2014; REALTY ADVISORS disclaimed.
5 Examining Attorney’s brief, 6 TTABVUE 7-8.
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likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We will initially confine our analysis to the issue of likelihood of confusion
between Applicant’s mark and the mark in Reg. No. 4560771, which is
LIGHTHOUSE OPPORTUNITY FUND in standard characters for
“Real estate funds investment services.” This mark and the services for which it is
registered are more similar to those of Applicant than the other cited marks and
services. If the refusal can be affirmed on the basis of this cited registration, it will
be unnecessary to address the likelihood of confusion with respect to the other
registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
1. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “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 parties.” Coach Servs. Inc. v. Triumph
Serial No. 86214782

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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted).
Applicant’s mark and the cited mark are similar in appearance, sound and
meaning to the extent that each includes, as its initial term, the word
LIGHTHOUSE. They differ in appearance, sound, and meaning by virtue of their
additional wording, which is, respectively, FINANCIAL GROUP and
OPPORTUNITY FUND.
Applicant is correct in arguing that the marks must be considered in their
entireties. However, 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 that
our ultimate conclusion rests upon a comparison of the marks in their entireties. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
“Indeed, this type of analysis appears to be unavoidable.” Id. In this case, the term
LIGHTHOUSE is the dominant component of each mark because it is arbitrary as
applied to the services at issue. The other wording in each of the marks is, as
Applicant admits, highly descriptive or generic.6 The significance of the word
LIGHTHOUSE as the dominant element of the marks is reinforced by its position
as the first part of the mark. It is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and remembered. Palm Bay Imports,
73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to

6 Applicant’s brief at 11-12, 4 TTABVUE 12-13.
Serial No. 86214782

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appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word). In the case of both marks,
customers would view LIGHTHOUSE as the primary indicator of the source of the
services, and would perceive the remaining wording primarily as an indication of
the nature of the services.
Applicant argues that the term LIGHTHOUSE is so diluted “in International
Class 36” that the marks at issue can be distinguished on the basis of the added
descriptive or generic wording. To support this contention, Applicant has made of
record copies of the following registrations:7
Reg. No. Mark Services
2003088 LIGHTHOUSE Commercial financing and
asset based loan services.

3257910 Financial loan
consultation, loan
origination, loan servicing,
loan financing and
providing loans secured by
commercial paper.
4561272 LIGHTHOUSE Consultation regarding
personal credit scores.

4349070 LIGHTHOUSE HILL RANCH Real estate services,
namely, rental of vacation
property.

7 Applicant’s response of November 19, 2014 at 17-22, 34-49. We have edited some of the
recitations of services for the sake of brevity.
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3984933 FRANCHISE LIGHTHOUSE Business brokerage
services and related
consulting pertaining to
procurement, buying,
selling and tendering
information and
opportunities.

3357358 LIGHTHOUSE KEY Listing, brokerage, leasing,
and management of rental
property, time-share
property, condominiums,
and vacation homes;
vacation real estate time-
sharing services.

2918851 LIGHTHOUSE CAPITAL PARTNERS Venture capital financing
services.

2749690 Insurance brokerage
services, namely providing
property, casualty,
professional liability
insurance, professional
design, and underwriting
for specific groups …
through independent
agents and brokers.

As an initial matter, we note that third-party registrations do not demonstrate
that the registered marks have been used in the marketplace, let alone used so
extensively that consumers have become sufficiently conditioned by their usage that
they can distinguish between such marks on the bases of minute differences. See
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (C.C.P.A.
1967) (“the existence of these registrations is not evidence of what happens in the
market place or that customers are familiar with their use.”). See also Olde Tyme
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Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992).
Nor do we agree that “past Office treatment of like service marks”8 is likely to affect
the relevant public’s ability to distinguish marks on the basis of relatively minor
differences, because most customers are not aware of internal USPTO practices.
Although it is true that “[t]hird party registrations are relevant to prove that some
segment of the composite marks … has a normally understood and well recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak,” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015), in this case, the third-party marks are
registered in fields of business that are different from that of Registrant, i.e.,
lending; consumer credit information; business brokerage; venture capital;
insurance, and real property management. Although these services all happen to be
classified in International Class 36, they are different in nature and purpose from
funds investment. We therefore do not agree with Applicant’s contention that these
third-party registrations demonstrate that LIGHTHOUSE is weak in the relevant
fields of business.
With respect to the overall commercial impression created by the marks at issue,
we note that each mark consists of the initial term LIGHTHOUSE followed by two
highly descriptive or generic words relating to the field of finance. The words
FINANCIAL GROUP in Applicant’s mark are general and extremely broad in
meaning and could encompass providers of all types of financial services, including

8 Applicant’s brief at 12, 4 TTABVUE 13.
Serial No. 86214782

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services involving an investment fund, as suggested by the words OPPORTUNITY
FUND. Although the additional wording of the registered mark is more specific
than the highly general wording in Applicant’s mark, in both cases the additional
words describe related financial concepts and therefore create similar commercial
impressions.
In view of the similarities between Applicant’s mark and the cited mark in
appearance, sound, meaning, and commercial impression, we find that the du Pont
factor of the similarity or dissimilarity of the marks weighs in favor of a finding of
likelihood of confusion.
2. The services.
We next consider the similarity or dissimilarity of the services as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom
Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). It is not necessary that the services at issue be similar or even
competitive to support a finding of likelihood of confusion. Coach Services Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1722. Rather, likelihood of confusion may
be found if the respective products are related in some manner or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source. Id.
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The Examining Attorney argues that all the services at issue are “investment
related financial services” and that “[A]pplicant’s identification is broad enough to
encompass the registrants’ more specific services.”9 We disagree. Investment
management involves making decisions about how to allocate a customer’s
resources among various investments. We understand “funds investment” to involve
the operation of a fund in which customers invest their assets; and “real estate
funds investment” to involve operating such a fund that invests specifically in real
estate. Registrant’s services cannot be considered to be encompassed by Applicant’s
identification of services.
Nonetheless, the Examining Attorney also has submitted a number of use-based,
third-party registrations (belonging to different registrants)10 that cover services
similar to those of both Applicant and Registrant to show that relevant customers
would likely believe that the services of Applicant and Registrant could emanate
from the same business. Not all of the third-party registrations are probative.
However, we note the following:
Reg.
No.
Services similar to
those of Applicant
Services similar to those of Registrant

4143253 Investment management

Funds investment
4383550 Financial management

Funds investment
4483644 Investment management Funds investment

4512900 Investment management Real estate funds investment services

9 Examining Attorney’s brief, 6 TTABVUE 9.
10 Office Action of June 22, 2014 at 9-42 and Office Action of December 19, 2014 at 12-38.
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4605336 Investment management Funds investment; Real estate funds
investment services

4605511 Investment management Real estate funds investment services

4644112 Investment management Real estate funds investment services

4594744 Investment management Real estate funds investment services; funds
investment

The above-listed third-party registrations show that 8 registrations cover services
like those of Applicant and Registrant. Third-party registrations that are based on
use in commerce and that individually cover a number of different services may
serve to suggest that the listed goods are of a type which may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
We consider the evidence described above together with the fact that Applicant’s
investment management services may involve placing its customers’ assets in funds
of the type covered by the cited registration. This is confirmed by an excerpt from
Applicant’s website:
Investing can also involve loaded mutual funds with
commissions and/or large amounts of revenue-sharing
which can affect investor returns. Investment
Management utilizes Institutional funds which eliminates
commissions, revenue sharing, and operates on a fully
disclosed flat fee basis.11
Considering the third-party registrations that cover both investment management
and funds investment together with the fact that Applicant’s identified services

11 Affidavit of Gary L. Rogers, Exhibit A, Applicant’s response of November 19, 2014 at 31.
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would entail making use of funds investment services, we find that relevant
customers would readily believe that the services of Applicant and those identified
in the cited registration could emanate from a single source. To this extent, the du
Pont factor of the similarity or dissimilarity of the services weighs in favor of a
finding of likelihood of confusion.
3. Trade channels.
The Examining Attorney argues that the services at issue travel through the
same trade channels.12 However, there is no evidence on this point. Accordingly, we
treat this du Pont factor as neutral.
4. Lack of actual confusion.
Applicant argues that “the absence of any instances of actual confusion is a
meaningful factor where the record indicates that, for a significant period of time,
an applicant’s sales and advertising activities have been so appreciable and
continuous that, if confusion were likely to happen, any actual incidents thereof
would be expected to have occurred and would have come to the attention of one of
the trademark owners.”13 This is not such a case. The affidavit of Gary L. Rogers
states that Applicant has used its mark since 2009,14 but otherwise it provides little
information regarding the extent to which Applicant has used and promoted its
mark; and the record contains no evidence of the extent of use of Registrant’s
marks. Thus, there is no basis upon which to determine whether there have been

12 Examining Attorney’s brief, 6 TTABVUE 13.
13 Applicant’s brief at 15, 4 TTABVUE 16.
14 Rogers Affidavit ¶ 12, Applicant’s response of November 19, 2014 at 29.
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meaningful opportunities for actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). We note also that the affidavit’s statement that “there have been no
instances of confusion with the cited blocking marks”15 refers not to the registered
marks now at issue, but to other, previously cited marks as to which the Examining
Attorney withdrew her refusal. Accordingly, the du Pont factor of the length of time
during and conditions under which there has been contemporaneous use without
evidence of actual confusion is considered neutral.
5. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. On the present
record, we find that Applicant’s mark so resembles the cited mark LIGHTHOUSE
OPPORTUNITY FUND as to be likely, when used in connection with Applicant’s
services, to cause confusion as to the source of Applicant’s services. In view of our
finding, we need not address the question of likelihood of confusion with respect to
the other cited registrations.
Decision: The refusal to register is affirmed.

15 Id.