MackTrack Inc.

Trademark Trial and Appeal Board

Sep 25, 2007

No. 78665858 (T.T.A.B. Sep. 25, 2007)

Mailed:
25 September 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MackTrack Inc.
________

Serial No. 78665858
_______

Melissa Georges of Frankfort Kurnit Klein & Selz P.C. for
MackTrack Inc.

Tashia A. Bunch, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Rogers, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 7, 2005, MackTrack Inc. (applicant) filed an
intent-to-use application to register the mark WEALTHTRACK
(in standard character form) on the Principal Register for
goods in Class 16 identified as “Books, newsletters and
syndicated newspaper columns in the field of finances,
financial advice, investing and money management.”
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser No. 78665858

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The examining attorney1 refused to register applicant’s
mark because of a registration of the mark WEALTHTRAX (in
standard character form) for “education, namely wealth
creation and wealth preservation seminars, workshops and
study courses” in Class 41.2
The examining attorney argues that “both marks share
the same terms or phonetic equivalent terms, namely, WEALTH
and TRACK, to identify goods and services in the financial
field. As such, the marks project the same connotation and
meaning.” Brief at unnumbered p. 4. Regarding the
relatedness of the goods and services, the examining
attorney argues that “[t]hose that offer wealth creation
and preservation course often publish books and printed
matter giving financial advice.” Brief at unnumbered p. 6.
In response to the refusal, applicant argues that:
“The two marks neither look nor sound alike” and “Consumers
seeing and hearing the two marks will be able to perceive
the differences between the two.” Brief at 4.
Furthermore, “Registrant continually emphasizes the
dominant TRAX portion it its mark, and has in fact,
developed a family of TRAX marks, making that portion of

1 The current examining attorney was not the original examining
attorney in this application.

2 Registration No. 2910127 issued December 14, 2004.

Ser No. 78665858

3
the mark a source identifier.” Id. Regarding the goods
and services, applicant argues that the marketing
“conditions surrounding these slightly related goods and
services are quite distinct. As noted above, Registrant
markets its services using various TRAX marks, including
the Registered Mark at issue. Further, unlike Registrant,
Applicant is not offering wealth creation or preservation
seminars.” Brief at 7.
After the examining attorney made the refusal final,
this appeal followed.
Before discussing the issue of likelihood of
confusion, we must briefly address some questions regarding
evidence that applicant attached to its brief. The
examining attorney objects to the inclusion of a Notice of
Allowance for applicant’s pending application (Serial No.
78665870)3 and specimens from the cited registration.4 We
agree that this evidence is untimely and we will not rely
on it. 37 CFR § 2.142(d).
In likelihood of confusion cases, we must consider the
evidence as it relates to the factors set forth in In re

3 We note that the Office’s electronic records now indicate that
this Notice of Allowance has been withdrawn.

4 As explained subsequently, the manner in which registrant has
used its mark in the past or currently does not limit our
likelihood of confusion analysis in this proceeding.
Ser No. 78665858

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E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), keeping in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [and services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first factor we consider is whether the marks, in
their entireties, are similar in sound, appearance,
connotation, and commercial impression. du Pont, 177 USPQ
at 567. See also Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005).
Here, the marks are WEALTHTRACK and WEALTHTRAX;
neither is depicted with any stylization. They are
identical to the extent that they both begin with the
identical term “Wealth” and then they add a second term
without a space between the words. The second terms begin
with the identical three letters, “TRA.” The only
difference is the fact that applicant’s mark ends with the
letters “CK,” while registrant’s ends with an “X.” Despite
this difference in spelling, the terms WEALTHTRACK and
WEALTHTRAX would be pronounced almost identically. The
Ser No. 78665858

5
only difference would be that registrant’s mark would be
pronounced like the plural of applicant’s mark. Applicant
argues that the plural/singular difference results in marks
for which consumers “will be able to perceive the
differences.” Brief at 4. This slight difference in
pronunciation, which results from the singular and plural
pronunciations of the marks, would not result in any
significant differences because the marks would be
pronounced almost the same. Wilson v. Delauney, 245 F.2d
877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that
there is no material difference, in a trademark sense,
between the singular and plural forms of the word "Zombie"
and they will therefore be regarded here as the same
mark”). In appearance and commercial impression, the marks
are also extremely similar and, again the slightly
different endings would not give consumers much of a basis
to distinguish the marks. To determine if there is a
likelihood of confusion, a “[s]ide by side comparison is
not the test.” Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Our “focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks.” Baseball America Inc. v.
Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004).
Ser No. 78665858

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Here, the use of singular and plural forms of the
phonetically equivalent term “wealth track” does not
constitute use of terms with markedly different appearances
or commercial impressions. In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(“There is little room to debate the similarity between
ROPELOCK and ROPELOK in appearance”). In addition, the
meaning of the two marks would be virtually identically.
Both marks would mean “track(s) to wealth.”
Therefore, when we consider the marks WEALTHTRACK and
WEALTHTRAX in their entireties, we conclude that they are
very similar.
Next, we look at the relatedness of the goods and
services. It has long been held that when we compare the
goods and services, we must consider them as they are
described in the identifications of goods and services in
the application and registration. Octocom Systems Inc. v.
Houston Computer Services, 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant's mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods,
the particular channels of trade or the class of purchasers
Ser No. 78665858

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to which sales of the goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods” or
services).
More specifically, we do not read limitations into the
identifications of goods and services. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).
Therefore, we will not consider applicant’s argument (Brief
at 7) that registrant only “markets its services using
various TRAX marks.” See San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
2 (CCPA 1977) (Registrant's rights “are not to be tied into
its current business practices, which may change at any
time”). The fact that registrant owns other trademarks
does not limit the scope of protection the cited mark is
entitled to in this proceeding.
Also, while applicant points out that the “respective
marks are also within different trademark classes” (Brief
at 6), this has no bearing on the outcome here. The
trademark classification system is “for convenience of
Patent and Trademark Office administration, but not to
Ser No. 78665858

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limit or extend the applicant’s or registrant’s rights.”
15 U.S.C. § 1112.
While applicant admits that the goods are “generally
related” (Brief at 8), it nonetheless argues that they are
“quite different.” The board has set out the following
points to consider when determining whether goods and
services are related:
It “has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties' goods or services.”

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
The examining attorney has introduced evidence to
attempt to demonstrate that publications and educational
services in the financial field are registered under a
common mark. Pertinent registrations with the relevant
portions of the identifications of goods and services are
set out below.
No. 2329908
Ser No. 78665858

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Quarterly printed newsletters and printed educational
brochures featuring financial, estate and tax
planning, investment, and management advice

Providing educational seminars featuring financial,
estate and tax planning, investment, and management
advice

No. 3055889
Newsletters and informational flyers featuring
information in the fields of food and health,
insurance, transportation, housing, vacations,
clothing, personal finance, and vehicle and home
repair and maintenance

Educational services, namely, conducting classes and
seminars in the field of financial planning, and cash
and debt management and distributing course materials
in connection therewith; individual training services
in the field of financial planning, and cash and debt
management

No. 2952683
Printed materials, namely, newsletters and bulletins
promoting the interests of mature individuals and in
the fields of retirement, mature or retired
lifestyles, finance, health, insurance, medicine,
aging and family relationships

Arranging and conducting seminars and conferences
promoting the interests of mature individuals and in
the fields of retirement, mature or retired
lifestyles, finance, health, insurance, medicine,
aging and family relationships; and distribution of
course materials

No. 3037569
Newsletters in the fields of finance and investments;
printed informational and educational materials in the
areas of investing, investments, financial strategies
and planning, and asset management

Educational services, namely, providing seminars to
individual investors about investing, investments,
financial strategies and planning, and asset
management

Ser No. 78665858

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No. 2974699
Pamphlets, books, course books, newsletters, studies,
brochures, and guidebooks, all pertaining to the [sic]
investing and finance

Educational services, namely, conducting classes,
seminars, conferences, workshops and online
exhibitions, displays and interactive exhibits in the
field of finance, investments, loans, securities,
bonds, stocks, mutual funds, and financial markets and
providing course materials in the nature of booklets,
manuals, books, workbooks, worksheets, examples and
online web pages and content distributed in connection
therewith

No. 2907592
Printed instructional, educational and teaching
materials for specialized coursework in industry
specific areas, namely finance, travel and tourism and
information technology industries

Providing educational services, namely, conducting
seminars, internships and courses in industry specific
areas, namely, finance, travel and tourism and
information technology services

The examining attorney also included the following
website information that shows the same individual
providing publications and educational services in the
field of wealth creation.5

5 We find less relevant two Australian authors who also give
seminars on wealth creation apparently only in Australia.
www.motivatedmoney.com.au (Peter Thornhill) and
www.moneybags.com.au (Peter McDonald, former CEO of Taxpayers’
Australia). In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1835 (Fed. Cir. 2007) (“Information originating on
foreign websites or in foreign news publications that are
accessible to the United States public may be relevant to discern
United States consumer impression of a proposed mark”). Another
site (www.questlive.com) only features a wealth creation seminar
and a guest speaker who wrote a book about the energy crisis.
There is no indication that the speaker’s book is associated with
the seminar’s sponsor.
Ser No. 78665858

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Marc Allen’s Success With Ease Seminars, Books, and
Audios
Is it possible to have success with ease? Is it
possible to be successful – doing what you love to do
– and still have plenty of time for what matters most
to you in your life?
…
Marc Allen is internationally known for his seminars,
books, audio programs, and music. He can show you how
to attain financial success by doing what you love to
do.

www.marcallen.com.

The registrations and internet evidence support the
examining attorney’s position that the goods and services
of applicant and registrant are related. See In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988)
(Although third-party registrations are “not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may
nonetheless have some probative value to the extent that
they may serve to suggest that such goods or services are
of a type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993).
We find that the registrant’s services of offering
seminars and other educational services in the field of
finance are related to publications in the same field.
Consumers seeking financial advice are likely to be
potential purchasers of both applicant’s books and
Ser No. 78665858

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registrant’s services. Purchasers who are familiar with
registrant’s WEALTHTRAX seminars to create and preserve
wealth are likely to believe, when they encounter
applicant’s WEALTHTRACK publications on finances, financial
advice, investing and money management, that the sources of
these goods and services are related or associated in some
way.
Therefore, we conclude that under these circumstances,
confusion is likely if applicant were to use its
WEALTHTRACK mark for its identified goods in view of the
registrant’s mark WEALTHTRAX for its identified services.

Decision: The refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.