TVM Management Corp.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 78769828 (T.T.A.B. Mar. 31, 2008)

Mailed: March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TVM Management Corp.
________

Serial Nos. 78758760; 78758772; and 787698281
_______

John W. Pint of Proskauer Rose LLP for TVM Management Corp.

Kathryn E. Coward, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Hairston and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applications were filed by TVM Management Corp. to
register on the Principal Register the marks shown below
for the following services, as amended: “financial
services, namely advisory and management services for
private investment funds and investments, and financial
sponsorship of the formation of private investment funds
and venture capital funds, namely, setting up private

1 The trademark examining attorney’s motion to consolidate these
ex parte appeals was granted by the Board in a paralegal order
issued on November 8, 2007.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78758760; 78758772; and 78769828
2
investment funds and management of investment funds for
others; financial services, namely, venture capital funding
services for investment of funds in companies in the fields
of information technology, communications technology, and
life sciences” in International Class 36.
TVM
(in standard characters);2
TVM CAPITAL
(in standard characters);3 and

(as displayed in stylized form).4
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s marks, as used in connection with its services,
so resembles the following marks, previously registered on
the Principal Register:

2 Application Serial No. 78758760 was filed on November 21, 2005,
asserting December 31, 1983 as the date of first use of the mark
in commerce.

3 Application Serial No. 78758772 was filed on November 21, 2005,
with a disclaimer of “CAPITAL” and asserting March 7, 2006 as the
date of first use of the mark in commerce.

4 Application Serial No. 78769828 was filed on December 8, 2005,
with a disclaimer of “CAPITAL” and asserting March 7, 2006 as the
date of first use of the mark in commerce. The colors light blue
and dark blue are claimed as a feature of the mark.

Ser No. 78758760; 78758772; and 78769828
3
TVM
(in typed form) for “financial analysis and consultation
services” in International Class 36;5 and
TVM
(in typed form) for “financial services, namely, short-term
lending services for professional service providers and
commercial customers” in International Class 36,6 as to be
likely to cause confusion.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issues under appeal. In addition, applicant filed a reply
brief.
Likelihood of Confusion
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
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d

5 Registration No. 2828269 issued to Stratascope Inc. on March
30, 2004. The registration recites additional services in Class
35 that are not relied upon by the examining attorney for
purposes of the issue under appeal.

6 Registration No. 2828269 issued to Dean H. Mersky on April 27,
2004. The registration recites additional services in Class 35
that are not relied upon by the examining attorney for purposes
of the issue under appeal.
Ser No. 78758760; 78758772; and 78769828
4
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).
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s marks and registrants’ marks are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall 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 test, under the first du Pont
factor, 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 that confusion as to the
source of the services offered under the respective marks
is likely to result.
In this case, applicant’s TVM mark, in its application
Serial No. 78758760, is identical to the marks in the cited
registrations in every respect. The fact that the marks
Ser No. 78758760; 78758772; and 78769828
5
are identical results in this factor strongly supporting
the examining attorney’s position. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
Applicant’s TVM CAPITAL and TVM|Capital marks, in its
application Serial Nos. 78758772 and 78769828, are highly
similar to registrants’ TVM marks in that applicant’s marks
incorporate registrants’ marks in their entirety as their
most prominent component. 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). The significance of “TVM” in applicant’s marks
is reinforced by its location as the first term therein.
See Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897) TTAB 1988)(“it is often the first part
of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”). See also 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 must first notice the identical lead
Ser No. 78758760; 78758772; and 78769828
6
word). Further, in applicant’s marks, the word “CAPITAL”
is disclaimed, and that term at best is highly descriptive
of applicant’s services and, as such, is subordinate to
“TVM.” Thus, “TVM,” appearing first in applicant’s TVM
CAPITAL and TVM|Capital marks, as well as the only portion
thereof that is not disclaimed, is the dominant portion
thereof, and the portion that is most likely to be
remembered by purchasers. The dominant TVM portion of
applicant’s marks is identical to registrants’ marks in
appearance and sound. As a result, when viewed as a whole,
applicant’s TVM CAPITAL and TVM|Capital marks are highly
similar to registrants’ TVM marks in appearance and sound.
We are not persuaded by applicant’s argument, based
upon extrinsic evidence from registrants’ respective
Internet websites, that registrants’ marks are acronyms and
that such acronym significance lends registrants’ marks
different commercial impressions from those of applicant.
First, it is not apparent from this record that consumers
of registrants’ services would perceive any acronym
significance of the TVM marks. Second, even if
registrants’ marks were recognized as acronyms, such
recognition would be insufficient to overcome the overall
similarities between the marks. That is to say, even if
registrants’ marks conveyed commercial impressions that
Ser No. 78758760; 78758772; and 78769828
7
differ from those of applicant due to the formers’
significance as acronyms, registrants’ TVM marks are
identical to applicant’s TVM mark and so highly similar to
its TVM CAPITAL and TVM|Capital marks in appearance, sound
and connotation that the similarities greatly outweigh the
differences.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Applicant contends that by virtue of their coexistence
on the Principal Register, the TVM marks in the cited
registrations are weak and thus entitled to a narrow scope
of protection. However, we are not privy to the facts
surrounding the examination or registration of the marks in
the cited registrations. As such, we do not know whether,
for instance, the owners of these registrations entered
into an agreement allowing for their coexistence, or any
other circumstances that led to the registration of both
marks. In any event, even if we were to find, based on
their coexistence, that registrants’ marks are weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of an
identical mark or highly similar marks if the services
identified thereby are related. See In re Farah
Ser No. 78758760; 78758772; and 78769828
8
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
The Services
Turning 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
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 of the type recited both in applicant’s
applications and the cited registrations. See, for
example:
Ser No. 78758760; 78758772; and 78769828
9
Registration No. 2759552 for financial analysis
and consultation with regard to private equity,
venture capital and investment funds; financial
planning; financial investments in the field of
securities; financial management;

Registration No. 2969880 for, inter alia,
financial management, financial analysis,
financial forecasting and consultation, financial
savings and investment consulting, investment
funds and mutual funds investment consultation,
investment advice and investment advisory
services;

Registration No. 2899922 for, establishing
investment funds for others; investment fund
management services; consulting services in the
fields of financial analysis and investing;
investment fund administration;

Registration No. 3169485 for, inter alia,
commercial lending services, providing investment
and financial information advice, consultation,
management and brokerage services, investment
advisor services, financial portfolio management
services, funds investment consultation;

Registration No. 3164927 for, inter alia,
investment funds management, financial planning
and management services, investment advisory
management services, financial analysis and
consultation services; and

Registration No. 2347975 for, inter alia, lending
services in connection with merchant banking
transactions, financial and investment management
services, financial advisory and consulting
services.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
Ser No. 78758760; 78758772; and 78769828
10
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 financial
analysis and consultation, lending, funding and funds
advisory and management services of the type provided by
applicant and registrants. This evidence demonstrates the
related nature of the services at issue, and this du Pont
factor also favors a finding of likelihood of confusion.
Channels of Trade
Furthermore, 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 applications and cited registrations. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (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
Ser No. 78758760; 78758772; and 78769828
11
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) In this case, there
are no restrictions in either registrants’ 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, even if the language of
applicant’s recitation of services may be read as
articulating restrictions to the channels of trade
therefor, registrants’ services are presumed to move in all
normal channels of trade therefor and be available to all
classes of potential consumers, including consumers of
applicant’s more narrowly defined services. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Conditions of Sale
Another du Pont factor discussed by applicant and the
examining attorney is that of the conditions of sale.
Applicant asserts that its services are purchased by
careful and sophisticated consumers. However, even if we
accept that applicant’s services are of a type that would
normally be retained only by sophisticated purchasers, it
is settled that such 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). That is especially the case where, as
Ser No. 78758760; 78758772; and 78769828
12
here, identical or highly similar marks are being used to
identify related financial services.
Actual Confusion
Applicant also argues that there is no evidence of any
actual confusion and that there has been concurrent use for
six years in the case of the first cited registration and
four years in the case of the second. We do not accord
significant weight to applicant’s contention, unsupported
by any evidence, that there have been no instances of
actual confusion despite contemporaneous use of the
respective marks. The Federal Circuit has addressed the
question of the weight to be given to an assertion of no
actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic’s
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant’s
corporate president’s unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Ser No. 78758760; 78758772; and 78769828
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Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Finally, to the extent that we have doubt, we have
resolved our doubt, as we must, in favor of the prior
registrants and against applicant. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio
Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB
2004). It is well established that one who adopts a mark
similar to the mark of another for the same or closely
related goods or services does so at his own peril. See J
& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988);
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308 (TTAB 1976).
Decision: The refusals of registration are affirmed.