Fiduciary Asset Management, LLC

Trademark Trial and Appeal Board

Dec 5, 2008

No. 78959263 (T.T.A.B. Dec. 5, 2008)

Mailed: December 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fiduciary Asset Management, LLC
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Serial No. 78959263
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Jennifer L. Whitelaw and Kathleen L. Kolacz of Whitelaw
Legal Group for Fiduciary Asset Management, LLC.

Laurie R. Kaufman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Seeherman, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On August 24, 2006, Fiduciary Asset Management, LLC
applied to register the mark FAMCO (in standard character
form) on the Principal Register based on a bona fide
intention to use the mark in commerce under Section 1(b) of
the Trademark Act, 15 U.S.C. §1052(b), for services
identified as “cost control, namely, cost containment in
the field of fund investment and investment portfolio
construction” in International Class 35, and “financial
investment services, namely, financial management of
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78959263
2
investments; fund investment consultation; investment
consultation; investment advice; funds investment;
financial analysis and consultation; providing information
on the topics of fund investment consultation, investment
consultation, investment advice, funds investment,
financial analysis and consultation via a global computer
network; investment portfolio construction; financial risk
management; mutual fund investment; and providing
information in the field of mutual funds and mutual fund
investment; mutual fund investment consultation, advice and
analysis; risk management, risk management consultation;
and financial analysis and consultation, namely,
macroeconomic analysis strategy” in International Class 36.
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 its identified services,
so resembles the registered mark FAM (in standard character
form) for “investment management and financial research
services,” in International Class 36, as to be likely to
cause confusion, mistake or deception.1
Applicant has appealed the final refusal and the
appeal is fully briefed. We affirm the refusal to
register.
Serial No. 78959263
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When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out 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
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With regard to the services, registrant’s “investment
management and financial research services,” if not
identical, encompass applicant’s International Class 36
services which include “financial management of
investments; fund investment consultation; investment
consultation; investment advice; funds investment;
financial analysis and consultation.” In addition,
registrant’s “investment management services” encompass
applicant’s International Class 35 services “cost
containment in the field of fund investment and investment
portfolio construction.” 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

1 Registration No. 3110595, issued June 27, 2006.
Serial No. 78959263
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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”). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002).
Furthermore, inasmuch as registrant’s services
encompass applicant’s services, we must presume that the
purchasers and channels of trade for such services would
also overlap. See Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ foods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”). Finally, applicant has not
presented evidence to support any argument that the
services, as identified, are not related.
In view of the above, the du Pont factors of the
relatedness of the services, the channels of trade, and
Serial No. 78959263
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class of customers favor a finding of likelihood of
confusion as to the cited registration.
In determining the similarity between the marks we
analyze “the marks in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567. While it is a basic
principle that “marks must be compared in their
entireties...[t]hat a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Finally, where
as in the present case, registrant’s services encompass, at
least in part, applicant’s services, the degree of
similarity between the marks which is necessary to support
a finding of likelihood of confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant argues that the examining attorney
impermissibly dissected the marks in her comparison
analysis. Applicant asserts that when taken as a whole the
differences in the marks are sufficient to avoid confusing
Serial No. 78959263
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similarity. In particular, applicant highlights that its
mark consists of five letters in comparison to registrant’s
three letter mark and that applicant’s mark “tends to be
viewed as a word that one says completely at once while the
registrant’s mark, with only three letters, is easier to
say as separate letters.” Br. p. 13.
It is well established that there is no correct
pronunciation of a mark and we must consider any possible
pronunciation including those that are more similar, such
that the only difference would be the CO sound on the end
of applicant’s mark. Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461 (TTAB 1985). Thus, because applicant
has incorporated the entirety of registrant’s mark, there
is some similarity in sound and appearance.
In terms of connotation, applicant argues that the
examining attorney has not presented evidence to support
her allegation that consumers would perceive the CO suffix
of applicant’s mark as meaning the abbreviation for the
word “company.” Given the widely known meaning of CO as
the abbreviation for the word company, The American
Heritage Dictionary of the English Language (4th ed. 2000),2

2 The Board may take judicial notice of dictionary definitions.
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).

Serial No. 78959263
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and that applicant is a limited liability company, we find
that some consumers would perceive the CO portion of
applicant’s mark as the abbreviation of the word company
and thus of little source-indicating significance.
However, even for those consumers who do not view the “CO”
portion as meaning company, the marks remain highly similar
inasmuch as it is the first portion of a mark that is
likely to make an impression on a consumer, and applicant’s
first portion incorporates the whole of registrant’s mark.
See Palm Bay, 73 USPQ2d at 1692; Mattel Inc. v. Funline
Merchandise Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006);
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988). The addition of two letters to the
end of applicant’s mark is not sufficient to distinguish
the marks, in particular, given the highly related nature
of the services. See Schering Corp. v. Alza Corp., 207
USPQ 504 (TTAB 1980) (CHRONOMER and CHRONOTAB confusingly
similar).
In view of the above, the factor of the similarity of
the marks weighs in favor of a likelihood of confusion.
Applicant relies heavily on its argument that its
consumers are “highly sophisticated and careful purchasers”
because “[t]he purchase being made by Applicant’s consumer
requires a great deal of money and is not one that a
Serial No. 78959263
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purchaser enters into whimsically...” Br. p. 15.
Applicant further contends that its purchasers are “apt to
spend close to, if not more than, a million dollars in a
single transaction [and] ... are in frequent contact with
Applicant as the decisions are ones that carry great weight
and require approval from the consumer.” Id. In addition,
applicant asserts that its consumers “would very likely
consult additional outside counsel such as an attorney,
accountant or other professional, before deciding to
proceed with a purchase.” Br. 16.
While we agree that purchases of applicant’s services
are not casual purchases, we cannot agree that all of the
potential purchasers are necessarily sophisticated.
Despite what may actually be the case, applicant’s
identified services are not limited to those who would be
considered sophisticated purchasers, e.g., institutional
customers, but would include the general public seeking
investment advice who would be ordinary purchasers.
Obviously, this is not an impulse purchase but even careful
purchasers are likely to be confused by similar marks. As
stated by our primary reviewing court, “[t]hat the relevant
class of buyers may exercise care does not necessarily
impose on that class the responsibility of distinguishing
between similar trademarks for similar goods. ‘Human
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memories even of discriminating purchasers ... are not
infallible.’” In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) quoting Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970). Therefore, the fact
that the purchasers may exercise care before purchasing
these services does not mean there can be no likelihood of
confusion.
The cases cited by applicant where the sophistication
of the purchasers weighed heavily against a likelihood of
confusion are distinguishable on their facts. In In re
Digirad Corp., 45 USPQ2d 1841 (TTAB 1998), the Board held
there was no likelihood of confusion based on the evidence
of record submitted by applicant that established the
differences in the relevant purchasers of the goods, the
sophistication of those purchasers, the care with which the
products are purchased, and the expense thereof. In this
case, applicant has not put in evidence to support its
allegations that all of its transactions involve “close to
a million dollars” or that its customers consult legal
counsel in their purchasing decision. Moreover, unlike
Digirad, where because of the very nature of the goods they
were expensive and purchased by sophisticated purchasers,
here applicant’s services, as identified, could be
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purchased by ordinary consumers who wish to make even a
modest investment.
Similarly, in the case of American Optical Corp. v.
Atwood Oceanics, Inc., 180 USPQ 532 (TTAB 1973), there was
evidence of record that supported the manner in which goods
of the type identified in the subject application were sold
and the sophistication of the potential purchasers. While
the relative sophistication of the potential consumers and
purchaser care are relevant considerations, they are not
controlling in this case.
Finally, applicant submitted a few sets of third-party
registrations “where the same starting letters are shared
and one registrant was allowed to register those shared
letters with the addition of CO.” Br. p. 12. Applicant
argues that “[t]hese registrations...are notable examples
of the recognition by the Trademark Office of the ability
of consumers to discern between marks distinguished by the
CO portion of the mark and the associated goods and
services.” Id.
As noted by the examining attorney, the Board is not
bound by decisions made in other applications. See In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). See also In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Each case must be decided on its own facts. AMF
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Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973). This is not, as applicant suggests,
“code for the proposition that precedent and uniformity has
no place here,” but rather a recognition that the Board is
not privy to information resulting in allowance of prior
registrations (for example possible consent agreements)
and/or that possible prior mistakes by the Office are not a
proper basis upon which to register a confusingly similar
mark.
In conclusion, we find that because the marks are
similar, the services are related, and the channels of
trade and purchasers overlap, confusion is likely between
applicant’s mark for its identified services and the mark
in the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.