Sunbridge Capital, Inc.

Trademark Trial and Appeal Board

Jul 13, 2007

No. 78525295 (T.T.A.B. Jul. 13, 2007)

Mailed: July 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sunbridge Capital, Inc.
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Serial No. 78525295
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Glenn K. Robbins II of Spencer Fane Britt & Browne LLP for
Sunbridge Capital, Inc.

Linda Estrada, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Cataldo, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Sunbridge Capital, Inc. to
register on the Principal Register the mark shown below for
the following services, as amended: “Financing services
limited to equipment financing services and lease-
purchasing financing” in International Class 36.1

1 Application Serial No. 78525295 was filed December 1, 2004,
based on applicant’s assertion of January 9, 2004 as the date of
first use of the mark in commerce. Applicant disclaimed the
exclusive right to use “CAPITAL” apart from the mark as shown.
In addition, applicant describes the mark as follows: The mark
consists of a design of a bridge with a ray of sunshine and the
words SunBridge Capital.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78525295
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark SUNBRIDGE, previously registered on
the Principal Register in typed or standard character form
for “Investment of venture capital for the benefit of
start-up, emerging, and growth companies” in International
Class 36,2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal. In addition, applicant filed a reply
brief.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d

2 Registration No. 2768072, issued September 23, 2003.

Ser No. 78525295
3
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, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
We first consider the similarity of the marks. In
this case, applicant’s mark, SUNBRIDGE CAPITAL and design,
incorporates in its entirety registrant’s SUNBRIDGE mark as
its most distinctive and dominant feature. There is no
evidence of record to support a finding that SUNBRIDGE has
a recognized meaning in the investment or financial field.
Thus, the term SUNBRIDGE is at least distinctive, if not
arbitrary, as used with both registrant’s and applicant’s
services. Further, the word SUNBRIDGE in applicant’s mark
appears in large, boldface type that physically appears
larger than the word CAPITAL and also occupies the center
of the mark. Thus, SUNBRIDGE is the portion of applicant’s
mark to which the viewer is drawn, as well as the portion
that the viewer is most likely to remember. The design of
a bridge and ray of sunshine in applicant’s mark, though
Ser No. 78525295
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visually prominent, is less significant than the wording
therein. This is because when a mark comprises both
wording and a design, the wording would be used by
customers to request the identified goods or services. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
For these reasons, we consider SUNBRIDGE to be the dominant
feature of the registered mark.
As for the presence of CAPITAL in applicant’s mark,
this term, which has been disclaimed, is obviously
descriptive of the recited services. 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. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). In view of the
descriptive nature of the word CAPITAL, it has little, if
any, source-indicating significance, and is entitled to
less weight in the likelihood of confusion analysis.
Consumers who are familiar with the mark, SUNBRIDGE, used
in connection with registrant’s investment services, who
then see the mark SUNBRIDGE CAPITAL and design used in
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connection with applicant’s equipment financing and lease-
purchasing financing services, are likely to assume that
the owner of the SUNBRIDGE mark simply has added CAPITAL
and a design when using the mark in connection with
financing services. In other words, consumers are likely
to view both marks as variations of each other, and
therefore as indicators of a single source. Thus, despite
the fact that the applicant’s mark includes the word
CAPITAL and a design, the marks SUNBRIDGE and SUNBRIDGE
CAPITAL and design are highly similar in appearance,
pronunciation, connotation and commercial impression.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Turning now to our consideration of the recited
services, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the services at issue be similar
or competitive, or even that they move in the same channels
of trade, to support a holding of likelihood of confusion.
It is sufficient instead that the respective services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
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similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have adopted a single mark
for services that are identified in both applicant’s
application and the cited registration. See, for example:
Registration No. 1827020 for, inter alia,
assisting in the acquisition of venture capital,
financing leased equipment;

Registration No. 2711638 for, inter alia,
financing lease purchases, financial investment
in the fields of…venture capital, venture capital
investment financing;

Registration No. 2646331 for, inter alia, venture
capital services, lease-purchase financing;

Registration No. 2475710 for, inter alia, lease-
purchase financing, financial investment services
in the field of real estate, namely, venture
capital financing;

Registration No. 2569800 for, inter alia,
equipment financing, venture capital financing;
and

Registration No. 2910182 for, inter alia, venture
capital funding services to emerging and start-up
companies, equipment financing.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
Ser No. 78525295
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serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record supports a
finding that the same marks are used to identify both
applicant’s services and those of registrant. This
evidence demonstrates the related nature of the services at
issue, and this du Pont factor also favors a finding of
likelihood of confusion.
Furthermore, we are not persuaded by applicant’s
arguments that its customers differ from those of
registrant or that registrant’s services travel in channels
of trade that are separate and distinct from those in which
applicant’s services may be encountered. Nor are we
persuaded by the two third-party declarations submitted by
applicant regarding applicants’ customers and the
conditions under which the services would be provided
because there are no restrictions in either description of
services on which applicant’s arguments may be grounded.
It is settled that in making our determination regarding
the relatedness of the parties’ services, we must look to
the services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
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(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.”) See also 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 descriptions of goods.”) In this
case, there are no restrictions in either applicant’s or
registrant’s recitation of services as to the channels of
trade in which the services may be encountered, or type or
class of customer to which the services are marketed.
Thus, while applicant may argue and present declarations
stating that its services are directed toward businesses
and other entities in the financial field that are distinct
from those seeking registrant’s services, neither
recitation of services contains any such limitations.
Accordingly, both applicant’s and registrant’s services are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers, including
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consumers of each others’ services. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
The final du Pont factor discussed by applicant and
the examining attorney is that of the conditions of sale.
Applicant asserts that both its services and those of
registrant potentially involve very large sums of money,
and would be purchased by careful and sophisticated users.
There is no evidence that either applicant’s or
registrant’s services are limited to only by highly
sophisticated persons. Even small unsophisticated
companies may need equipment financing assistance and/or an
investment of capital. Moreover, in view of the third-
party registrations which are evidence that both equipment
financing and lease-purchasing financing services and
venture capital services are of a type which may emanate
from a common source, prospective purchasers may mistakenly
believe that these services could emanate from a single
source. We acknowledge that in the financial transactions
involved in this appeal, the relevant consumers will
exercise some degree of care in making the purchasing
decision. However, the marks SUNBRIDGE and SUNBRIDGE
CAPITAL and design are so similar that even careful
purchasers are likely to assume that the marks identify
services emanating from a single source. Even
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sophisticated purchasers are not necessarily knowledgeable
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Finally, applicant argues that “the better practice is
to resolve the matter on applicant’s behalf on the theory
that any person who believes that he would be damaged by
the registration will have an opportunity under the rules
and statutes to opposer the registration of the mark”
(brief, p. 5). However, in light of the foregoing, and
resolving any doubt as we must in favor of the prior
registrant, we find that a likelihood of confusion exists
between the applied-for mark and the mark in the cited
registration. See Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal of registration is affirmed.