Lion Global Investors Limited

Trademark Trial and Appeal Board

May 9, 2012

No. 79063620 (T.T.A.B. May. 9, 2012)

Mailed:
May 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lion Global Investors Limited
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Serial No. 79063620
_______

Peter D. Vogl and Stephen F. Kampmeier of Jones Day for Lion
Global Investors Limited.

Nicholas K. D. Altree, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On October 31, 2008, applicant Lion Global Investors
Limited applied to register the mark LION GLOBAL INVESTORS and
design, shown below, for services ultimately identified as
“investment management of pension funds, endowment funds, trust
funds and assets of accredited or institutional investors;
financial advisory services in relation to pension funds,
endowment funds, trust funds and assets of accredited or
institutional investors,” in Class 36. The application is a
request for extension of protection filed under Section 66(a) of
the Trademark Act of 1946, 15 U.S.C. §1144f(a). Applicant
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79063620
2
disclaimed the exclusive right to use the term “Global
Investors.”

The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
is likely to cause confusion with the two previously-registered
marks, listed below, owned by the same entity.
1. Registration No. 3543654 for the mark LION CAPITAL, in
standard character form, for “equity capital investment; venture
capital services, namely providing financing to emerging and
start-up companies; leveraged buy outs and investments in
financially distressed or underperforming companies; real estate
investment; hedge fund services,” in Class 36.1 Registrant
disclaimed the exclusive right to use “Capital”; and
2. Registration No. 3645484 for the mark LION, in
standard character form, for “financial services, namely,
financial and investment planning and research, financial

1 Issued December 9, 2008.

Serial No. 79063620
3
consultation, and assisting others with the completion of
financial transactions for stocks, bonds, securities and
equities; venture capital services, namely, providing financing
to emerging and start-up companies; leveraged buy outs and
investments in financially distressed or under performing
companies; real estate affairs, namely, real estate investment
services; equity capital investment; investment services,
namely, investment management services, mutual fund and hedge
fund investment services, management of a capital investment
fund, capital investment consultation and financial trust
operations; trust services, namely, investment and trust company
services; advisory and consultancy services relating to
corporate finance and venture capital services; investment in
the field of private equity, venture capital and specialized
funds and other funds; advising on and managing investments;
private equity investment management; buying, selling and
holding of securities; investment management services relating
to acquisitions and mergers; management of equity and debt
investment portfolios; investment asset management,” in Class
36.2
Our determination of likelihood of confusion under Section
2(d) is based on an analysis of all of the probative facts in

2 Issued June 30, 2009.

Serial No. 79063620
4
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., 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 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 and differences in the marks”).
We focus our likelihood of confusion analysis on
Registration No. 3645484 for the mark LION because the mark and
the services in that registration are most closely related to
those in the application at issue. If we find that there is no
likelihood of confusion with this registered mark in connection
with the listed services, there is no need for us to consider
the likelihood of confusion with the other registered mark. See
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity and nature of the services
described in the application and registration at issue and
the similarity or dissimilarity of likely-to-continue trade
channels and classes of consumers.

Applicant is seeking to register its mark for investment
management and financial advisory services for pension funds,
Serial No. 79063620
5
endowment funds, trust funds and assets of accredited or
institutional investors. The cited registration for the mark
LION is for, inter alia, investment management services,
financial and investment planning and research, and trust
services, namely, investment and trust company services. Because
there are no limitations as to channels of trade or classes of
purchasers in the recitation of services in the cited
registration, it is presumed that registrant’s investment
management and financial advisory services move in all channels
of trade normal for those services, and that they are available
to all classes of purchasers for those services, including the
channels of trade and classes of consumers related to investment
management and financial advisory services rendered to pension
funds, endowment funds, trust funds and assets of accredited or
institutional investors. See In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992). Thus, for our likelihood of confusion
analysis, applicant’s services and registrant’s services are in
part identical and, therefore, we must presume that the channels
of trade and classes of purchasers are the same. See Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications thereof
as to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers through the
Serial No. 79063620
6
same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994) (“Because the goods are legally identical,
they must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn now 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. In re E. I. du Pont De Nemours & Co.,
177 USPQ at 567. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987).
In comparing the marks, we are mindful that where, as here, the
services are in part identical, 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.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007).
Serial No. 79063620
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Furthermore, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the
source of the goods offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992).
The marks are similar in appearance, sound, meaning and
commercial impression because they share the word “Lion.” In
fact, applicant’s mark incorporates the entire registered mark.
Likelihood of confusion is often found where the entirety of one
mark is incorporated within another. The Wella Corp, v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne,
hair spray, conditioner and shampoo is likely to cause confusion
with the mark CONCEPT for cold permanent wave lotion and
neutralizer); Coca-Cola Bottling Co. v. Seagram & Sons, Inc.,
526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and
soldier design for club soda, quinine water and ginger ale is
likely to cause confusion with BENGAL for gin); In re West
Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972)
Serial No. 79063620
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(WEST POINT PEPPERELL and griffin design for fabrics is likely
to cause confusion with WEST POINT for woolen piece goods).
We are not persuaded that the presence of the term “Global
Investors” in applicant’s mark is a sufficient basis for
consumers to differentiate applicant’s mark from the registered
mark because that term is merely descriptive of the geographic
scope and nature of applicant’s investment management and
financial advisory services. In this regard, applicant has
disclaimed the exclusive right to use the term “Global
Investors” pursuant to the requirement by the examining attorney
on the ground that the term “Global Investors” is merely
descriptive.
Because the term “Global Investors” is descriptive, the
word “Lion” is the dominant element of applicant’s mark. It is
a well-established principle that, in articulating reasons for
reaching a conclusion on the issue of 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 National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The significance of the word “Lion” as the dominant element
of applicant’s mark is further reinforced by its location as the
first part of the mark. See Presto Products Inc. v. Nice-Pak
Serial No. 79063620
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Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). See also Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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 appear on the
label); Century 21 Real Estate Corp. v. Century Life of America,
23 USPQ2d at 1700 (upon encountering the marks, consumers must
first notice the identical lead word). Accordingly, applicant’s
mark LION GLOBAL INVESTORS is similar to registrant’s mark LION.
Although applicant did not argue in its brief that the word
“Lion” is diluted when used in connection with investment
management and financial advisory services, during the
prosecution of its application applicant submitted numerous
third-party registrations issued in Class 36 in an attempt to
prove that “Lion” marks can coexist on the Principal Register.
Listed below are the registrations related to investment
management and financial advisory services. See In re Melville,
18 USPQ2d 1386, 1388-1389 (TTAB 1991) (registrations for goods
unrelated to those at issue are irrelevant).

Mark Reg. No. Services
Serial No. 79063620
10
Mark Reg. No. Services
LIONSHARES 2831924 Providing online databases in the
fields of financial and mutual
fund analysis
LIONHART 2471170 Inter alia investment advice and
mutual fund management
LR LION ROCK 3100624 Financial portfolio management;
investment management
THE SABLE LION GROUP 2904257 Capital investment consultation,
investment advice, investment
consultation, investment
management
ROARING LION 2948611 Venture capital funding services
to emerging and start-up
companies, venture capital
services, namely, providing
financing to emerging and start-
up companies
LIONESS CAPITAL
PARTNERS
2715598 Private equity financing and
venture capital investment
services
LION SUBACCOUNTING
SYSTEM
1871557 Financial and investment services
in the field of mutual funds and
other investment products
THE LION ADVISOR
ACCOUNT
2770957 Inter alia financial and
investment services, namely, the
offering and sale of mutual funds
to others; investment advisory
and financial planning services

The third-party registrations do not prove that “Lion” is a
weak term. Absent evidence of actual use, third-party
registrations have little probative value because they are not
evidence that the marks are in use on a commercial scale or that
the public has become familiar with them. See Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations
Serial No. 79063620
11
reposing in the U.S. Patent and Trademark Office). See also In
re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw any
inferences about which, if any of the marks
subject of the third party [sic]
registrations are still in use. Because of
this doubt, third party [sic] registration
evidence proves nothing about the impact of
the third-party marks on purchasers in terms
of dilution of the mark in question or
conditioning of the purchasers as to their
weakness in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
While third-party registrations may be used in the manner
of a dictionary to show that a mark or a portion of a mark is
descriptive or suggestive of the services at issue, we fail to
see any descriptive or suggestive meaning of the word “Lion” in
connection with investment management and financial advisory
services.
In view of the foregoing, we find the similarity of the
marks is a factor that weighs in favor of finding that there is
a likelihood of confusion.
C. The degree of consumer care.

Applicant referenced the Board’s decision in In re Lion
Capital Management Limited, Serial No. 79051786 (TTAB 2011)
(nonprecedential), for the mark LION GLOBAL INVESTORS, in
Serial No. 79063620
12
standard character form.3 In that decision, the Board held that
the high degree of consumer care exercised by purchasers of
investment management and financial advisory services weighed in
favor of applicant and against finding a likelihood of
confusion. However, the Board also found that the high degree
of consumer care was not sufficient to outweigh the other
factors.
As in In re Lion Capital Management Limited, applicant did
not introduce any evidence regarding the degree of care
exercised by consumers purchasing investment management and
financial advisory services. Nevertheless, we can make certain
suppositions about the degree of care such consumers will
exercise when selecting such services based on the very nature
of those services. Purchasers of investment management and
financial advisory services will exercise a high degree of care,
and therefore focus on the trademark for the services and become
aware of the source of the service because these purchases will
be characterized by a personal sales experience by knowledgeable
salespersons and a focused need for the services. However, as
we found in In re Lion Capital Management Limited, even
sophisticated consumers are not immune to trademark confusion

3 Lion Capital Management Limited recorded its change of name to Lion
Global Investors in the USPTO on November 6, 2008 at reel 3884, frame
0705.

Serial No. 79063620
13
especially, where as here, the marks are similar and the
services are in part identical. While the degree of care factor
weighs in favor of applicant, it is not sufficient to outweigh
the other factors.
D. Balancing the factors.
In view of the facts that the marks are similar, the
services are in part identical and, therefore, there is a
presumption that the channels of trade and classes of consumers
are the same, we find that applicant’s mark LION GLOBAL
INVESTORS and design for “investment management of pension
funds, endowment funds, trust funds and assets of accredited or
institutional investors; financial advisory services in relation
to pension funds, endowment funds, trust funds and assets of
accredited or institutional investors” so resembles the
registered mark LION for, inter alia, investment management
services, financial and investment planning and research, and
trust services, namely, investment and trust company services as
to be likely to cause confusion.
Decision: The refusal to register is affirmed.