Focus Magazin Verlag

Trademark Trial and Appeal Board

Aug 2, 2007

No. 79010009 (T.T.A.B. Aug. 2, 2007)

Hearing: Mailed:
May 8, 2007 August 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Focus Magazin Verlag GmbH
________

Serial Nos. 79008210 and 79010009
_______

Donald C. Casey of Law Offices of Donald C. Casey for Focus
Magazin Verlag GmbH.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).1
_______

Before Seeherman, Walters and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Focus Magazin Verlag GmbH (hereafter “applicant”) has
applied to register the mark FOCUS in the form shown below,
for

1 Mr. Charlon was the Examining Attorney for Application Serial
No. 79010009; Sandra E. Manios, also of Law Office 103, was the
Examining Attorney for Application Serial No. 79008210. Because
Mr. Charlon argued on behalf of the USPTO with respect to both of
the applications, we have listed him as the attorney of record,
but note that Ms. Manios handled Application Serial No. 79008210
through final briefing.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 79008210 and 79010009
2
Printed matter and publishing goods
namely, magazines, periodicals,
newspapers and pamphlets in the field
of financial and economic information,
in Class 16; and

Publication of printed matter,
particularly of magazines, newspapers,
periodicals, pamphlets and books in the
field of economic and financial
information, in Class 41.2

Applicant has also applied to register FOCUS MONEY, in
standard characters, with MONEY disclaimed, for
Printed matter and publishing goods
namely, magazines, periodicals,
newspapers and pamphlets in the field
of financial and economic information,
in Class 16;

Television broadcasting in the field of
economic and financial news programs
and advertising, in Class 38; and

Publication of printed matter, namely,
magazines, newspapers, periodicals,
pamphlets and books in the field of
economic and financial information, in
Class 41.3

Registration of both marks has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
on the ground that they are likely to cause confusion with
the following registered marks:

2 Application Serial No. 79010009, filed October 10, 2004, based
on Section 66(a) (Madrid Protocol).
3 Application Serial No. 79008210, filed October 10, 2004, based
on Section 66(a).
Ser Nos. 79008210 and 79010009
3
Registration No. 1767428 for FINANCIAL
FOCUS, with FINANCIAL disclaimed, for
“financial newsletter and financial
advice column directed to individual
and corporate investors4; and

Registration No. 2510374 for FOCUS and
No. 2510370 for FOCUS, in the stylized
form shown below, both owned by the
same entity and registered for printed
material, namely a periodical which
relates to economic and political
issues affecting minorities and others.5

After final refusals issued for both applications,
applicant appealed, and the appeals have been fully
briefed. Applicant also requested oral hearings in both
appeals and, because they involve common issues, the
appeals were consolidated for purposes of the oral hearing.6
We also are deciding both appeals in a single opinion.

4 Registered April 27, 1993; Section 8 & 15 affidavits accepted
and acknowledged; renewed.
5 Both registrations issued on November 20, 2001.
6 At the oral hearing applicant submitted a “briefing book,”
consisting of printouts of three federal court decisions, and
papers from a third-party application file. Because the papers
from the third-party file were not made of record during
examination, we have not considered this exhibit. See Trademark
Rule 2.142(d). Copies of decisions, however, need not be
submitted in order for us to consider them.

Ser Nos. 79008210 and 79010009
4
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).
We turn first to the refusal of registration of FOCUS
for printed matter and publishing services, namely:
Printed matter and publishing goods
namely magazines, periodicals,
newspapers and pamphlets in the field
of financial and economic information;
and publication of printed matter,
particularly of magazines, periodicals,
newspapers, pamphlets, and books in the
field of economic and financial
information.

With respect to the cited registrations, Nos. 2510370
and 2510374, for FOCUS, applicant has conceded that its
mark is identical to these marks. Brief, p. 5. In point
of fact, applicant’s mark is depicted in what is
Ser Nos. 79008210 and 79010009
5
characterized as stylized form, but that stylization is
basic capital letters, while Registration No. 2510370 is
for FOCUS in a stylized form, with the “O” having a slight
design aspect.7 However, we agree with applicant that the
marks are virtually identical; the slight differences in
appearance caused by the stylization do not serve to
distinguish the marks, and the marks are, obviously,
identical in pronunciation and connotation, as well as
commercial impression. The du Pont factor of the
similarity of the marks strongly favors a finding of
likelihood of confusion.
As for the goods and services, the cited registrations
are for “printed material, namely a periodical which
relates to economic and political issues affecting
minorities and others.” Applicant’s goods are identified
as, inter alia, periodicals in the field of financial and
economic information. Both applicant’s and the
registrant’s goods are legally identical, in that they both
include periodicals on the subject of economic information.
We note that the registrant’s periodicals specifically deal
with economic issues affecting minorities and others, but

7 In its reply brief applicant asserts that the mark shown in
Registration No. 2510374 is stylized, but it is not; it is a
“typed” drawing.

Ser Nos. 79008210 and 79010009
6
since the subject matter of applicant’s periodicals is
broadly described as being “in the field of economic
information,” it would encompass economic issues affecting
minorities and others.
We also find that applicant’s publishing services,
particularly the publishing of periodicals in the field of
economic information, are closely related to the
periodicals identified in the cited registrations. The
relatedness of publishing services for such periodicals,
and the periodicals themselves, is clear.
Thus, the du Pont factor of the similarity of the
goods and services favor a finding of likelihood of
confusion.
Moreover, because both applicant’s and the
registrant’s identified goods are legally identical, we
must assume that they move in the same channels of trade,
and are sold to the same class of purchasers, namely,
members of the general public who have an interest in
economic issues affecting minorities and others. This
would include not only minorities, but those members of the
general population who are interested in issues that affect
minorities and “others.” This du Pont factor favors a
finding of likelihood of confusion.
Ser Nos. 79008210 and 79010009
7
Neither applicant nor the Examining Attorney has
discussed the nature of applicant’s identified publishing
services. We must assume that the publishing services are
rendered to third parties, since the mere publication of
one’s own periodicals would not be a separate service, but
an integral part of “manufacturing” the goods, which are
publications. Thus, the customers for applicant’s
publishing services would be those who write articles or
otherwise wish to have their views published. Such
consumers are also likely to read periodicals that concern
economic issues, including economic issues affecting
minorities and others. As a result, both applicant’s
services and the registrant’s goods would be encountered by
the same class of consumers.
Applicant argues that the cited registrations are
entitled to a limited scope of protection because FOCUS is
a weak mark. Further, in its appeal brief applicant has
argued that the two cited registrations “for the word
‘FOCUS’ are descriptive in that a property of the magazine
or publication using that mark contains subject matter that
can be concentrated on by the reader.” Brief, p. 5. The
Examining Attorney objected to this characterization of the
cited marks by applicant, stating that this was an
impermissible collateral attack on the registrations.
Ser Nos. 79008210 and 79010009
8
Applicant appears to have retreated from this position in
its reply brief, stating that the Examining Attorney
misconstrued applicant’s argument, and that applicant was
not challenging the validity of the registrations, but only
their strength. Although we think the statements made by
applicant in its appeal brief would reasonably be
understood as a claim that the cited marks were merely
descriptive, we will consider applicant’s current position
that the marks are weak.
Applicant bases this claim on the meaning of the word
“focus,” and its assertion that this word is in broad
usage. With respect to the latter point, applicant relies
solely on third-party registrations for marks containing
the word FOCUS. These registrations had initially been
cited against applicant’s application, but the refusals
were later withdrawn when applicant narrowed its
identification to specify the subject matter of its
publications.8 It is well established that third-party

8 The third-party registrations are for FOCUS for “scientific
newsletter”; FOCUS for “magazines carrying information concerning
manufacturing standards, certification, testing and inspection
activities, and associated technological and biographical
information”; HR FOCUS for “newsletter containing information on
human resources”; RADIO FOCUS for “magazines and newsletters
featuring radio programming and marketing trends and issues”;
FOCUS for “newsletter pertaining to industrial supplies and
machinery manufacturers’ trade association”; FOCUS for “print
publication, namely, general feature magazine”; MUSIC FOCUS for
“guitar instruction books” and FOCUS for “printed publications,
Ser Nos. 79008210 and 79010009
9
registrations are not evidence that the marks shown therein
are in commercial use. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). Thus, we can give no
weight to applicant’s claim that FOCUS marks are in “broad
usage.”
However, we may consider the third-party registrations
in the manner of dictionary definitions, to indicate that
the word “focus” has a meaning or significance for
periodicals. We may also look to the dictionary meaning of
the word “focus” in determining the scope of protection to
which the cited registrations are entitled. Applicant has
quoted, in its appeal brief, a definition of “focus” as
meaning “to concentrate; to focus one’s thoughts.9 The
Examining Attorney has also, in his brief, included quoted
dictionary definitions of “focus,” the most pertinent of
which is “close or narrow attention; concentration.” We
take judicial notice of the various definitions. See
University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

namely, newsletters, brochures, and bulletins in the field of
agriculture and agribusiness.” We note that none of these
publications are for the same subject matter as those of the
applicant or registrant.
9 Applicant states that this definition was taken from the
American College Dictionary, Random House © 1956.
Ser Nos. 79008210 and 79010009
10
The foregoing evidence serves to show that FOCUS has a
somewhat suggestive meaning when used for periodicals, but
we can by no means say that it is a weak mark. Certainly
it is deserving of protection against the use of a
virtually identical mark for legally identical goods and
closely related services. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974) (even a weak mark is entitled to protection against
the registration of a similar mark for closely related
goods or services).
Moreover, because the marks are virtually identical
and applicant’s goods are legally identical and its
services are closely related to the goods in the cited
registrations, the fact that the consumers for periodicals
dealing with economic issues and for publishing services
for such periodicals may be more careful and/or
sophisticated does not avoid the likelihood of confusion.
Even careful and sophisticated consumers are not likely or
indeed able to distinguish between virtually identical
marks that are used for identical goods and closely related
services.
Accordingly, we affirm the refusal of registration of
both classes of Application Serial No. 79010009 based on
Registration Nos. 2510370 and 2510374.
Ser Nos. 79008210 and 79010009
11
As for the refusal based on Registration No. 1767438
for FINANCIAL FOCUS for a “financial newsletter and
financial advice column directed to individual and
corporate investors,” we find that applicant’s goods and
the registrant’s identified goods are closely related if
not legally identical, in that a newsletter is a type of
periodical. The subject matter of the publications is also
the same, both being in the field of financial information.
Applicant’s services and these goods are also closely
related, since applicant’s identification encompasses
publishing periodicals that are the same type or are
closely related to those identified in the cited
registration. This du Pont factor favors a finding of
likelihood of confusion.
With respect to the channels of trade, applicant has
conceded that “the magazines identified by the trademark
FINANCIAL FOCUS and the instant mark may well occupy
overlapping marketing channels.” Brief, p. 6. We note
that the goods in the cited registration are identified as
newsletters and an advice column rather than a magazine,
but as we stated above, applicant’s identification of
periodicals encompasses newsletters. In any event,
periodicals such as magazines and newsletters may be mailed
to consumers, or be sold together, and are likely to be
Ser Nos. 79008210 and 79010009
12
purchased and read by the same classes of consumers,
namely, those interested in financial information. As for
applicant’s services, again those interested in having
someone publish their views on financial subjects, whether
it be an article or a letter to the editor, are likely to
be readers of financial newsletters or advice columns, and
therefore will be exposed to both the registrant’s goods
and applicant’s services.
Thus, the du Pont factor of the channels of trade and
classes of consumers favors a finding of likelihood of
confusion.
This brings us to a consideration of the marks.
Applicant’s mark and the cited mark obviously differ in
that the registrant’s mark includes the word FINANCIAL,
while applicant’s mark does not. However, in comparing the
marks, we consider the word FINANCIAL to have less impact,
in that it merely describes the nature of the registrant’s
publications. Thus, consumers are likely to look to the
word FOCUS in the mark as the stronger source-identifying
element. 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, provided the ultimate conclusion rests on a
Ser Nos. 79008210 and 79010009
13
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Simply put, the additional word FINANCIAL in
the registrant’s mark is not sufficient to distinguish the
marks.
Moreover, consumers who are familiar with the
registrant’s mark for financial newsletters may well
assume, upon seeing FOCUS for periodicals in the field of
financial information, that this is merely a shortened form
of the FINANCIAL FOCUS mark.
Again, we have taken into consideration applicant’s
arguments about the weakness of the term FOCUS, but do not
consider FOCUS to be such a highly suggestive term that the
addition of the descriptive word FINANCIAL is sufficient to
distinguish the marks when they are used for legally
identical or very closely related goods and services. We
also point out that the consumers of the goods are the
public at large, and even though they may exercise a
greater degree of discrimination in choosing a financial
publication than they would a more entertainment-oriented
magazine, these marks are still so similar that, as used on
identical or closely related goods, they are likely to be
confused. As for applicant’s services, we recognize that
such consumers of publishing services as authors who write
Ser Nos. 79008210 and 79010009
14
articles on financial topics, will be more sophisticated
and careful. However, because of the closely related
nature of the goods and services, and the fact that the
only difference in the marks is the presence of the
descriptive word FINANCIAL, even these more careful
consumers are likely to assume that FINANCIAL FOCUS for a
financial newsletter and FOCUS for the service of
publishing periodicals involving financial information
identify goods and services emanating from a single source.
In reaching our conclusion that confusion is likely
between applicant’s mark FOCUS and the three cited
registrations, we have considered the cases that applicant
has cited and discussed in its brief and submitted at the
oral hearing. However, we find that these cases are
distinguishable. For example, Entrepreneur Media Inc. v.
Smith, 279 F3d 1135, 61 USPQ2d 1705 (9h Cir. 2002),
involved, inter alia, the issue of likelihood of confusion
between the plaintiff’s mark ENTREPRENEUR and the
defendant’s use of ENTRPRENEUR in various forms for various
uses, e.g., “EntrepreneurPR” for the name of a business,
“entrepreneurpr.com” for a domain name, and “Entrepreneur
Illustrated” for a publication. In that decision, which
was an appeal from a grant of summary judgment, the Appeals
Court was concerned with whether the District Court had
Ser Nos. 79008210 and 79010009
15
viewed the evidence in the light most favorable to the
nonmoving party and whether there were any genuine issues
of material fact. It also treated the plaintiff’s mark
ENTREPRENEUR as a descriptive term that others should be
able to use in connection with subjects related to
entrepreneurship. In the present case, we are obviously
not dealing with the special issues that apply to deciding
a summary judgment motion. Moreover, FOCUS is not the
subject matter of a periodical, nor is there sufficient
evidence to show that FOCUS, whether in the two FOCUS marks
or in the mark FINANCIAL FOCUS, is such a weak term (let
alone a descriptive term) that it should be free for all to
use in connection with financial publications or
publications dealing with economic issues affecting
minorities and others.10
This brings us to the second application in this
consolidated appeal, Application Serial No. 79008210 for
FOCUS MONEY, with MONEY disclaimed. The same registrations
cited in the companion application have been cited against
the registration of this mark. However, this application

10 Given that applicant’s own mark is FOCUS, the statements made
throughout applicant’s brief that FOCUS is a descriptive term,
and its analogizing its mark to the Entrepreneur case, including
quoting the statement that others should be able to use
“entrepreneur” to describe their goods and services, would seem
antithetical to applicant’s position that it is entitled to
obtain a registration for FOCUS per se.
Ser Nos. 79008210 and 79010009
16
differs somewhat from the prior application, both because
the mark includes the word MONEY, and because the
application also includes “television broadcasting in the
field of economic and financial news programs and
advertising” in Class 38.
We first consider the refusal based on the two
registrations for FOCUS. With respect to the services in
Class 38, the Examining Attorney has not submitted any
evidence regarding the relatedness of these services to the
registrant’s publications, nor, other than the conclusory
statement that the services are sufficiently related, has
she even discussed how applicant’s services are related to
the registrant’s goods. While the identification of the
services shows that the subject matter of the television
broadcasting services can encompass the subject matter of
the registrant’s publications, the Examining Attorney has
not provided any evidence for us to conclude that consumers
would assume that television broadcasting services and
publications emanate from a single source. In view
thereof, we find that the Office has not met its burden of
showing that applicant’s Class 38 services are related to
the registrant’s goods. Moreover, without any evidence
that the goods and services are related, the fact that the
marks used in connection therewith are the same or similar
Ser Nos. 79008210 and 79010009
17
is not sufficient to demonstrate a likelihood of confusion.
Thus, we reverse the refusal of registration with respect
to the application is Class 38.
As for the relatedness of the goods and services in
Class 16 and Class 41 of applicant’s application, and the
goods identified in the cited registrations, as well as the
channels of trade, we have already discussed these factors
in connection with applicant’s FOCUS application.
Therefore, we need not repeat that discussion, and simply
find that the du Pont factors of the similarity of the
goods and services and channels of trade and classes of
consumers favor a finding of likelihood of confusion with
respect to these classes.
This brings us to a consideration of the similarity of
the marks. When marks would appear on virtually identical
goods or 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). Here, as we
have said, applicant’s goods are legally identical to the
registrant’s goods, while its services are closely related
to them.
Applicant’s mark in Application Serial No. 79008210 is
FOCUS MONEY, while the cited marks are FOCUS and FOCUS
Ser Nos. 79008210 and 79010009
18
(stylized). However, the presence of this additional word
is not sufficient to distinguish the marks. MONEY, which
applicant has disclaimed, describes the subject matter of
applicant’s publications and the publications that are the
subject of its publishing services. Accordingly, consumers
will look more to the word FOCUS in applicant’s mark for
its source-identifying significance. As we mentioned in
our discussion of the issue of likelihood of confusion with
the mark FINANCIAL FOCUS, it is permissible to give greater
weight to a particular part of a mark, and we consider it
to be appropriate in this case to give greater weight to
the FOCUS portion of applicant’s mark. In saying this, we
reject the view that FOCUS is such a weak term and/or a
descriptive part of the mark FOCUS MONEY that the
descriptive word MONEY should be given greater weight in
our consideration of the marks. This du Pont factor favors
a finding of likelihood of confusion.
As we previously discussed, consumers for periodicals
dealing with economic issues and for publishing services
for such periodicals may be more careful and/or
sophisticated, and this du Pont factor therefore favors the
applicant. However, because the marks FOCUS/FOCUS
(stylized) and FOCUS MONEY are so similar, the goods are
legally identical and the services are closely related,
Ser Nos. 79008210 and 79010009
19
even careful or sophisticated consumers are likely to
assume that the goods and services emanate from the same
source.
Therefore, we affirm the refusal of the application in
Classes 16 and 41, based on Registration Nos. 2510374 and
2510370.
As for the refusal based on the registration for
FINANCIAL FOCUS, again, the Examining Attorney has not
submitted any evidence or argument to show how applicant’s
Class 38 services are related to the goods identified in
the cited registration. Accordingly, the refusal of
registration with respect to the application in that class
is reversed.
With respect to the relatedness of applicant’s Class
16 goods and Class 41 services, our comments with respect
to applicant’s FOCUS application apply. The du Pont factor
of the similarity of the goods and channels of
trade/classes of consumer favor a finding of likelihood of
confusion. However, when it comes to the marks, overall we
find that there are sufficient differences between
FINANCIAL FOCUS and FOCUS MONEY that confusion is not
likely. In saying this, we are aware that there is some
connotative similarity between FINANCIAL and MONEY in that
both words are associated with finances. However, these
Ser Nos. 79008210 and 79010009
20
words are not synonyms, and overall the differences in
these words and their placement in the marks, with
FINANCIAL at the beginning of one, and MONEY at the end of
the other, give the marks an overall difference in
appearance, pronunciation, connotation and commercial
impression. Accordingly, we find that there is no
likelihood of confusion with the registration for FINANCIAL
FOCUS.
Decision: The refusal of registration is affirmed
with respect to Application Serial No. 7901009 for FOCUS in
Class 16 and Class 41 on the basis of likelihood of
confusion with Registration Nos. 2510370, 2510374 and
1767428. The refusal of registration is affirmed with
respect to Application Serial No. 79008210 in Class 16 and
Class 41 on the basis of likelihood of confusion with
Registration Nos. 2510370 and 2510374, and is reversed with
respect to Registration No. 1767428. The refusal of
registration with respect to Application Serial No.
79008210 in Class 38 is reversed. Application Serial No.
79008210 will be forwarded to publication for the services
in Class 38.