Ironwood Investment Management, LLC

Trademark Trial and Appeal Board

Jun 26, 2020

88110436 (T.T.A.B. Jun. 26, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 26, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ironwood Investment Management, LLC
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Serial Nos. 88110436 & 881104721
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Adam J. Bruno of Bay State IP LLC
for Ironwood Investment Management, LLC.

Nicholas Altree, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____
Before Zervas, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, and have similar records, the
appeals are hereby consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB
2012) (The Board sua sponte consolidated two appeals). Citations to the TSDR and TTABVUE
record are to Application Serial No. 88110436, except where otherwise indicated.
Serial Nos. 88110436 & 88110472
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I. Background
Ironwood Investment Management, LLC (“Applicant”) seeks registration on the
Principal Register of the marks IRONWOOD INVESTMENT MANAGEMENT (with
INVESTMENT MANAGEMENT disclaimed)2 and IRONWOOD FUNDS (with
FUNDS disclaimed),3 both in standard characters for “Financial services, namely,
mutual fund investment services and management of diversified investments in
public companies; financial and investment services, namely, managing of assets,
namely, small cap products, endowments, foundations, corporate pension plans,
sovereign wealth funds for individual investors and institutional clients” in
International Class 36.
The Examining Attorney refused registration in both cases under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered mark IRONWOOD CAPITAL (with CAPITAL disclaimed), in typed form4
for “financial services, namely the provision of investment banking services,
merchant banking services, investment management services, investment advisory
services and financial advisory services” in International Class 36.5 After the
Examining Attorney made the refusals final, Applicant requested reconsideration

2 Application Serial No. 88110436 was filed September 10, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an alleged use of the mark in commerce.
3 Application Serial No. 88110472 was filed September 10, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an alleged use of the mark in commerce.
4 A typed mark is the legal equivalent of a standard character mark. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”).
5 Registration No. 2509356 issued on November 20, 2001 and has been renewed.
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and appealed. After the Examining Attorney denied reconsideration, the appeals
resumed and both have been briefed.
For the reasons set forth below, we affirm the refusals to register in both appeals.
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the
similarities between the marks and the relatedness of the services. See In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The 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.”).
A. The Services
“[L]ikelihood of confusion can be found ‘if the respective [services] are related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they emanate from the same source.’”
Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Serial Nos. 88110436 & 88110472
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Cir. 2012) (internal citations omitted). “[I]t is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification
of [services] within a particular class in the application.” In re Aquamar, Inc., 115
USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In analyzing the second DuPont factor, we look to the identifications in the
applications and cited registration. See Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
For this reason, we must reject Applicant’s argument that the broad wording of the
“investment management services” recited in the cited registration is “unfair,”6 and
therefore should not be accorded its full breadth. Such collateral attacks on cited
registrations in ex parte proceedings are improper, as “the registration is valid, and
we must give effect to its identification of services.” In re Dixie Rests., Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997).7
The applications have the same recitations of services. We find that the services
in the applications and the cited registration are legally identical in part. Registrant’s
“investment management services” encompass Applicant’s “management of
diversified investments” and “managing of assets … for individual investors and

6 7 TTABVUE 11.
7 “[A]pplicant was not without possible remedies here, including … seeking a restriction of
the registration under Section 18 of the Trademark Act, 15 U.S.C. § 1068.” In re Cook Medical
Technologies LLC, 105 USPQ2d 1377, 1384 (TTAB 2012).
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institutional clients.”. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134,
1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’
necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”); see also Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d
1007, 1025 (TTAB 2015) (where the goods in an application or registration are broadly
described, they are deemed to encompass all the goods of the nature and type
described therein).
The second DuPont factor weighs in favor of likely confusion.
B. The Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, because the services are legally
identical, at least in part, we may presume that the trade channels and classes of
consumers for those services are identical. Viterra, 101 USPQ2d at 1908 (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); see also Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB
2014); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007)
(“Because the goods of both parties are at least overlapping, we must presume that
the purchasers and channels of trade would at least overlap.”). Thus, this factor also
weighs in favor of likely confusion.
Applicant argues without solid evidentiary support that the trade channels and
classes of consumers differ because they allegedly are in different geographical areas
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with a “great distance between the services.”8 Applicant seeks to register its mark
without geographical restrictions, and the cited registered mark is registered without
geographical restrictions. “Geographic limitations will be considered and determined
by the Trademark Trial and Appeal Board only in the context of a concurrent use
registration proceeding.” Trademark Rule 2.133(c), 37 C.F.R. §2.133(c).
Thus, the third DuPont factor weighs in favor of likely confusion.
C. Similarity of the Marks
We now compare Applicant’s marks to the cited mark “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Inn at
St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the services
offered under the respective marks is likely to result. Coach Servs., 101 USPQ2d at
1721; see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).

8 7 TTABVUE 9 (Applicant’s Brief). The consent agreement discussed in more detail below
sets out Applicant’s and Registrant’s places of business but does not limit or even state the
geographic range of their services. TSDR September 10, 2018 Application at 11.
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1. IRONWOOD INVESTMENT MANAGEMENT
Turning first to Applicant’s IRONWOOD INVESTMENT MANAGEMENT mark,
we note that it shares the identical dominant term IRONWOOD with the cited mark
IRONWOOD CAPITAL. For rational reasons, we may give more or less weight to a
particular feature of a mark, such as a common dominant element, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. Viterra,
101 USPQ2d at 1908.
As a distinctive first part of these marks, IRONWOOD is “most likely to be
impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps., 73
USPQ2d at 1692. The dominance of IRONWOOD also arises from the descriptiveness
or genericness of all the other wording in both marks, which wording has been
disclaimed. Descriptive or generic and disclaimed terms are not ignored, but they
have less significance in the likelihood of confusion analysis because consumers are
less likely to rely on descriptive or generic wording to indicate source. See Dixie Rests.,
41 USPQ2d at 1533-34 (in comparing THE DELTA CAFÉ to DELTA, the generic
term CAFÉ lacks sufficient distinctiveness to create a different commercial
impression). Here, consumers would give little weight to INVESTMENT
MANAGEMENT or CAPITAL as source-identifiers for investment management of
capital. So, while we do not ignore the additional wording in the analysis, “the non-
source identifying nature of the words and the disclaimers thereof constitute rational
reasons for giving those terms less weight in the analysis.” In re Detroit Ath. Co., 903
F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018).
Serial Nos. 88110436 & 88110472
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As to the marks’ connotations and commercial impressions, we also find them
similar. We find that consumers would attribute the same meaning to, and derive the
same impression from, the identical term IRONWOOD in Applicant’s mark as they
would in the cited mark. Because the additional wording in both marks consists of
common financial terms and merely refers to the nature of the services, it does not
change the meaning or impression of the shared dominant term. The additional
wording in the two marks only minimally contributes to their overall meaning and
connotation, in that it conveys the nature of the services. Consumers familiar with
the cited mark likely would view Applicant’s mark as a variation from the same
source.
Given the resemblance in sound, appearance, connotation and commercial
impression when viewed in their entireties, we find IRONWOOD INVESTMENT
MANAGEMENT very similar to IRONWOOD CAPITAL. This factor weighs in favor
of a likelihood of confusion.
2. IRONWOOD FUNDS
Turning next to Applicant’s IRONWOOD FUNDS mark, we also find that it looks
and sounds similar to IRONWOOD CAPITAL in large part because of the identical
wording IRONWOOD that forms the beginning, dominant portions of both marks.
The second word in Applicant’s mark, FUNDS, has been disclaimed as descriptive or
generic, as has CAPITAL in the cited mark, so consumers will focus on the identical
IRONWOOD portion of each mark for source identification. See id. For the same
reason, and because CAPITAL and FUNDS are both common financial terms and can
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have similar meanings,9 the commercial impressions and connotations of these marks
are very similar. Consumers familiar with the cited mark likely would view
Applicant’s mark as a variation from the same source.
Given the resemblance in sound, appearance, connotation and commercial
impression when viewed in their entireties, we find IRONWOOD FUNDS very
similar to IRONWOOD CAPITAL. This factor weighs in favor of a likelihood of
confusion.
D. The Market Interface between Applicant and Registrant –
Consent Agreement
Under the tenth DuPont factor regarding the market interface between Applicant
and Registrant, Applicant relies on a 2005 fully executed consent agreement with
Registrant. While a “naked” consent – an unadorned and unexplained approval of
another party’s trademark use or registration – is entitled to little weight, a “clothed”
consent reflecting the parties’ assessment of no likelihood of confusion is entitled to
greater weight. In re Bay State Brewing Co., 117 USPQ2d 1958, 1962 (TTAB 2016).
Considerations in weighing a consent agreement include the following: (1) Whether
the consent shows an agreement between both parties; (2) Whether the agreement
includes a clear indication that the goods and/or services travel in separate trade
channels; (3) Whether the parties agree to restrict their fields of use; (4) Whether the
parties will make efforts to prevent confusion, and cooperate and take steps to avoid
any confusion that may arise in the future; and (5) Whether the marks have been

9 Applicant notes that both “designate banking terms.” 7 TTABVUE 13.
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used for a period of time without evidence of actual confusion. See generally In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); In re Mastic
Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); Bay State Brewing, 117 USPQ2d
at 1964-67.
While we give great deference to informed decisions by interested parties
regarding the ability of marks to coexist in the marketplace without consumer
confusion, “there is no per se rule that a consent, whatever its terms, will always tip
the balance to finding no likelihood of confusion, and it therefore follows that the
content of each agreement must be examined. Few may be found lacking, but it is not
a foregone conclusion that all will be determinative.” Bay State Brewing, 117 USPQ2d
at 1963. As DuPont instructs, a consent is simply evidence which enters into the
likelihood of confusion determination and may or may not tip the scales in favor of
registrability, depending upon the entirety of the evidence. DuPont, 177 USPQ at
567-69.
The agreement is short and simple. It refers to the cited registration and
Applicant’s intent to apply to register both marks at issue, but in connection with
more limited services, specifically “financial services, namely mutual fund
investment services and management of diversified investments in public companies
in International Class 36.”10 The agreement provides that the parties “have
determined that conflict or confusion is unlikely to occur” because “the marks of each

10 TSDR September 10, 2018 Application at 11-12.
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Party are sufficiently different,”11 but they provide no additional explanation why,
nor any steps they have undertaken or will undertake to avoid confusion.12 See
Mastic, 4 USPQ2d at 1295 (“consent is conspicuously silent on what are the
underlying facts which led the parties to their conclusion of no likelihood of
confusion”). The language from Registrant consenting to the applications and the
registrations sought by Applicant is expressly tied to particular services -- “financial
services, namely mutual fund investment services and management of diversified
investments in public companies in International Class 36.”13
The Examining Attorney determined that the consent agreement did not
sufficiently tip the balance against likely confusion for several reasons. First, the
scope of the consent agreement does not encompass all the services in the
applications, as it does not address “financial and investment services, namely,
managing of assets, namely, small cap products, endowments, foundations, corporate
pension plans, sovereign wealth funds for individual investors and institutional
clients.” Second, the Examining Attorney contends that the consent agreement is a
naked consent entitled to little weight because it fails to address the identical nature
of the services and trade channels, and fails to describe any arrangements to avoid
confusion in the marketplace.

11 Id. at 12.
12 We are not convinced by Applicant’s argument that there is “an implied covenant
between the parties to correct the matter,” if confusion arises. 7 TTABVUE 14.
13 TSDR September 10, 2018 Application at 11.
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To address both these criticisms of the consent agreement, Applicant submitted
an affidavit from its CFO/COO/CCO, Shantelle Reidy.14 The affidavit describes an
agreement “with the then President [of] Ironwood Capital, Ltd. (“registrant”),”15 but
it remains unclear whether the referenced agreement is the consent agreement
already in the record. If the agreement discussed in the affidavit is the consent
agreement, we are not persuaded by Applicant’s characterization of it as applying to
a broader array of Applicant’s services and containing provisions that “each company
will take measures to prevent any likelihood of confusion through marketing means
and the like” and that the parties “would exist in separate trade channels because
their services are tailored to different clients.”16 Such characterizations simply are
not consistent with the plain terms of the consent agreement in the record. If, instead,
the agreement discussed in the affidavit is some other alleged agreement that is
broader and more detailed, we decline to rely on the uncorroborated representations
of one party about it, and will not consider it because it has not been included in the
record. See In re Opus One Inc., 61 USPQ2d 1812, 1822 (TTAB 2001) (finding that an
applicant’s declaration regarding the alleged views of the owner of the cited
registration “does not suffice as a substitute for [a valid consent agreement]”).
Applicant also suggests that because its additional services outside the scope of the
consent agreement “are included in International Class 36 which was in fact

14 4 TTABVUE 18-22.
15 Id. at 19.
16 Id. at 19-20.
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described in the Agreement,” the consent applies to them. We reject the contention
that Registrant’s consent in the written agreement extends to all services in Class
36, as that is not what the agreement provides.
Turning to the properly executed 2005 consent agreement in the record, it satisfies
the first consideration for a consent agreement, in that it reflects an agreement
between both parties. However, we agree with the Examining Attorney that the
consent provided in the agreement does not extend to the full scope of services as they
are described in the applications. There is no consent by Registrant as to “financial
and investment services, namely, managing of assets, namely, small cap products,
endowments, foundations, corporate pension plans, sovereign wealth funds for
individual investors and institutional clients.” This is a serious flaw, as it includes
some of the services that overlap with Registrant’s. Where the parties have entered
into a written agreement that quotes a particular recitation of services to which
Registrant consents, we decline to extend that consent to other services outside its
scope, particularly where some of the additional services are legally identical to
Registrant’s.
Turning back to the considerations in weighing a consent agreement, this
agreement suffers from other deficiencies, as it does not indicate that the services
travel in separate trade channels, neither party restricted its field of use, it contains
no provisions regarding efforts to prevent confusion, cooperate and take steps to avoid
confusion, and it contains no representations that the marks have been used for a
period of time without evidence of actual confusion. While we give due consideration
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to the parties’ view that these marks could peacefully coexist for Applicant’s more
limited services, “the consent here is a ‘naked’ consent. There are no undertakings of
record between the parties which enter into the likelihood of confusion
determination.” Mastic, 4 USPQ2d at 1295.
As a final argument, Applicant contends that it inadvertently allowed prior
registrations for the same marks to lapse, and that “[i]t would be a violation of public
policy to prevent [these] mark[s] from being registered based on the 2005 Agreement
which initially allowed the mark[s] to be registered years ago.”17 While Applicant
omitted the prior registrations from the record, instead relying on the Shantelle Reidy
affidavit to support its allegations, we note that the scope of services in Applicant’s
prior now-expired registrations was limited to those set out in the consent agreement,
unlike in these applications whose services exceed the scope of those services
identified in the consent agreement. Regardless, “each case must be decided on its
own facts and neither the USPTO nor the Board is bound by the decision of the
examining attorney who examined the application for the applicant’s previously
registered mark.” In re Cordua Restaurants LP, 110 USPQ2d 1227, 1233 (TTAB
2014), aff’d, 118 USPQ2d 1632 (Fed. Cir. 2016).
Given the deficiencies in the consent agreement and affidavit, we find this DuPont
factor neutral.

17 7 TTABVUE 16.
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III. Conclusion
The overall similarity of the marks for legally identical services that move in
channels of trade and to classes of customers presumed to be the same renders
confusion likely.
Decision: The refusals to register both of Applicant’s marks are affirmed.