Financially Wise Women

Trademark Trial and Appeal Board

Oct 28, 2015

No. 86030490 (T.T.A.B. Oct. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Financially Wise Women
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Serial No. 86030490
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Jessica T. Olmon of Vero Law Group,
for Financially Wise Women.
Priscilla Milton, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Seeherman, Bucher and Kuczma,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Financially Wise Women (“Applicant”), a California corporation, has appealed
from the final refusal of the Trademark Examining Attorney to register
FINANCIALLY WISE WOMEN, in standard characters, with the word “Women”
disclaimed, as a mark for the following services:
Consulting and information concerning insurance; Financial advice;
Financial advice and consultancy services; Financial advice, namely,
budget planning; Financial planning and investment advisory services;
Insurance brokerage; Insurance brokerage services; Life insurance
brokerage; On-line financial planning services (Class 36); and

Serial No. 86030490
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Workshops and seminars in the field of financial planning (in Class
41).1

Registration was refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that Applicant’s mark for its identified services
is likely to cause confusion with the registered mark WISE WOMEN WORKSHOP,
in standard characters, with the term “Women Workshop” disclaimed, for
“educational services, namely, conducting workshops for women in the field of
finance, namely, to help women achieve financial independence and a comfortable
retirement.”2
We affirm the refusal to register.
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 (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/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).

1 Application Serial No. 86030490, filed August 6, 2013. The application was originally
based on Section 1(a) of the Trademark Act, asserting first use and first use in commerce as
of November 1, 2010; in order to obviate a requirement for an acceptable specimen for the
services in Class 41, Applicant amended the basis of the application in that class to Section
1(b) (intent-to-use).
2 Registration No. 4367630, issued July 16, 2013.
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With respect to the second and third factors, the similarity of the services and
trade channels, in its response filed May 20, 2014, at page 1, Applicant
acknowledged that these factors favor a finding of likelihood of confusion:
“Applicant accepts the Examining Attorney’s conclusion that the services under the
Mark and the Cited Mark are closely related”; “Applicant cannot disagree with the
Examining Attorney’s conclusion that its services are in the same channels of trade
as the services under the Cited Mark.” Further, in its appeal brief Applicant did not
discuss these du Pont factors in its analysis, and in the conclusion section of its
brief, in which it set forth the factors that favored its position, 17 TTABVUE 18, it
did not list these two factors. In view of this acknowledgement, we will not recite
the evidence submitted by the Examining Attorney to demonstrate the relatedness
of Applicant’s Class 36 services and the Registrant’s services, and state only that
the third-party registrations show that these services are of a type which may
emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).3 Further, we point out that Applicant’s Class 41 services are legally

3 We note that in its reply brief Applicant made the statement, “as described in the
application and the registration, the services are arguably quite different.” 20 TTABVUE 8.
However, Applicant had already acknowledged during examination that the services are
closely related and the channels of trade are the same. Further, Applicant in its reply brief
did not provide any support for this statement, which appears to relate to Applicant’s
services in Class 36, except to say that the fact that Applicant’s and Registrant’s services
generally relate to finance does not in and of itself provide a sufficient basis for finding the
services related. We respond to this untimely argument by pointing out that the basis for
our finding Applicant’s Class 36 services closely related to those in the cited registration is
not only because they relate to finance, but because of the evidence that the Examining
Attorney has made of record showing that third parties have adopted a single mark for both
types of services. To the extent that Applicant is asserting that not all of Applicant’s Class
36 services are related to the Registrant’s identified services, it is not necessary for the
Examining Attorney to prove that each of Applicant’s services is related to those of the
Registrant. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
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identical to those in the cited registration. These two du Pont factors favor a finding
of likelihood of confusion.
We now turn to a consideration of the du Pont factor of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression, keeping in mind that, when the services are virtually
identical, as they are in the case of the Class 41 services, the degree of similarity
necessary to support a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992). Both Applicant’s mark FINANCIALLY WISE WOMEN and the cited
mark WISE WOMEN WORKSHOP, of course, both contain the words “WISE
WOMEN.” Applicant, however, claims that the differences between the marks, “the
addition of the unique dominant term FINANCIALLY” and the absence of the term
WORKSHOP in Applicant’s mark, and the absence of alliteration in Applicant’s
mark are sufficient to distinguish the marks. Applicant’s brief, 17 TTABVUE 9.
We disagree. Although marks must be compared in their entireties, 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.

USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods in the
application). We also note that, in the conclusion of its reply brief in which Applicant details
the six factors on which it bases its contention that there is no likelihood of confusion,
Applicant does not list the factors of the similarity of the services or the channels of trade.
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1985). We do not consider the presence of FINANCIALLY in Applicant’s mark to be
a “unique dominant” element that is entitled to greater weight in our comparison of
the marks. Although Applicant was able to persuade the Examining Attorney that
FINANCIALLY is not a merely descriptive term for its services, as a result of which
the Examining Attorney withdrew her requirement that this term be disclaimed,
based on the evidence in the record we consider FINANCIALLY to be a highly
suggestive term for Applicant’s services and that it is not the dominant element of
Applicant’s mark, nor is it sufficient to distinguish the mark from the cited mark.
“FINANCIALLY” indicates the nature of Applicant’s services, namely, that it makes
those who avail themselves of the services knowledgeable in the area of “finance.”
We have considered Applicant’s arguments contending that FINANCIALLY is the
dominant element of its mark, but do not find them persuasive.
Although often the first element of a mark is considered the dominant element,
see Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005), it is not a hard-and-fast rule
that the first word of a mark must always be treated as the dominant element.
Applicant appears to argue that because the USPTO’s Acceptable Identification of
Goods & Services uses “financial” or variations of this word for identifications of
goods and services found in eight classes, and because many trademarks
registrations include the word “financial” or a variation in their identifications, and
these goods and services are in different fields, FINANCIAL does not delineate a
specific activity. In support, Applicant submitted with the affidavit of Geoffrey A.
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Berkin, its attorney, an exhibit consisting of seven pages of listings of acceptable
identifications in which the word “financial” or a variation is found. With respect to
the registrations, the affidavit states that searches were performed using the
Office’s TESS database; however, no copies of actual registrations were submitted,
only a “spreadsheet” noting the number of “hits” in which certain words, e.g.,
“financial + services,” were found in an identification. Because the registrations
were not made of record, the summary of “hits” has virtually no evidentiary value.4
Similarly, Applicant’s summary of results that it created from a private search
company’s report of third-party trademarks containing the word “financial” or a
variation, which purports to show that 17 registrations did not contain a disclaimer
of this word, while 33 did, has little evidentiary value, since the actual registrations
were not submitted, and the goods or services are not shown in the summary.
We repeat that since the Examining Attorney withdrew the requirement for a
disclaimer of FINANCIALLY, and therefore Applicant did not consider itself to have
any further obligation to prove that FINANCIALLY is a distinctive term, we will
not treat the word as descriptive. However, Applicant’s own identification of
services, as well as those of the cited registration, and the USPTO’s acceptable
identifications of goods and services, all of which show that “financial” is a
recognized term to describe financial services of the type identified in Applicant’s

4 We also point out that the search included expired or cancelled registrations and pending
applications. A dead registration has no evidentiary value, and a third-party application
that is properly of record is evidence only of the fact that the application was filed.
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application, is sufficient evidence for us to treat the term FINANCIALLY in
Applicant’s mark as highly suggestive.
As for the term WORKSHOP in the cited mark, this word, which was disclaimed
by the Registrant, is descriptive, if not generic, for the service of conducting
workshops. Accordingly, it has little, if any, source-indicating value, and the
presence of this word in the cited mark does not serve to distinguish the marks.
Moreover, although each word in the cited mark begins with a “W,” while
Applicant’s mark includes a word that begins with an “F,” those consumers who
would be mindful of alliteration would view WISE WOMEN in Applicant’s mark as
having the same type of alliteration as WISE WOMEN WORKSHOP in the cited
mark.
We find that the marks FINANCIALLY WISE WOMEN and WISE WOMEN
WORKSHOP are similar in appearance, pronunciation, connotation and commercial
impression. Although there are specific differences in the marks, as discussed
above, these differences are not sufficient to distinguish the marks. Rather, because
FINANCIALLY provides additional information about the services, and the area in
which they make the customers of the services – WOMEN – “wise,” consumers who
are aware of the Registrant’s mark are likely to regard FINANCIALLY WISE
WOMEN, when used in connection with identical and related services, as a
variation of WISE WOMEN WORKSHOP, with FINANCIALLY indicating more
about the area in which the consumer is made “wise.”
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We have considered Applicant’s argument that “the ‘Wise Woman’ is a familiar
archetype used in connection with a variety of goods and services marketed to
women.” Brief, 17 TTABVUE 12. Applicant’s support for this statement consists of
fifteen third-party registrations which include the words WISE and WOMAN or
WOMEN.5 Third-party registrations are entitled to little weight on the question of
likelihood of confusion where there is no evidence of actual use. Tektronix, Inc., v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). Although such
registrations may be used to show the meaning of a mark in the same way that
dictionaries are used, id., based on the evidence in this case we can draw no
conclusion that WISE WOMAN has a particular significance in connection with
financial services. Many of the registrations submitted by Applicant are not for
“WISE WOMAN” marks, but merely marks that include the two words in the mark,
e.g., WOMEN ARE WISE (Reg. No. 3560246); WOMENWISE (Reg. No. 3482333);
WOMANWISE! (Reg. No. 4534130); (Reg. No. 3474058);
and (Reg. No. 3789620). Even the marks that have the phrase WISE
WOMEN or WISE WOMAN are for goods or services that are different from
Applicant’s and the Registrant’s financial services. See, for example, Reg. No.
3744482 for WISE WOMAN PUBLISHING and Reg. No. 3683722 for WISE

5 Applicant claims that there are sixteen such third-party registrations, but one of the
registrations submitted by Applicant is the registration that has been cited against it.
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WOMAN PUBLISHING and design for books and other printed articles in the field
of women’s spirituality; Reg. 3317957 for ONE HUNDRED WISE WOMEN and
Reg. No. 3317958 for ONE HUNDRED WISE WOMEN and design for general
business networking services, namely, providing opportunities for discussion and
interaction with corporate, community and professional leaders; and Reg. No.
4296155 for WISE WOMAN WELLNESS for on-line retail store services featuring
products relating to the healing arts. The third-party registrations that are closest
to the financial/educational services that are at issue herein are two that are owned
by Syracuse University, Reg. No. 3605966 for WISE WOMEN IGNITING THE
SPIRIT OF ENTREPRENEURSHIP for “educational services, namely, conducting
seminars, classes, and workshops in the field of entrepreneurship” and Reg. No.
3376557 for the same mark for “educational services, namely, conducting seminars,
conferences and workshops in the field of entrepreneurship and women-owned and
operated businesses.”
Based on the evidence of record, we cannot find that the term “wise women” is a
“familiar archetype,” or that this term has been so commonly adopted for
financial/financial advice services that Applicant has shown that it has a
significance in this field. Nor does the fact that other marks which contain the
words WISE or WOMAN/WOMEN were registered for different goods and services
show that the cited registration is a weak mark for the services at issue and
therefore that it is entitled to a limited scope of protection, or that consumers will
look to other elements than WISE WOMEN in the marks at issue (in this case the
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highly suggestive word FINANCIALLY in Applicant’s mark and the highly
descriptive, if not generic word WORKSHOP in the cited mark) to distinguish the
marks. We also add that, to the extent that WISE WOMEN has a meaning for such
services, that meaning is the same in both Applicant’s and the Registrant’s marks.
When the marks are considered in their entireties, and giving due weight to the
elements with the greater source-indicating significance, overall they are similar in
appearance, sound, connotation and commercial impression. This du Pont factor
favors a finding of likelihood of confusion.
With respect to the du Pont factor of the conditions under which and buyers to
whom sales are made, Applicant contends that the consumers of Applicant’s and the
Registrant’s services “are certain to be highly selective about who they entrust with
their money and their confidential, financial, and possibly other information.”
Applicant’s brief, 17 TTABVUE 14. However, Applicant’s services in Class 41, and
the Registrant’s services, are for workshops in the field of financial planning. These
services, as identified, could include something as simple as a one-hour class in
which basic general financial information is given to a group of people. A consumer
may avail herself of such services because she is not sophisticated, and is seeking
some basic information about financial planning. These educational services would
not involve entrusting one’s money, and would not necessarily involve providing
confidential or financial information. Nor does the decision to obtain financial
budgeting or educational services necessarily involve careful deliberation. In this
connection, we note the evidence submitted by the Examining Attorney, of what is
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apparently Applicant’s Facebook page, that offers an opportunity to “Enter to Win
FREE Money Class” by submitting a photo of one’s homemade summer salad and
the cost of the salad. Reconsideration denial, February 7, 2015, p. 70.
As for Applicant’s services in Class 41, the financial advice includes “budget
planning,” which again might be of interest to consumers who are not particularly
knowledgeable about finances, and who want basic financial information. Thus, we
treat this du Pont factor as neutral.
With respect to the eighth du Pont factor, Applicant asserts that, with respect to
its services in Class 36, there has been nearly five years of concurrent use without
evidence of actual confusion. However, Applicant has also acknowledged that its
and the Registrant’s services are “geographically very distinct.” Request for
reconsideration, filed January 6, 2015, p. 6. As Applicant states, “Applicant is a
California-based company located in Los Angeles, whereas the owner of the cited
mark is located across the country in Pennsylvania.” Id. In view thereof, we cannot
say that there has been an opportunity for confusion to occur if it were likely to
occur. Moreover, it has long been recognized that an applicant’s uncorroborated
statements of no known instances of actual confusion are of little evidentiary value.
In re Majestic, 65 USPQ2d at 1205. Accordingly, rather than finding the du Pont
factor of concurrent use without evidence of actual confusion to favor Applicant, we
find that this factor is neutral.
Applicant argues that the extent of potential confusion is de minimis, relying on
its arguments with respect to the conditions of purchase factor, and asserting that
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because consumers “will exercise scrutiny even at the time of considering whether
and who to contact about purchasing the services,” any potential confusion as to
source “will likely be dispelled quickly and without any harm.” Applicant’s brief, 17
TTABVUE 16-17. However, because both Applicant’s and the Registrant’s services
can be utilized by any woman6 who wants budget planning advice or would like to
attend a workshop in the field of finance, including women who are unsophisticated
about finance, we do not agree that the extent of potential confusion is de minimis.
After considering all of the evidence and arguments, including those not
specifically discussed herein,7 we find that Applicant’s mark FINANCIALLY WISE
WOMEN for its identified services in Classes 36 and 41 is likely to cause confusion
with the registered mark WISE WOMEN WORKSHOP.
Decision: The refusal to register Applicant’s mark FINANCIALLY WISE
WOMEN is affirmed.

6 Although Applicant’s services as identified are not limited to women, the Registrant’s are,
and therefore the overlap in consumers would be women.
7 Applicant repeats as the 13th du Pont factor its arguments regarding the third-party
registrations for marks that include the words WISE and WOMAN/WOMEN. In its reply
brief, Applicant contends that even if the evidence is entitled to little weight in determining
the strength of the mark under the sixth du Pont factor, the registrations should be
considered under the 13th factor. 20 TTABVUE 9. However, whatever factor they are
considered under, their evidentiary value remains the same. The registrations are not
evidence that the marks are in use. We have already discussed their probative value in
terms of showing any significance of the phrase “wise women.”