Credit Suisse First Boston Corp.

Trademark Trial and Appeal Board

Mar 23, 2005

No. 78194343 (T.T.A.B. Mar. 23, 2005)

Mailed:
23 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Credit Suisse First Boston Corporation
________

Serial No. 78194343
_______

Monica B. Richman of Brown Raysman Millstein Felder &
Steiner LLP for Credit Suisse First Boston Corporation.

Theodore McBride, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Chapman, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 13, 2002, Credit Suisse First Boston
Corporation (applicant) applied to register the mark
FUNDCENTRAL (in typed form) on the Principal Register for
“financial services, namely providing reports and financial
information regarding financial transactions, investments,
investors, and financial markets” in Class 36.1

1 Serial No. 78194343. The application is based on applicant’s
assertion of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78194343
2
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark MUTUAL FUNDS CENTRAL (in typed form) for “computer
services, namely, providing an on-line magazine in the
field of information technology mutual funds” in Class 42.2
The examining attorney’s position (Brief at 4) is that
the “the two marks are essentially ‘synonymous wording’ +
‘CENTRAL.’”3 Regarding the services, the examining attorney
argues (Brief at 6) that by “Applicant’s own admission, the
services are offered in an online format. Furthermore,
they could even take on the appearance of an online
magazine that deals with information technology mutual
funds.” As a result, the examining attorney submits that
there is a likelihood of confusion.
Applicant’s position (Brief at 7) is that the cited
mark “is a highly suggestive weak mark, that the word
‘CENTRAL’ should not enjoy broad protection for financial
services, and that the overall differences between

2 Registration No. 2,509,574, issued November 20, 2001. The
registration contains a disclaimer of the term “Mutual Funds.”
3 The examining attorney asks that we take judicial notice of on
online dictionary definition of “mutual fund” in his appeal
brief. We do not normally take judicial notice of on-line
dictionaries that are submitted for the first time on appeal. In
re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).
Therefore, we will not consider the on-line definition submitted
with the examining attorney’s brief.
Ser No. 78194343
3
Appellant’s mark and the cited mark render confusion
unlikely.” In addition, applicant argues (Brief at 11-12)
that its service “is a highly sophisticated information
portal” and that “even if the same consumers encountered
both marks, such consumers are highly sophisticated and
instantly would understand” that the services “do not
originate from the same source.”
Inasmuch as this case involves a question of
likelihood of confusion, we must analyze the facts as they
relate to the relevant factors set out in In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). See also In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
One factor that is often critical in a likelihood of
confusion case is the similarity or dissimilarity of the
goods and/or services. Applicant’s services involve
Ser No. 78194343
4
“providing reports and financial information regarding
financial transactions, investments, investors, and
financial markets.” Registrant’s services are “providing
an on-line magazine in the field of information technology
mutual funds.” Registrant’s services are limited to the
field of information technology mutual funds. Applicant’s
services are more general and applicant’s identification of
services specifically includes “providing reports and
financial information regarding … investments … and
financial markets.” These services could include providing
reports and financial information on investments in
information technology mutual funds and on financial
markets concerning information technology mutual funds. We
note that applicant admits that its services are in fact
provided online. See Brief at 10 (“Appellant’s FUNDCENTRAL
service is an investor reporting system offered via a
password-protected website”). Therefore, the services are
very closely related, if not overlapping in part.
Applicant argues (Brief at 11) that its service “is a
highly sophisticated information portal regarding financial
investments owned by the client…” that “provides detailed
account valuations, including cash flow and performance
summaries, account transaction details, commitments by
geographic concentration and commitments by industry…” and
Ser No. 78194343
5
it “is restricted-access and is used by pension fund
managers, investment officers, accountants and wealthy
individuals.” These restrictions or limitations, however,
do not appear in applicant’s identification of services,
and, therefore, they do not aid applicant in distinguishing
its services from registrant’s. “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
[or services] set forth in the application regardless of
what the record may reveal as to the particular nature of
an applicant’s goods [or services], the particular channels
of trade or the class of purchasers to which the sales of
goods [or services] are directed.” Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). 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 [or services]”).
Another important factor in likelihood of confusion
cases concerns the similarities and dissimilarities of the
marks in the application and registration(s). Applicant’s
mark is FUNDCENTRAL while registrant’s mark consists of the
words MUTUAL FUNDS CENTRAL. There are three differences
Ser No. 78194343
6
between the marks. First, applicant deletes registrant’s
word “Mutual.” Second, registrant uses the plural form of
“Fund.” Third, applicant omits the normal space between
the words in its mark.
Initially, we note that the absence of a space is not
very significant. Stockpot, Inc. v. Stock Pot Restaurant,
Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576,
222 USPQ 665 (Fed. Cir. 1984) (“There is no question that
the marks of the parties [STOCKPOT and STOCK POT] are
confusingly similar. The word marks are phonetically
identical and visually almost identical”); In re Best
Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB
1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”);
Seaguard Corp. v. Seaward International, Inc., 223 USPQ 48,
51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially
identical”).4 Nor is the difference between the singular
and plural form of the word “Fund” particularly
distinguishing. Wilson v. Delauney, 245 F.2d 877, 114 USPQ
339, 341 (CCPA 1957) (“It is evident that there is no

4 Both applicant’s and registrant’s services involve the Internet
where the spelling of the same words with or without spaces is
common when the words are used in a web address and in the text
of an article.
Ser No. 78194343
7
material difference, in a trademark sense, between the
singular and plural forms of the word "Zombie" and they
will therefore be regarded here as the same mark”).
Regarding the deletion of the word “Mutual,” the
remaining word “Fund(s)” would have, at least in part, a
similar connotation. Indeed, a mutual fund is a type of
fund. While we did not take judicial notice of the
examining attorney’s online definition, we do take judicial
notice of the following entry.5 “Mutual Fund: a company
that invests its clients’ funds in other companies,
equities, or securities… In open-end funds, the investor
is not generally committed to hold the stock for a
specified period. Closed-end funds are sometimes sold on a
contractual basis requiring a minimum investment and
holdings kept for a minimum period.” Webster’s New World
Encyclopedia 776 (1992). In effect, the term “Mutual Fund”
or “Fund” can have overlapping meanings inasmuch as a
mutual fund can be referred to as a fund. Thus, it is
difficult to conceive of the difference between “Mutual
Funds” and “Fund” leading to a lack of confusion when the
only other term in the marks is the shared term “Central.”

5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78194343
8
We add that registrant has disclaimed the descriptive
words “Mutual Funds” in its mark and the term “Fund” in
applicant’s mark would likewise have a descriptive
connotation. Thus, the term “Mutual Funds” and the “Fund-”
portion of applicant’s mark are less likely to be used by
consumers to distinguish the marks. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000), quoting, In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component
of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”).
Our analysis of the individual differences in the
marks is not an attempt to avoid our duty to analyze the
marks in their entireties. The Federal Circuit has
explained that “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 National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Ser No. 78194343
9
Applicant argues (Brief at 7-8) that four third-party
registrations6 owned by three different entities “provide
compelling evidence of what most consumers would recognize
from experience; namely that the term CENTRAL is widely
used in the financial industry to suggest a type of
financial center and that consumers can expect different
CENTRAL formative marks in the financial services arena to
emanate from unrelated sources.” The four third-party
registrations are: BONDCENTRAL for “online financial
management and investment management services” (No.
2,389,428); BANK CENTRAL for “telephonic banking services”
(No. 1,909,447); and two registrations (Nos. 2,482,959 and
2,478,368) owned by the same party for MONEYCENTRAL for,
respectively, entertainment in the nature of ongoing radio
programs in the field of news and financial and investment
information, and providing on-line investment management
portfolio tools and information over computer networks in
the field of finance.
We have several problems with applicant’s arguments.
First, the cited registration is clearly the most relevant
registration because it contains the common words “Fund(s)
Central.” Second, as we indicated earlier, the services

6 A fifth (No. 2,101,443) for the mark STOCKCENTRAL was
cancelled.
Ser No. 78194343
10
are, if not overlapping, closely related. The services in
the third-party registrations for radio programs and
telephonic banking services are much less closely related.
Third, registrations are not evidence that the referenced
marks are in use. In re Mitsubishi Jidosha Kogyo Kabushiki
Kaisha, 19 USPQ2d 1633, 1634 (TTAB 1991) (“We note that
applicant has made of record certain third-party
registrations for marks comprising or containing the word
SIGMA, but such registrations do not prove the marks are in
use and that consumers are familiar with them”). Fourth,
while third-party registrations may be used to demonstrate
that a portion of a mark is suggestive or descriptive, they
cannot be used to justify the registration of another
confusingly similar mark. In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987). In this case, the few
registrations of record hardly establish that the
registered mark is so highly suggestive that it should be
entitled to a narrow scope of protection.
When we compare the marks in their entireties,
similarities in sound, appearance, meaning, and commercial
impression of FUNDCENTRAL and MUTUAL FUNDS CENTRAL outweigh
their differences. The marks look and sound similar to the
extent that the common part of both marks “Fund[s] Central”
is virtually identical. See Wella Corp. v. California
Ser No. 78194343
11
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products); In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (“With respect to JOSE, the Board
correctly observed that the term simply reinforces the
impression that GASPAR is an individual’s name. Thus, in
accord with considerable case law, the JOSE term does not
alter the commercial impression of the mark.” The marks
JOSE GASPAR GOLD and GASPAR’S ALE were determined to be
similar). The particular meanings and overall commercial
impressions of both marks suggest a central location for
information about mutual funds.
We also add that, in regard to purchasers and channels
of trade, there are no limits in the identifications of
services so we cannot assume limitations. While applicant
argues that its services are directed to professional fund
managers and wealthy individuals, there is no reason, based
on the identification of services, to exclude other
potential purchasers from our analysis, including investors
of more modest means. See Knorr-Nahrmittel
Aktiengesellschaft v. Havland International, Inc., 206 USPQ
827, 835 (TTAB 1980):
Ser No. 78194343
12
In the absence of any limitation as to the cheese
product listed in the application as to type, trade
channels, or classes of purchasers, it may be presumed
for our purposes that applicant sells all types of
cheese in all types of containers through all the
normal outlets for such goods including institutional
and retail outlets for use by both institutional users
such as restaurants, hotels, hospitals and the like
and by the general consuming public.

Similarly here, we must assume that the services of
both applicant and registrant are provided through all
customary channels of trade for such services and that they
could be encountered by fund managers and wealthy and non-
wealthy individuals seeking reports and the like on
information technology investments. Therefore, there is at
least an overlap in the channels of trade and classes of
prospective purchasers.
Applicant also argues that even if the same purchasers
encountered both marks, they are highly sophisticated and
instantly will understand that the services do not
originate from the same source. First, we cannot agree
with applicant’s basic premise that only highly
sophisticated purchasers could encounter both marks. As
identified, both marks would likely be encountered by a
wide range of purchasers including ordinary investors who
would not be particularly sophisticated. Second, services
can be considered to be related if even sophisticated
purchasers are likely to believe that there is an
Ser No. 78194343
13
association between the source of applicant’s and
registrant’s services. In this case, even if sophisticated
purchasers thought the services had different sources, they
may believe that there is an association, relationship, or
sponsorship arrangement between the sources of the very
closely related services identified by the very similar
marks MUTUAL FUNDS CENTRAL and FUNDCENTRAL.
Therefore, we conclude that applicant’s mark, when
used in connection with its identified services, would be
likely to cause confusion with registrant’s mark used in
connection with its identified services.
Decision: The examining attorney’s refusal to
register under Section 2(d) of the Trademark Act is
affirmed.