Conway Wealth Group, LLC

Trademark Trial and Appeal Board

Jun 16, 2021

88674316 (T.T.A.B. Jun. 16, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: June 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Conway Wealth Group, LLC
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Serial No. 88674316
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Eric H. Melzer of Berkowitz Lichtstein Kuritsky Giasullo & Gross LLC,
for Conway Wealth Group, LLC.
Alexandria N. Bryant, Trademark Examining Attorney,1 Law Office 113,
Myriah Habeeb, Managing Attorney.
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Before Lykos, Shaw and Coggins,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Conway Wealth Group, LLC (“Applicant”) seeks registration on the Principal
Register of the mark LIFE BEYOND THE NUMBERS, in standard characters, for
“Financial services highlighting the need for clients to live a full life of their choosing

1 The case was reassigned after briefing. The Examiner’s Statement was drafted by Kevin
G. Crennan.
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and not be concerned about basis points in their portfolio, namely, financial
investment advisory services,” in International Class 36.2
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, when used with the recited services,
so resembles the mark LIFE BEYOND NUMBERS, also in standard characters, for
services identified as
Business management; business administration;
bookkeeping services; accounting services; account and
business auditing services; tax preparation; tax compliance
advisory and consultation services; business management
consulting services; government management consulting
services, namely, information in the field of government
affairs; services rendered on assistance and advice on
organization and management of businesses or trading
functions of commercial or industrial companies, namely,
business management and business organization advisory
services; economic forecasting and analysis, namely,
economic research in the attainment of benefits, business
interruption and loss determination; business advisory
services, consultancy and information; employment,
hiring, recruiting, staffing and career networking services
of management and professional employees; consulting
services related to the employment, hiring, recruiting,
staffing and career networking services of management
and professional employees; analyses and appraisals of
enterprises; business appraisal consultation; business
acquisition and merger consultation, in International
Class 353

2 Application Serial No. 88674316, filed on October 30, 2019 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and in commerce
of June 1, 2016.
3 Registration No. 4888937, issued January 19, 2016; Section 8 affidavit filed and accepted,
Section 15 affidavit filed.
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as to be likely to cause confusion, mistake or deception. When the refusal was made
final, Applicant appealed. The case is fully briefed. We affirm the refusal to register.
I. Evidentiary issue
Before proceeding to the merits of the refusal, we consider an evidentiary matter.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), in relevant part, states: “The record
in the application should be complete prior to the filing of an appeal. Evidence should
not be filed with the Board after the filing of a notice of appeal.” With its Reply Brief,
Applicant submitted internet evidence regarding the duties of investment advisors.
Evidence submitted with a reply brief that was not previously submitted during
prosecution is untimely and will not be considered. Midwest Gaming & Entm’t LLC,
106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence submitted with reply brief
is “untimely and therefore not part of the record for this case”); In re Wada, 48
USPQ2d 1689 n.2 (TTAB 1998) (evidence submitted with reply brief not considered),
aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). This evidence is manifestly
untimely.
Moreover, by attempting to introduce new evidence with its reply brief, Applicant
has effectively shielded this material from review and rebuttal by the Examining
Attorney. In re Zanova, Inc., 59 USPQ2d 1300, 1302 (TTAB 2001). Accordingly, we
give this new evidence and corresponding arguments no further consideration.
II. Likelihood of confusion analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
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Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must
consider each DuPont factor for which there is evidence and argument. See In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). 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 [or services] and differences in the marks.”).
A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression
We begin with the similarity of the marks. Applicant’s mark, LIFE BEYOND THE
NUMBERS, in standard characters, is nearly identical to the mark in the cited
registration, LIFE BEYOND NUMBERS, also in standard characters, in
“appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). The only difference
between the marks is the absence in Registrant’s mark of the article “the” which is of
little or no significance in distinguishing the marks. See, e.g., In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE are virtually identical
because “[t]he addition of the word ‘The’ at the beginning of the registered mark does
not have any trademark significance.”); In re Narwood Prods., Inc., 223 USPQ 1034,
1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually
identical” marks; the inclusion of the definite article “the” is “insignificant in
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determining likelihood of confusion”). Applicant does not dispute that the marks are
nearly identical. In view thereof, the DuPont factor regarding the similarity of the
marks weighs heavily in favor of a finding of likelihood of confusion.
B. Similarity or Dissimilarity of the Services and Channels of Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). We must make our
determinations under these factors based on the services as they are identified in the
application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
Where the marks of the respective parties are identical or nearly so, the
relationship between the services need not be as close to support a finding of
likelihood of confusion as would be required if there were differences between the
marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In
re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). Further, likelihood of
confusion must be found as to the entire class if there is likely to be confusion with
respect to any service that comes within the recitation of services in that class. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
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Applicant’s services are “financial investment advisory services,” whereas the
cited mark is registered for use in connection with, inter alia, “accounting services;
account and business auditing services; tax preparation; tax compliance advisory and
consultation services.” The Examining Attorney argues that “consumers are
accustomed to encountering the services set forth in the Applicant’s and Registrant’s
identifications under a single mark.”4 In support of the refusal the Examining
Attorney introduced internet webpage printouts demonstrating that the following
firms provide accounting and investment consulting services under the same mark:5
 Strange & Coats, PC: offering “accounting, investment consulting”
 BMT Management & Financial Consultants: offering “Investment
Consulting” and “Offsite Accounting Services”
 Lock~Spiot Tax & Financial Services: offering “Bookkeeping” and
“Investment Consulting”
 DJW Financial Services: offering “Bookkeeping” and “Investment
consulting”
 Oliva Consulting: offering “business and investment consulting to
HR/recruiting”
 Plexus Financial Services, LLC: offering “Investment Consulting” and
“Mergers and acquisition consulting”
 Ester V, LLC: identifying itself as “an investment consultancy firm” and
offering “M&A consulting services”
 Plante Moran: providing “tax compliance and consulting services related
to investment funds”

4 Examining Attorney’s Br., 6 TTABVUE 12.
5 Office Action dated June 3, 2020, TSDR 5-16.
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The Examining Attorney also introduced twenty-four third-party registrations for
marks used in connection with investment consulting services as well as with
accounting, business and tax services. The following examples are representative.6
Registration No. Mark Relevant Services
2801817 ENHANCING
PRIVATE WEALTH
FOR GENERATIONS
Providing tax and bookkeeping
services in Class 35 and “investment
advisory services” in Class 36
3316382 FINANCIAL
FITNESS 360
Providing accounting and tax
services in Class 35 and “Investment
advisory services” in Class 36
3536411 VODIA CAPITAL Providing business, tax, and
accounting services in Class 35 and
“investment advisory services” in
Class 36
4275998 Design mark

Providing business services and
“investment advisory services” in
Class 36
3049537 THE NEXT LEVEL
OF SERVICE
Providing business, accounting,
bookkeeping, and tax services in
Class 35 and “Investment advisory
services” in Class 36
3350134 FILAMENT “Tax advisory and tax consultation
services; Business management
consulting services and accounting
services for high net worth clients”
in Class 35 and Investment advisory
services in Class 36
3309687 WHITTAKER
COOPER
“Financial services, namely,
accounting services and tax
preparation and filing services” in
Class 35 and “Financial investment
advisory services” in Class 36
4696157 ICONICAL Providing business services in Class
35 and “investment advisory
services” in Class 36
4157540 CAREFULLY
CHOSEN
STRATEGIES.
Providing accounting and tax
services in Class 35 and “investment
advisory services” in Class 36

6 Id. at TSDR 17-91.
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Registration No. Mark Relevant Services
4078222 HARRIS MYCFO A
KNOWLEDGE OF
WEALTH
Providing business, accounting, and
tax services in Class 35 and
“investment advisory services” in
Class 36
4386542 C CETERA Providing business services in Class
35 and “advice relating to
investments” in Class 36
We find the internet excerpts are sufficient to establish that Applicant’s financial
investment advisory services and Registrant’s accounting, business, and tax services
are related in that they are of a type that commonly originate from the same source
under the same service mark, are used by the same consumers, and serve
complementary purposes. Similarly, although the third-party registrations are not
evidence that the registered marks are in use or that the public is familiar with them,
they nonetheless have probative value to the extent they are based on use in
commerce and serve to suggest that Applicant’s financial investment advisory
services and Registrant’s accounting, business, and tax services are of a kind which
may emanate from a single source under a single mark. See In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) and In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
Additionally, because the identification of services in the application and
registration do not include any restrictions or limitations as to trade channels, we
presume the respective services are or would be marketed in all normal trade
channels for such services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Thor
Tech, 90 USPQ2d at 1638 (“We have no authority to read any restrictions or
Serial No. 88674316
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limitations into the registrant’s description of goods [or services].”); In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The Examining Attorney’s
internet evidence summarized above also establishes that Applicant’s financial
investment advisory services and Registrant’s accounting, business, and tax services
are offered through the same channels of trade to the same consumers.
Applicant nevertheless argues, without evidence, that the respective services are
different because “[o]btaining investment advice from a registered investment
advisor has nothing to do with any of the services covered in the registration
whatsoever.”7 “Attorney argument is no substitute for evidence.” Enzo Biochem, Inc.
v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005). The issue is not whether
purchasers would confuse the services, but rather whether there is a likelihood of
confusion as to their source. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012). Moreover, it is well settled that Applicant’s and Registrant’s services do not
have to be identical or directly competitive to support a finding that there is a
likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000). Rather, it is sufficient if the respective 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, because of the similarity of the marks used in connection therewith, give rise
to the mistaken belief that they emanate from or are associated with a single source.
Albert Trostel, 29 USPQ2d at 1785.

7 Applicant’s Br., p. 3, 4 TTABVUE 7.
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Here, the Examining Attorney’s evidence establishes that Applicant’s financial
investment advisory services and Registrant’s accounting, business, and tax services
are sometimes offered by the same firm under the same mark. This is not surprising
given that the development of a financial investment strategy also might require the
services of accountants and tax specialists to maximize returns. Indeed, Applicant’s
specimen indicates that its services require a client to “[c]ollect all financial, legal,
benefits and insurance information” prior to the development of a financial plan.8
Collecting “all financial . . . information” from a client certainly could require the use
of accountants.
The DuPont factors relating to the similarity of the services and channels of trade
favor a finding of likelihood of confusion.
C. Consumer sophistication
Citing CFA Inst. v. Am. Soc’y of Pension Prof’ls & Actuaries, 2020 U.S. Dist. LEXIS
207202 (W.D. Va. Nov. 5, 2020), Applicant argues that consumer sophistication
suggests there would be no confusion between the respective services.9 This argument
is unavailing. It is well settled that we must make our determinations as to a
likelihood of confusion based on the services as they are identified in the application
and cited registration. Dixie Rests., 41 USPQ2d at 1534; Stone Lion, 110 USPQ2d at
1161. Applicant’s identification of services contains no limitations that would suggest
its consumers are sophisticated. Applicant may not restrict the scope of its services

8 Application dated October 30, 2019, p. 5 of specimens.
9 Applicant’s Br., p. 4, 4 TTABVUE 8.
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or the scope of the services covered in the registration by extrinsic argument or
evidence. See, e.g., In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). Applicant’s
services, therefore, could be offered to, and consumed by, anyone with money to
invest, including ordinary, less-sophisticated, consumers seeking investment
services. Stone Lion, 110 USPQ2d at 1163 (“Board precedent requires the decision to
be based on the least sophisticated potential purchasers.”) (internal citations
omitted).
This DuPont factor, customer sophistication, is neutral.
D. Conclusion
Because the marks are nearly identical, and the respective services are related
and travel in the same trade channels to the same classes of consumers, there is a
likelihood of confusion between Applicant’s mark, LIFE BEYOND THE NUMBERS,
for the recited services, and the cited mark, LIFE BEYOND NUMBERS.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.