Novus Advisors, LLC

Trademark Trial and Appeal Board

May 2, 2016

No. 85788653 (T.T.A.B. May. 2, 2016)

Mailed: May 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_____
In re Novus Advisors, LLC
_____
Serial No. 85788653
Filed November 27, 2012
_____
Neal P. Pierotti of Metz Lewis Brodman Must O’Keefe LLC, for Applicant.
William Breckenfeld, Trademark Examining Attorney, Law Office 116, Christine
Cooper, Managing Attorney.
_____
Before Quinn, Mermelstein and Greenbaum, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Based on use in commerce, Applicant Novus Advisors, LLC, seeks registration on
the Principal Register of the mark:

for use in connection with:
Management of investments, namely, management of
qualified and non-qualified retirement plans and manage-
ment of institutional and retail investment portfolios.
This Opinion is not a
Precedent of the TTAB
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Applicant claims the colors blue, gold, and brown as features of the mark. In re-
sponse to the Examining Attorney’s requirement, Applicant submitted a disclaimer
of “ADVISORS REGISTERED INVESTMENT ADVISOR” apart from the mark
as shown.
The Examining Attorney issued a final refusal to register under Trademark Act
§ 2(d), 15 U.S.C. § 1152(d), on the ground that Applicant’s mark so resembles the
mark NOVUS (in standard characters) in Registration No. 3535557, registered for
use in connection with “financial services, namely, cash disbursement services,
charge card services, debit card services and credit card services,” that confusion is
likely as to the source of the recited services. Applicant appeals the refusal to register.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the pro-
bative facts in evidence that are relevant to the factors bearing on the issue of likeli-
hood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumu-
lative effect of differences in the essential characteristics of the goods [or services]
and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In re Azteca Rest. Enters., Inc., 50
USPQ2d 1209 (TTAB 1999).
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II. Discussion
A. The Similarity or Dissimilarity of the Marks in Their Entireties as to
Appearance, Sound, Connotation and Commercial Impression.
In comparing the marks at issue, we consider their appearance, sound, meaning,
and commercial impression. Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (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 par-
ties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012). “[I]n articulating reasons for reaching a conclusion on the issue
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 consideration of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
According to Applicant, its mark differs from the registered mark in appearance
(words and design vs. word mark; multiple words vs. single word; Applicant’s use of
color vs. no color in the registered mark); in meaning (Applicant’s mark means “a
‘new, recent, or unusual advisor,’ ” while the registered mark implies “a ‘new unknown
thing’ ”; Applicant’s design “signif[ies] a direction of guidance that the advisor would
provide”); and in sound. App. Br. 4 TTABVue 6–9. On the other hand, the Examining
Attorney contends that NOVUS is the dominant portion of Applicant’s mark, and is
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identical to the registered mark; that the additional wording in Applicant’s mark is
descriptive; that the literal part of Applicant’s mark dominates the graphic elements;
and that Applicant’s use of color does not distinguish the marks. Ex. Att. Br. 7
TTABVue 6–8.
Applicant’s mark and the mark in the cited registration share the identical term
NOVUS, which comprises the whole of the registered mark. The cited mark is regis-
tered in standard characters, so we must consider that it could be used in any styli-
zation, including the same typeface and color as the term is used in the subject appli-
cation. Applicant’s mark also features a design element, depicting a compass rose,1
with the North direction indicated by the letter “N” at the top.
Applicant finds particular significance in the letter “N” in its mark: “The ‘N’ por-
tion of the mark before the word ‘NOVUS’ really distinguishes these two marks from
one another because it comes first in the mark and is completely unique, and is not
present at all in the mark of Registrant.” App. Br., 4 TTABVue 8. We conclude, how-
ever, that the letter “N” cannot support the weight Applicant places on it. The im-
pression made by the letter in Applicant’s mark is not that of a literal element. Ra-
ther, given the placement of that letter, the letter “N” would clearly be seen as part

1 Applicant and the Examining Attorney refer to Applicant’s design as a compass, although
it appears instead to be a compass rose. A compass is “a device that is used to find direction
by means of a needle that always points north,” while a compass rose is “a circle graduated
to degrees or quarters and printed on a chart to show direction.” Both definitions from Mer-
riam–Webster online, http://www.merriam-webster.com/ (visited Feb. 19, 2016). Rather than
a depiction of an instrument with a magnetic needle, Applicant’s design is of a type printed
on maps to indicate proper orientation. Although we note the difference, it does not change
our analysis of Applicant’s mark or its comparison with the registered mark.
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of the compass rose, indicating direction. In other words, the letter “N” in Applicant’s
mark is merely a part of the design element in the mark. We think it highly unlikely
that prospective purchasers would consider it a part of the wording in the mark or
that they would pronounce the mark “N NOVUS ADVISORS. . . ,” vocalizing the
“N.” While we do not ignore the letter in our comparison of the marks, we do not find
it likely in itself to be perceived by potential purchasers to be a major feature of Ap-
plicant’s mark or a significant point of distinction with the cited mark.
According to a definition submitted by Applicant, “novus” is a Latin adjective
meaning
novus m (feminine nova, neuter novum); first/second de-
clension
1. new, not old
Colonos novos[2] ascribere.
To appoint new inhabitants.
2. fresh, young
3. recent
4. unusual, extraordinary.
en.wiktionary.org/wiki/novus?rdfrom=Novus (Sept. 19, 2013) (attached to Sept. 23,
2013, Response to Office Action).

2 According to the same wiktionary entry, novos is the masculine plural of novus in the accu-
sative case, but there is no evidence that the Latin declension is widely known to the relevant
purchasers or the U.S. public.
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To the extent Applicant argues that the word NOVUS takes on a different mean-
ing in each mark, we disagree. Although we often consider the translation of foreign
wording under the doctrine of foreign equivalents, the doctrine is only applied to com-
mon, modern languages. Palm Bay, 73 USPQ2d at 1696. Latin, by contrast, is usually
considered to be a “dead” language, and unless the term in question is commonly used
in English, we do not consider the English meaning of the Latin term in determining
registrability. See Magnavox Co. v. Multivox Corp. of Am., 341 F.2d 139, 144 USPQ
501, 504 (CCPA 1965) (“While “vox” is a dictionary term connoting voice, it is a term
of Latin origin not of common use in the English language.”); Am. Cyanamid Co. v.
J. Josephson, Inc., 192 USPQ 765, 678 (TTAB 1976) (“it is doubtful that the average
purchaser of wall coverings will be familiar with the Latin word ‘SANITAS’ and its
meaning”). It is doubtful that prospective purchasers would know the Latin meaning
of NOVUS (let alone that it is an adjective, see App. Br., 4 TTABVue at 8‒9). To the
contrary, we find that the term NOVUS would be perceived by potential purchasers
as having the same meaning as it is used in both Applicant’s mark and in the cited
mark, i.e., that of an arbitrary term. But even if we were to agree that prospective
purchasers would know the Latin meaning of NOVUS, it would have very little mean-
ing in connection with the relevant services, and in any event, it would carry the same
meaning or connotation as used in both marks.
Applicant offered twelve registrations comprising the term NOVUS on the Prin-
cipal Register (one of which, Reg. No. 2898523, has since been cancelled). See Re-
sponse to Ofc. Action (Sept. 23, 2013). These registrations cover various goods and
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services which are entirely unrelated to either Applicant’s services or those recited in
the cited registration. See Century 21 Real Estate Corp. v. Century Life of America,
23 USPQ2d at 1801 (the relevant du Pont inquiry is the number and nature of similar
marks in use on similar goods or services). Third-party registrations are not evidence
that the registered marks are in use or that consumers are familiar with them. AMF
Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269–70 (CCPA 1973)
(“It appears that the board relied heavily upon the existence of third-party trademark
registrations in reaching its decision. We have frequently said that little weight is to
be given such registrations in evaluating whether there is likelihood of confusion.”);
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992) (“As to strength of a mark, however, registration evidence may not be given any
weight.”). Nor can we conclude from these disparate registrations that NOVUS has
some meaning in relation to the services at issue in this appeal. While we have con-
sidered this evidence, we conclude that it does not support Applicant’s argument that
its mark is registrable in view of the cited registration.
We agree with the Examining Attorney that NOVUS is the dominant portion of
Applicant’s mark. The remaining wording in Applicant’s mark is at least descriptive
of the identified services, and has been disclaimed as such. While descriptive, generic,
or otherwise disclaimed matter is not removed from the mark, and we must consider
the marks in their entireties, the “descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.” Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l
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Data Corp., 224 USPQ at 752). See also In re N.A.D. Inc., 57 USPQ2d 1872, 1873‒74
(TTAB 2000) (“[t]hese descriptive, if not generic, words have little or no source-indi-
cating significance”). We conclude that when Applicant’s mark is considered as a
whole, the wording “ADVISORS REGISTERED INVESTMENT ADVISOR” plays
a relatively minor role in the overall impression made by Applicant’s mark. This, and
the fact that the distinctive term NOVUS is the first word in Applicant’s mark make
it appropriate to place more emphasis on the shared term than on the additional
wording in Applicant’s mark. Palm Bay Imports, 73 USPQ2d at 1692 (“The presence
of this strong distinctive term as the first word in both parties’ marks renders the
marks similar, especially in light of the largely laudatory (and hence non-source iden-
tifying) significance of ROYALE.”).
As for Applicant’s argument that the use of color in its mark distinguishes it from
that of the cited registrant, App. Br. 4 TTABVue 7–8 (“Registrant’s mark lacks the
three colors claimed in Applicant’s mark”), we again agree with the Examining At-
torney. The cited mark is registered in standard characters. As such it covers use of
the Registrant’s mark in any “font style, size, or color.” Trademark Rule 2.52(a);
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258‒59 (Fed. Cir. 2011). We must therefore consider the prior registration to include
the word NOVUS displayed in colors (and a typeface) similar — or identical — to
that in Applicant’s mark.
The compass-rose design (including the letter “N”) in Applicant’s mark is a closer
question. While we must assume that Registrant’s standard-character mark could be
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displayed in any font, size, or color, we cannot assume that it will be displayed with
a design similar to that in Applicant’s mark. Thus, we consider the presence of the
compass-rose design in Applicant’s mark to constitute a difference between it and the
cited mark. Nonetheless, the addition of an element to a registered mark does not, in
itself, mean that confusion cannot be likely; it has often been found that an addition
to a registered mark is insufficient to avoid confusion. E.g., Herbko Int’l Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380‒81 (Fed. Cir. 2002) (“This court
agrees with the Board that the words dominate and that the addition of the puzzle
design does not diminish the substantial identity of the marks in their entireties.”);
In re RSI Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (“the addition of the sphere
in applicant’s mark does not significantly change the pronunciation, meaning, or com-
mercial impression of the mark”). The answer depends on the nature of the addition
and its contribution to the overall impression of the junior mark.
Here, Applicant’s design is of significant size and there is no suggestion on this
record that it is descriptive or highly suggestive. Yet, the design does not change the
impression made by the wording in applicant’s mark, and in particular, the term
NOVUS. The literal portions of a mark often form the dominant impression in a mark
comprising words and a design, because it is the wording in the mark that is used to
call for and discuss the identified services. See CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and
words, the verbal position of the mark is the one most likely to indicate the origin of
the goods to which it is affixed”). We find that to be the case here. While the design
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portion of Applicant’s mark is not insignificant and cannot be ignored, what is most
likely to be remembered of Applicant’s mark is the word NOVUS, the only distinctive
word in Applicant’s mark — which is further emphasized in Applicant’s mark by ap-
pearing in a different color from the descriptive wording. While we cannot and do not
ignore any part of Applicant’s mark, we find that customers are very unlikely to refer
to Applicant’s services as “N Novus advisors registered investment advisor and com-
pass design.” In remembering and referring to the services represented by Applicant’s
mark, the relevant consumers are instead likely to focus on the term NOVUS, which
is identical to the entirety of Registrant’s mark.
Thus, although Applicant’s mark is obviously different from the cited mark in that
it includes a design and additional — albeit descriptive — wording, it is clear that
when considered as a whole, Applicant’s mark bears a strong resemblance to the
mark in the cited registration in that it includes as its dominant feature the entirety
of the distinctive mark in the cited registration, and the additional matter in Appli-
cant’s mark is subordinate. In comparing the marks in their entireties, we find that
the similarities in the marks outweighs their differences. Those familiar with Regis-
trant’s mark are likely to believe that Applicant’s mark, with its design and addi-
tional descriptive wording, indicates a connection with the cited Registrant as a var-
iation of Registrant’s standard-character mark. This factor thus favors a finding that
confusion is likely.
B. The Similarity or Dissimilarity and Nature of the Services and Trade
Channels
In comparing the parties’ services, “[t]he issue to be determined . . . is not whether
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the [services] . . . are likely to be confused but rather whether there is a likelihood
that purchasers will be misled into the belief that they emanate from a common
source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB
1989). It is not necessary that the parties’ services be the same or even competitive
to support a finding of likelihood of confusion. It is sufficient if the services are related
in some manner or that the conditions surrounding their marketing are such that
they would be encountered by the same persons under circumstances that could, in
light of the similarity of the marks, give rise to the mistaken belief that the services
come from or are associated with the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993).
Applicant’s services are
Management of investments, namely, management of
qualified and non-qualified retirement plans and manage-
ment of institutional and retail investment portfolios.
The services identified in the cited Registration are
Financial services, namely, cash disbursement services,
charge card services, debit card services and credit card
services.
Applicant notes that there is no overlap of its services with those in the cited reg-
istration, and that, unlike Registrant’s services, its services are provided in a per-
sonal manner. App. Br. at 4 TTABVue 10‒11. While acknowledging the Examining
Attorney’s evidence showing services such as those of Applicant and those of Regis-
trant being offered by the same source, Applicant argues that “the . . . differences in
the respective trade channels of Applicant’s services and Registrant’s services . . .
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weigh[ ] in favor of finding no likelihood of confusion. . . .” App. Br. 4 TTABVue 13.
Conversely, the Examining Attorney argues that “many major banks do offer both
[A]pplicant’s and [R]egistrant’s services, Ex. Att. Br. 7 TTABVue 5, and that the ser-
vices “are complementary” and “are targeted to an overlapping consumer base.” Ex.
Att. 7 TTABVue 6. In support of his argument, the Examining Attorney submitted
pages from the websites of Chase, Citibank, Bank of America, Merrill Lynch, Wells
Fargo, PNC, Final Ofc. Action (Oct. 23, 2013), and E*Trade, Ofc. Action (Mar. 23,
2013), all offering both financial management services like those identified in the
subject application and credit and debit card services like those of the cited Regis-
trant. The Examining Attorney also argues that Applicant’s and Registrant’s services
are complementary, in that cash disbursement services can be used to disburse funds
in managed investment portfolios, such as those of Applicant.
We agree with Applicant that on this record, there is no overlap in the services
recited in its application and in the cited registration; the services are clearly differ-
ent. But the relevant question is not whether the services can be distinguished, but
whether consumers would believe that, when used in connection with the marks in
question, the Applicant’s services emanate from or are associated with those of the
cited Registrant.
Applicant acknowledges the Examining Attorney’s evidence showing that a num-
ber of banks offer services such as those of both Applicant and the cited Registrant.
App. Br. 4 TTABVue 12‒13. In the absence of evidence or argument to the contrary,
we conclude that it is not unusual for banks to offer such services in close proximity,
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and that consumers are likely to assume that such services offered under a similar
mark emanate from the same or related sources. And while it appears that Appli-
cant’s services are offered in a different manner than those of Registrant, the record
evidence indicates it is not unusual for such services to be offered and advertised in
the same channels, i.e., on the websites of banks.
Applicant cites Canada Dry Corp. v. Am. Home Prods. Corp., 175 USPQ 557
(CCPA 1772), Autac Inc. v. Walco Sys. Inc., 195 USPQ 11 (TTAB 1977), and Alliance
Mfg. Co, Inc. v. Chicago Musical Instrument Co., 184 USPQ 118 (TTAB 1975), for the
proposition that “the same or similar channels of trade [are] not ‘ipso facto’ enough to
establish that the services . . . would be perceived by consumers as emanating from a
single source.” App. Br. 4 TTABVue 12‒13. The cited cases involve very different facts
than the case at hand. In Canada Dry, confusion was not found likely merely because
laundry detergent and soft drinks could both be sold in supermarkets. In Autac, the
goods were entirely unrelated, and not complementary, and there was no indication
that the same customers ever purchased the parties’ respective goods. And in Alli-
ance, the Board held that goods are not sufficiently related to find likelihood of con-
fusion merely because they could both be sold in department stores. We have no dis-
agreement with these decisions, but their facts differ considerably from the facts in
this case. Here, customers would not believe that Applicant’s and Registrant’s ser-
vices come from a single source merely because they are sold by retailers of a vast
range of consumer items, such as supermarkets or department stores. Rather, the
Examining Attorney’s evidence shows that such services are in fact advertised and
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sold through the same bank websites, which are available to the general public. More-
over, as pointed out by the Examining Attorney, the services in this case are compli-
mentary financial services. And while the Examining Attorney has not provided any
market research identifying the usual consumers for services like Applicant’s (such
evidence is not usually required in ex parte appeals), there can be little doubt that
Registrant’s charge card, debit card, and credit card services are offered to — and
used by — the general public, including those individuals and institutions who might
be interested in Applicant’s services.
Based on this record, we conclude that Applicant’s services are related to those of
Registrant, and are offered in the same channels of trade to the same customers.
Although the services are clearly different, prospective purchasers are likely to be-
lieve that Applicant’s and Registrant’s services emanate from a single source or are
likely to be affiliated or related in some way. These factors support a finding that
confusion is likely.
C. Actual Confusion
Finally, Applicant notes that it “ha[s] been selling [its] services for three years
and four months and have not had any instances of actual confusion.” App. Br. 4
TTABVue 13. The question before us is whether confusion is likely, not whether it
has actually occurred. While evidence of actual confusion is highly relevant, the lack
of actual confusion rarely is, particularly in an ex parte context. It is rarely — if ever
— appropriate to give significant weight to an asserted absence of actual confusion
in an ex parte case. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
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1205 (Fed. Cir. 2003) (citing J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144
USPQ 435, 438 (CCPA 1965)).
[A]pplicant’s assertion that it is unaware of any actual con-
fusion occurring as a result of the contemporaneous use of
the marks of applicant and registrant is of little probative
value in an ex parte proceeding such as this where we have
no evidence pertaining to the nature and extent of the use
by applicant and registrant (and thus cannot ascertain
whether there has been ample opportunity for confusion to
arise, if it were going to); and the registrant has no chance
to be heard from.... Moreover, the test under Section 2(d) is
not actual confusion but likelihood of confusion.

In re Kangaroos U.S.A., 223 USPQ 1025, 1026‒27 (TTAB 1984) (citations omitted).
D. Conclusion
We find that Applicant’s mark is similar to that of the cited registrant, and that
the services are related and sold in the same channels of trade to the same consumers.
While we recognize that neither Applicant’s marks nor its identified services are iden-
tical to those of the cited registrant, the similarities are enough — in light of all of
the evidence — to conclude that use of Applicant’s mark

in connection with the identified services is likely to cause confusion in view of the
cited registration of NOVUS.

Decision: The refusal to register Applicant’s mark N NOVUS ADVISORS REGIS-
TERED INVESTMENT ADVISOR and design is affirmed.