Muddy Waters Marketing LLC

Trademark Trial and Appeal Board

Feb 2, 2021

88363722 (T.T.A.B. Feb. 2, 2021)

Mailed: February 2, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Muddy Waters Marketing LLC
_____
Serial No. 88363722
_____
Wei Wei Jeang of Grable Martin Fulton PLLC
for Muddy Waters Marketing LLC.

Caitlin Watts-Fitzgerald, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____
Before Cataldo, Adlin and Coggins, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Muddy Waters Marketing LLC seeks registration of MUDDY WATERS,
in standard characters, for:
Providing advertising services, marketing services, and
branding services, namely, placing advertisements on
behalf of clients to promote their brand, product, service,
and event; digital advertising services; media buying and
planning, namely, creating marketing strategies, selecting
commercial inventory for sale, and purchasing advertising
space for others across a mix of media and advertising
platforms in order to effectively and efficiently achieve an
advertiser’s campaign goals through audience marketing
research and analysis, media platform analysis,
advertising campaign duration recommendations,
advertisement placement recommendations, commercial
sales inventory selection, pricing negotiations in the nature
of negotiation of business contracts for others with media
This Opinion is Not a
Precedent of the TTAB
Serial No. 88363722
2
platforms and companies, and purchasing of advertising
inventory on media platforms, specifically, on broadcast
TV, cable TV, connected TV, outdoor advertising and
billboards, transit advertising, print advertising, direct
mail, magazines, newspapers, sponsorships, and digital
advertising, consumer insights, namely, providing clients
with marketing insights in the nature of market research
and business analyses regarding consumer interests,
demographics, geographic location, device usage,
engagement metrics, purchasing and shopping behaviors,
conversion tracking and campaign performance metrics;
consumer research; search engine marketing services,
namely, promoting the goods and services of others
through search engine referral traffic analysis and
reporting; search engine optimization for sales promotion;
social media advertising services; social media business
management; audience targeting, namely, identifying and
targeting consumers most likely to be, or become,
interested in a clients’ products and services based on
consumer research and consumer data, all being marketing
research and market analysis services; creative strategy,
namely, building customized marketing and advertising
strategies to target the right audience with the right
messaging across the right media platforms at the right
time to help advertisers achieve their goals most efficiently
and effectively; marketing consulting; advertising
consulting; branding consulting being brand imagery
consulting services; media buying advice, namely,
providing consulting services in the field of facilitating the
buying of media; targeted display advertising services,
namely, consulting clients on ways to improve the
effectiveness of their marketing, advertising, and branding
by providing marketing direction and recommendations
related to creative design, brand designs, advertisement
and marketing campaign content, advertising strategy,
advertising budgets, competitor marketing research,
marketing and branding campaign analysis, media
marketing platforms, audience targeting for advertising
purposes, consumer insights, sales lead attribution,
advertising contract negotiations, advertising campaign
monitoring, sales lead tracking, business reputation
Serial No. 88363722
3
monitoring, and product review solicitation, in
International Class 35.1

The Examining Attorney refused registration on two grounds: (1) the identification
of services is indefinite; and (2) Applicant’s mark so resembles several commonly-
owned MUDDY WATERS marks previously registered for financial and investment-
related services2 that use of Applicant’s mark in connection with Applicant’s services
is likely to cause confusion in violation of Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). After the refusal became final on both grounds, Applicant appealed and
Applicant and the Examining Attorney filed briefs.
I. Identification of Services
This ground for refusal is based on the alleged indefiniteness of the following
portion of Applicant’s identification of services, with the crux of the indefiniteness
issue set forth in bold:
media buying and planning, namely, creating marketing
strategies, selecting commercial inventory for sale, and
purchasing advertising space for others across a mix of
media and advertising platforms in order to effectively and
efficiently achieve an advertiser’s campaign goals through
audience marketing research and analysis, media platform
analysis, advertising campaign duration
recommendations, advertisement placement
recommendations, commercial sales inventory selection,
pricing negotiations in the nature of negotiation of business
contracts for others with media platforms and companies,
and purchasing of advertising inventory on media
platforms, specifically, on broadcast TV, cable TV,
connected TV, outdoor advertising and billboards, transit
advertising, print advertising, direct mail, magazines,

1 Application Serial No. 88363722, filed March 29, 2019 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on first use dates of May 15, 2017.
2 Registration Nos. 4691762, 4682227, 4692533, 5035727 and 5035791.
Serial No. 88363722
4
newspapers, sponsorships, and digital advertising,
consumer insights, namely, providing clients with
marketing insights in the nature of market research and
business analyses regarding consumer interests,
demographics, geographic location, device usage,
engagement metrics, purchasing and shopping behaviors,
conversion tracking and campaign performance metrics.

According to the Examining Attorney, “an omitted semicolon, or some other phrasing,
has rendered the two identifications into a single run-on statement” that is indefinite.
8 TTABVUE 17. More specifically, the Examining Attorney contends that “[t]he term
‘AND’ preceding ‘digital advertising’ insinuates that this is the final item” in the list
of media buying and planning services. Id.3
Applicant essentially ignored this ground for refusal throughout prosecution and
in its Appeal Brief. It thus does not argue that its identification of services is
sufficiently definite, or propose an alternative.
“An applicant must identify the goods and services specifically to provide public
notice and to enable the USPTO to classify the goods and services properly and to
reach informed judgments concerning likelihood of confusion under 15 U.S.C.
§ 1052(d).” In re Fiat Grp. Mktg. & Corp. Commc’ns. S.p.A., 109 USPQ2d 1593, 1597
(TTAB 2014); In re Faucher Indus. Inc., 107 USPQ2d 1355, 1358-59 (TTAB 2013);
Trademark Rule 2.32(a)(6) (application must include a “list of the particular goods

3 The Examining Attorney also appears to have ignored the comma which follows “digital
advertising,” as she contends that “digital advertising consumer insights” is “not a recognized
service.” 8 TTABVUE 17. Because there is a comma between “digital advertising” and
“consumer insights,” we do not agree that “digital advertising consumer insights” is part of
the identification, and the identification is not indefinite based on the allegedly missing
comma which in fact appears between “digital advertising” and “consumer insights.”
Serial No. 88363722
5
or services on or in connection with which the applicant uses … the mark”) (emphasis
added). Thus, “[i]t is within the discretion of the PTO to require that one’s goods be
identified with particularity.” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544
(Fed. Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980)).
For example, in In re Omega, the applicant sought to register its mark for “jewelry,
precious stones; watches, watch straps, watch bracelets and parts thereof;
chronometers, chronographs, watches made of precious metals, watches partly or
entirely set with precious stones” in International Class 14. The examining attorney
required that “chronographs” be identified more specifically, because that term could
refer to watches, which fall within Class 14, or to time recording instruments, which
fall within Class 9. The Federal Circuit upheld the Board’s decision affirming the
examining attorney’s requirement, agreeing that “the scope of the term
‘chronographs’ is ambiguous for registration purposes,” because it includes both
watches and time recording devices. Id.
Here, we agree with the Examining Attorney that the identification of services is
indefinite. Indeed, the term “digital advertising” comes at the end of a list of different
“media platforms” on which “advertising inventory” is purchased, such as TV,
billboards, etc. Even if “digital advertising” at the end of the list was considered
another type of “media platform” on which advertising is purchased, the term which
immediately follows, and is also presented as part of the list of media platforms
(“consumer insights”) is not a “media platform.” To the contrary, “consumer insights”
Serial No. 88363722
6
seems to be a separate service, especially when it is followed immediately by “namely”
and a list of “consumer insight” services. In short, the lack of a semicolon or, as the
Examining Attorney puts it, “some other phrasing,” renders the identification of
services indefinite and the refusal is therefore affirmed on this ground.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the services. See 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.”).
We focus here on the cited Registration No. 4682227 for the mark MUDDY
WATERS, in standard characters, for:
Advice relating to investments; Commodity investment
advice; Financial investment analysis and stock research;
Financial services, namely, investment advice, investment
management, investment consultation and investment of
funds for others, including private and public equity and
debt investment services; Global investment research
Serial No. 88363722
7
services; Investment advice; Providing information and
research in the field of finance and financial investments;
Providing information, commentary and advice in the field
of finance, financial investments and financial valuations,
in International Class 36 (the “’227 Registration”).4

If we find confusion likely between Applicant’s involved mark and this cited mark,
we need not consider the likelihood of confusion between Applicant’s mark and the
other cited marks. On the other hand, if we find no likelihood of confusion between
Applicant’s mark and the mark in the ’227 Registration, we would not find confusion
likely between Applicant’s mark and the other cited marks. In re Max Capital Grp.
93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Marks
The marks are identical in every way (appearance, sound, meaning and
commercial impression). This factor not only weighs heavily in favor of finding a
likelihood of confusion, but also reduces the degree of similarity between the services
required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent. Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001).
B. The Services, Channels of Trade and Classes of Consumers
The Examining Attorney relies on evidence that financial and investment services
such as those identified in the ’227 Registration are offered under the same marks as
advertising and marketing services such as those identified in the involved

4 Issued February 3, 2015.
Serial No. 88363722
8
application. For example, Ameriprise Financial uses its AMERIPRISE mark in
connection with financial and investment services provided to its clients:

as well as marketing services provided to its “experienced advisors,” which are
intended to help them “attract and acquire clients” and “manage a marketing plan”:
Serial No. 88363722
9

June 12, 2019 Office Action TSDR 23, 26, 30-33. Similarly, Nationwide Planning
Associates uses its NATIONWIDE design mark for “investment & advisory services”
targeted to individual clients, and “marketing solutions” targeted to its financial
advisors who serve individual clients:
‘
Serial No. 88363722
10

Id. at 34-35. Raymond James uses its RAYMOND JAMES mark for both financial
and investment services for clients, and marketing services for its advisors:

Serial No. 88363722
11

Id. at 36, 39. Skoda Minotti (which has apparently changed its name to Marcum) uses
its SKODA MINOTTI mark the same way for both financial and investment services
for clients, and marketing services for its advisors. Id. at 42-51.
A press release from LPL Financial Holdings, Inc. provides some background
concerning why it is common for financial and investment firms to offer marketing
support for their advisors. May 8, 2020 Denial of Request for Reconsideration TSDR
10. The press release announces that a group of financial advisors “have launched
Ashworth Financial Group with support from LPL Strategic Wealth Services, a new
affiliation model designed to support the unique needs of established wirehouse or
employee channel-based advisors seeking independence.” The press release goes on
to explain that LPL will provide Ashland with “business management support,”
including “brand management” and “marketing strategy.” Id. at 11. See also id. at 17-
21 (printout from LPL Strategic Wealth Services website making the same essential
point). A Cetera Financial Group press release about its new Chief Marketing Officer
makes essentially the same point: that financial and investment advisors may seek
Serial No. 88363722
12
marketing help from companies which also provide financial and investment services
such as those identified in the cited ’227 Registration. Id. at 13-16. FiComm Partners
and IN Research authored a report entitled “Drivers of Growth: How Greater
Marketing Focus is Distinguishing Financial Advisory Firms” which also makes the
same point. Id. at 22-31. According to the report, “[a]dvisors who invest in marketing
and business development efforts are poised to come out ahead of those who choose
to maintain the status quo.” Id. at 30.
This evidence establishes that the services in the involved application and cited
’227 Registration are related. See In re Detroit Athletic Co., 903 F.3d 1297, 128
USPQ2d 1047, 1050 (Fed. Cir. 2018) (crediting relatedness evidence showing that
third parties use the same mark for the goods and services at issue because “[t]his
evidence suggests that consumers are accustomed to seeing a single mark associated
with a source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells
the goods and services of both parties, if presented, is relevant to a relatedness
analysis”).
Applicant’s argument that the “marketing services that are provided by these
companies are provided to their own financial advisors who offer their financial
services under the company trademarks,” 4 TTABVUE 11, is not well taken.
Applicant seems to suggest that the companies’ “own financial advisors” are
employees, such that the third-party financial/investment firms about which the
Serial No. 88363722
13
Examining Attorney introduced evidence do not provide marketing services “for
others,” who are “unrelated to their own businesses.” Id.
The record makes clear, however, that at least some of the financial advisors being
offered or receiving marketing services are merely affiliated with the brokerages.
That is, they operate separate businesses to which the third-party
financial/investment firms offer a suite of products and services from which the
advisors may choose. For example, the Raymond James website’s section on “Advisor
Marketing” states: “Raymond James understands the importance of managing and
building your brand as an advisor. This goes beyond simply extending the brand of
the firm you’ve chosen to partner with … That’s why we have a full-service, in-house
creative agency … dedicated to serving their clients – financial advisors like
you.” June 12, 2019 Office Action TSDR 39 (emphasis added). Similarly, the
Ameriprise website directed to “Experienced Advisors” uses the domain name
“joinameriprise.com” whereas Ameriprise’s core financial and investment services
are offered via the domain name “ameriprise.com.” And in promoting its marketing
services to “Experienced Advisors,” Ameriprise states “You’ve built a successful
practice, but you’re always looking ahead to what’s next … How can I manage a
marketing plan when I have a practice to run? At Ameriprise, we provide our
advisors with the tools they need to deliver an integrated − yet personalized
– approach to communicating with clients.” Id. at 30 (emphasis added). In other
words, the “practices” and “clients” are the advisors’, not Ameriprise’s. Furthermore,
much of this third-party evidence reflects recruiting/sales efforts. In other words, the
Serial No. 88363722
14
third-party financial/investment firms are offering marketing services to recruit
prospective new affiliated advisors, as opposed to serving their own employees.
As for channels of trade and classes of consumers, the evidence is perhaps
somewhat less persuasive in one way, because brokerages and others that offer
financial and investment products and services seem to offer them either directly, or
indirectly through affiliated advisors, to individual investors, while targeting their
marketing services specifically to the advisors who work with individual investors.
Nevertheless, affiliated advisors are effectively also customers for the financial and
investment products and services offered by brokerages, as they must choose which,
if any, of them to offer to their individual investor clients. Thus, the channels of trade
and classes of consumers overlap in part.
C. Actual Confusion
Applicant’s reliance on the absence of actual confusion is misplaced, because there
is no evidence regarding the extent of Applicant’s use of its mark, or the extent of
Registrant’s use of the cited mark. Therefore, we cannot gauge whether or the extent
to which there has been an opportunity for confusion to occur if it were likely to occur.
See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903
(Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if
any, probative value here because (1) no evidence was presented as to the extent of
ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior
years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any
event, a lack of evidence of actual confusion carries little weight in an ex parte case
such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show
Serial No. 88363722
15
actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is
neutral.
D. Purchaser Care and Sophistication
Applicant’s argument that purchasers of the types of services identified in the
involved application and cited Registration tend to be “sophisticated” and to exercise
care in purchasing is unsupported by any evidence. Even if we accepted the
argument, any purchaser care and sophistication would be outweighed by the use of
identical marks for related services which travel in some of the same channels of
trade. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss Assocs., Inc., 12
USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweighed sophisticated purchasers, careful
purchasing decision, and expensive goods).
III. Conclusion
Applicant’s mark is identical to the cited mark, and its services are related to and
travel in some of the same channels of trade as Registrant’s services. Confusion is
therefore likely, notwithstanding any purchaser sophistication.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed. The requirement for a more definite identification of
services is also affirmed.