First Security Capital, L.L.C.

Trademark Trial and Appeal Board

Feb 22, 2001

No. 75527295 (T.T.A.B. Feb. 22, 2001)

2/22/01
Paper No. 13
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re First Security Capital, L.L.C.
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Serial No. 75/527,295
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William J. Mason of Rhodes & Mason, PLLC for First Security
Capital, L.L.C.
Robert C. Clark, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Hairston, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
First Security Capital, L.L.C. has filed an
application to register the mark FSC and design, as shown
below, for “financial services, namely, making nontaxable
loans secured by stock.”1
1 Serial No. 75/527,295, filed July 29. 1998, claiming first use
dates of July 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/527,295
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark FSC and design, as shown below,
which is registered for “financial services, namely,
financial planning and management, security brokerage
services, mutual funds services, insurance services, and
employee benefit plans relating to pensions, profit sharing
and retirement.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
originally requested but later waived.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors3 which are
relevant under the circumstances at hand and for which
evidence is of record. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Two key
considerations in any likelihood of confusion analysis are
2 Registration No. 1,226,167, issued February 1, 1983, Section 8
& 15 affidavits, accepted and acknowledged, respectively.
3 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 75/527,295
3
the similarity or dissimilarity of the respective marks and
the similarity or dissimilarity of the goods or services
with which the marks are being used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
Considering first the marks involved here, we are
guided by the well-established principle that, although the
marks must be considered in their entireties, there is
nothing improper, under certain circumstances, in giving
more or less weight to a particular portion of a mark. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). In the present marks, the same three
letters FSC in the same sequence dominate the marks. There
are no other letters or words which might serve to
distinguish the letter series; they are identical in sound
and neither has any particular connotation in relation to
the services.
Applicant insists that the marks must not be viewed
simply as letter series, but rather the marks as a whole
and the differences in the design features must be taken
into consideration. Applicant contends that although the
letters are the same, the design features of the two marks
are significantly distinct, resulting in entirely different
appearances.
Ser No. 75/527,295
4
Although it is true that these design differences
exist, we find it appropriate to give greater weight to the
literal portions of the marks, because it is the literal
portions which purchasers will use to refer to the services
and thus it is the literal portions, rather than any design
features, which will make a greater and longer lasting
impression on them. See Ceccato v. Manifattura Lane
Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994). The differences upon which applicant is relying,
such as differences in the display of the letters as light
or dark, the fonts, or the background shapes, are not
distinctive design features which purchasers would remember
over a period of time, much less use in reference to the
services. We find no parallel to the case cited by
applicant, First Savings Bank F.S.B. v First Bank System
Inc., 101 F.3d 645, 40 USPQ2d 1865 (10th Cir 1996). In that
infringement case, the common words FIRST BANK were only a
part of the literal portions of the marks and were shown to
be weak terms frequently used in the field; here the same
letter sequence is the whole of the literal portions of
each of the respective marks and is, for purposes of
registration, totally arbitrary in the financial field. As
a result, here the design features play a much less
significant role in determining the similarity of the
Ser No. 75/527,295
5
marks. We find the overall commercial impressions created
by the present marks to be, at the very least, highly
similar.
Turning to the respective services, we note that it is
not necessary that the services be similar or even
competitive to support a holding of likelihood of
confusion. It is sufficient if the respective services are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same person under circumstances that
could, because of the similarity of the marks being used
thereon, give rise to the mistaken belief that they emanate
from the same source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993) and the case cited therein.
Applicant argues that its services are directed to
making loans secured by stock, whereas the services of the
registrant are directed to financial advice and assistance,
not providing loans. The question, however, is not whether
the services are the same, but rather whether the services
are related in some manner. The Examining Attorney has
made of record copies of three third-party registrations
showing that the same entities have registered a single
mark for use in connection with both financial planning
services and loan financing, as well as other of the
Ser No. 75/527,295
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financial services covered by the cited registration.
While not a large showing, we find this evidence adequate
to demonstrate that the financial services offered by
applicant and registrant are services which might well be
assumed to emanate from a single source. See In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988). Thus,
we find it highly likely that when purchasers encounter the
financial loan services being provided by applicant,
because of the high degree of similarity of the FSC marks
being used in connection with applicant’s services and
those of registrant, they will be confused as to the source
thereof.
Decision: The refusal to register under Section 2(d)
is affirmed.