Phillips Publishing Int’l., Inc. et al.v.Internet World Broadcast-ing Corp.

Trademark Trial and Appeal Board

Oct 25, 2000

No. 91102098 (T.T.A.B. Oct. 25, 2000)

Paper No. 28
EWH/JW
10/25/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Phillips Publishing International, Inc. and Phillips
Publishing, Inc.
v.
Internet World Broadcasting Corporation
_____
Opposition No. 102,098
to application Serial No. 74/670,773
filed on May 8, 1995
_____
Peter G. Mack for Phillips Publishing International, Inc.
and Phillips Publishing, Inc.
Eleanor Spillnan for Internet World Broadcasting
Corporation
______
Before Simms, Seeherman and Hanak, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Internet World Broadcasting Corporation (applicant)
seeks to register in typed drawing form INVESTOR WORLD
for “providing access to an on-line computer database and
bulletin board service featuring advertisement and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 102,098
2
marketing information for investment products and
services offered to users of a global computer network;
on-line computerized ordering of investment products and
services.” The intent-to-use application was filed on
May 8, 1995.
Phillips Publishing International, Inc. and its
wholly owned subsidiary Phillips Publishing, Inc.
(referred to simply as “opposer”) filed a notice of
opposition alleging that since at least as early as
August 1993, they used the marks INVESTOR’S WORLD and
JOHN DESSAUER’S INVESTOR’S WORLD as trademarks for a
financial newsletter. Continuing, opposer alleged that
should applicant commence use of its service mark
INVESTOR WORLD, consumers would be “likely to be misled
into believing, contrary to fact, that applicant’s
services … emanate from or are in someway sponsored by
opposer.” (Notice of opposition paragraph 10). While the
notice of opposition did not make specific reference to
Section 2(d) of the Trademark Act, it is clear that this
is the ground upon which the opposition is based.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition. Opposer made of
record a substantial body of evidence which is summarized
at page 9 of its brief. Applicant did not make if record
Opposition No. 102,098
3
evidence or file a brief. Neither party requested a
hearing.
At the outset, we note that priority rests with
opposer. In this regard, opposer has properly made of
record a certified status and title copy of Registration
No. 1,873,792 (owned by Phillips Publishing
International, Inc.) depicting in typed drawing form the
mark JOHN DESSAUER’S INVESTOR’S WORLD for a financial
newsletter. This registration issued on January 17, 1995
with a claimed first use date of August 6, 1993. More
importantly, the record reflects that continously since
August 1993, opposer has also used the trademark
INVESTOR’S WORLD per se for its newsletter. From the
very beginning, opposer has depicted what is shown below
at the very top of the first page of each of its monthly
financial newsletters.
As is readily apparent from viewing the above, the
words INVESTOR’S WORLD are not only depicted in lettering
far larger than that used for JOHN DESSAUER’S, but in
addition, the words INVESTOR’S WORLD are depicted on a
separate line. Such manner of depiction causes
Opposition No. 102,098
4
INVESTOR’S WORLD to function as a trademark by itself.
Moreover, throughout the text of opposer’s financial
newsletter, the newsletter is repeatedly referred to as
simply INVESTOR’S WORLD, and not as JOHN DESSAUER’S
INVESTOR’S WORLD. In addition, opposer’s financial
newsletter has received favorable mention in general
business magazines such as Forbes and in publications
which “rank” financial newsletters such as The Hulbert
Financial Digest. These publications refer to opposer’s
financial newsletter as simply INVESTOR’S WORLD.
Finally, when subscribers communicate with opposer, they
almost always refer to opposer’s financial newsletter as
simply INVESTOR’S WORLD.
Opposer’s INVESTOR’S WORLD financial newsletter has
enjoyed considerable success since its launch in August
1993. Since 1993, paid subscriptions for this newsletter
have exceeded $50 million. In addition, opposer has
spent nearly $19 million in advertising and promoting its
INVESTOR’S WORLD financial newsletter. Currently, there
are over 100,000 subscribers to INVESTOR’S WORLD, making
it the largest selling financial newsletter that costs
more than $100 per year. This success is due in part to
the performance of the stocks, bonds and other financial
vehicles recommended in INVESTOR’S WORLD financial
Opposition No. 102,098
5
newsletter. In 1996 and again in 1997, The Hulbert
Financial Digest ranked INVESTOR’S WORLD first in the
total rate of return on a risk-adjusted basis when
compared to over 20 other financial newsletters.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and
differences in the marks.”).
Considering first the marks, we will focus on a
comparison of opposer’s mark INVESTOR’S WORLD with
applicant’s mark INVESTOR WORLD because, obviously,
opposer’s other mark (JOHN DESSAUER’S INVESTOR’S WORLD)
is less similar to applicant’s mark. As is readily
apparent, the only difference between opposer’s mark and
applicant’s mark is that opposer’s mark places the word
INVESTOR in the possessive form, whereas applicant’s mark
does not. However, this very minor difference does very
little to distinguish the two marks in terms of visual
appearance, pronunciation or meaning. In short, we find
Opposition No. 102,098
6
that the two marks are almost identical. Thus, the first
Dupont “factor weighs heavily against the applicant”
because the two word marks are almost identical. In re
Martin’s Famous Pastry Shoppe Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of opposer’s goods and
applicant’s services, we note that because the marks are
almost identical, their contemporaneous use can lead to
the assumption that there is a common source “even when
[the] goods or services are not competitive or
intrinsically related.” In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). However, in
point of fact, the record demonstrates that opposer’s
financial newsletter and applicant’s on-line investment
services are closely related to the point of being
directly competitive. Indeed, the only difference is not
in the message, but merely in the medium.
Applicant’s president acknowledged that a “reader”
of applicant’s on-line INVESTOR WORLD is someone who is
looking for investment advice and who is paying
applicant. (J. Tollefsen deposition page 25).
Obviously, readers of opposer’s INVESTOR’S WORLD
financial newsletter are also looking for investment
advice. Indeed, applicant’s president acknowledged that
Opposition No. 102,098
7
the quality of opposer’s INVESTOR’S WORLD financial
newsletter is such that if opposer were to make available
an on-line version of said newsletter, applicant would
include it, if permitted, on its INVESTOR WORLD website.
(J. Tollefsen deposition page 35). In this regard,
applicant’s vice president noted that the customer base
for applicant’s INVESTOR WORLD on-line investment
services is so broad that it encompasses “anyone who is
interested either in investing, or wanting some
information about investing. It could be anybody.” (D.
Tollefsen deposition page 16).
If there is any lingering doubt about the very close
relationship of opposer’s financial newsletter and
applicant’s on-line investment services, such doubt is
eliminated in light of the substantial evidence showing
that virtually every financial newsletter, magazine and
newspaper has in recent years introduced an on-line
version of said newsletter, magazine and newspaper
utilizing the same trademark, albeit sometimes preceded
or followed by the generic term “on-line” or some other
similar generic term. Indeed, applicant’s president
acknowledged that a number of print publications in the
financial area have gone “on-line,” and that there is a
clear trend among virtually all financial print
Opposition No. 102,098
8
publishers to go on-line. (J. Tollefsen deposition pages
38 and 66). Simply by way of example, the following
print publications offer on-line versions under the same
or essentially the same marks: The Wall Street Journal,
Barron’s, Business Week, Forbes, Fortune, Kiplinger’s
Personal Financial Magazine and Worth. Indeed, opposer
itself now offers an on-line version of its INVESTOR’S
WORLD financial newsletter under the name INVESTOR’S
WORLD ONLINE. (Present deposition page 10). (As an
aside, we have not considered opposer's common law rights
in the mark INVESTOR’S WORLD ONLINE for an on-line
financial advisory service because opposer has not
established that such common law rights predate
applicant’s constructive use filing date of May 8, 1995.)
In sum, given the fact that opposer’s mark
INVESTOR’S WORLD and applicant’s mark INVESTOR WORLD are
almost identical and the fact that the parties market
investment advice to the very same consumers, albeit
through different mediums, we find that there exists a
likelihood of confusion resulting from the
contemporaneous use of these two marks.
Decision: The opposition is sustained.
Opposition No. 102,098
9
R. L. Simms
E. J. Seeherman
E. W. Hanak
Administrative
Trademark
Judges, Trademark Trial
and Appeal Board