TheMembers Group, Inc.

Trademark Trial and Appeal Board

Jul 10, 2006

No. 78462370 (T.T.A.B. Jul. 10, 2006)

Mailed:
July 10, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Members Group, Inc.
________

Serial No. 78462370
_______

Timothy J. Zarley of Zarley Law Firm, P.L.C. for The Members
Group, Inc.

David H. Stine, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Members Group, Inc., seeks registration on the
Principal Register of the following special form mark:

for services recited in the application, as amended, as
follows:
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78462370
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“financial services provided to credit
unions, namely, credit, debit and ATM card
processing, financial asset/liability
management, automated financial clearinghouse
services, share draft financial services and
mortgage loan services” in International
Class 36.1

This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register applicant’s mark based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the recited services, so resembles the mark
TMG (standard character drawing), which is registered for
“Real estate brokerage services; Real estate agencies; Loan
brokerage, consulting and services; Mortgage brokerage,”
also in International Class 36,2 as to be likely to cause
confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
filed briefs in this case, but applicant did not request an
oral hearing. We affirm the refusal to register.
Applicant argues that given the highly-stylized nature
of its mark, this mark cannot be treated simply as a

1 Application Serial No. 78462370 was filed on August 5, 2004
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as June 7, 2004. The record
contains the statement that “The mark consists of the stylized
letters TMG with the G forming an arrow.”
2 Registration No. 2784099 issued to The Mardrian Group, Inc.
on November 18, 2003, having claims of first use anywhere and
first use in commerce at least as early as October 24, 1997.
Serial No. 78462370
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straightforward letter combination mark. Applicant also
argues that the respective services are quite different – as
recited, as well as based upon screen prints it copied from
registrant’s website. According to that information, The
Mardrian Group is a construction company that uses its
service mark in association with its construction company
services. Finally, applicant argues that inasmuch as its
recitation of services focuses on providing products and
services to credit unions, and registrant’s recitation of
services makes no reference to servicing credit unions,
there is no overlap in services.
By contrast, the Trademark Examining Attorney argues
that “the identical, and completely arbitrary, letter
combination ‘TMG’ is the obvious dominant feature of
applicant’s mark.” Trademark Examining Attorney’s brief,
unnumbered p. 2. He argues, further, that “the degree of
stylization in this case is not sufficiently striking,
unique or distinctive as to create a commercial impression
separate and apart from the literal feature.” Id. at
unnumbered pp. 2 – 3. Moreover, he contends that inasmuch
as registrant’s mark is presented in a standard character
drawing, the scope of protection for the registered mark is
not limited to any particular presentation and must be
assumed to encompass any stylization of the letter
Serial No. 78462370
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combination TMG in a format similar to that used by
applicant.
As to the relationship of the services, the Trademark
Examining Attorney argues that based upon the respective
recitations of services herein, both applicant and
registrant are sources of mortgage loan financing.
Furthermore, he argues that applicant’s mortgage loan
services are complementary to registrant’s real estate-
related services inasmuch as most buyers of real estate
require financing.
Finally, the Trademark Examining Attorney argues that
even though applicant’s channels of trade may be restricted
to credit unions, because registrant’s recitation is
entirely unrestricted as to trade channels, it must be
presumed that registrant’s mortgage services are available
to any interested parties, including credit unions.
Likelihood of Confusion: Analysis
Our determination under Section 2(d) of the Act is
based upon an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
Serial No. 78462370
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considerations are the similarities between the marks and
the relationship of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
The marks
We turn first to the du Pont factor focusing on the
similarity of the marks as to appearance, sound, connotation
and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Here applicant’s mark and the registered mark are both
letter marks. Whether or not specific letter combinations
are confusingly similar are affected by, inter alia, where
the letters may fall along the continuum of distinctiveness,
as well as the degree of stylization involved in the
presentation of the mark. See, e.g., Diamond Alkali Company
v. Dundee Cement Company, 343 F.2d 781, 145 USPQ 211
(CCPA 1965), involving the following marks:

Serial No. 78462370
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and in which the Court, in finding no likelihood of
confusion, stated that Diamond Alkali Co.’s mark would be
regarded as an arbitrary design that is capable of many
different interpretations rather than as a letter “d.”
On the other hand, while applicant’s mark in the
present case contains some stylization, the letters T•M•G
are readily apparent. Although applicant is correct in
contending that the analysis of similarity of the marks
changes somewhat when one or both marks is so highly
stylized that it creates a striking visual impression apart
from the spoken letters, we do not consider applicant’s mark
to have such a remarkable stylization. Compare Diamond
Alkali Company v. Dundee Cement Company, supra; Georgia
Pacific Corporation v. Great Plains Bag Company, 614 F.2d
757, 760; 204 USPQ 697 (CCPA 1980). The clear impression
and connotation conveyed by applicant’s mark is of the
letters T•M•G. The letter combinations of applicant’s mark
and registrant’s mark are, thus, identical. When spoken,
the marks will sound the same and will have the same
meaning, that of the letters T•M•G.3

3 It appears that registrant and applicant have derived their
respective marks from the initials of their corporate names (“The
Mardrian Group” and “The Members Group”). Consumers, however,
cannot be expected to know the origin of these initialisms, and
therefore the connotations of the marks themselves must be
considered to be identical.
Serial No. 78462370
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With respect to appearance, the stylization of
applicant’s mark clearly creates some differences in the
appearance of the two marks. However, the stylization is
not so great that it alters the commercial impression
conveyed by the mark. Further, as the Examining Attorney
has pointed out, inasmuch as registrant’s mark is presented
in a standard character format, the protection afforded the
registrant’s mark would extend to its use of a type font
similar to that used in the lettering of applicant’s mark –
although the protection afforded the cited mark would not
include such stylized elements as the conflation of the
letters T and M, and the arrow design creating the letter G.
Applicant cites to the decision of In re Electrolyte
Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed.
Cir. 1990), where the Court of Appeals for the Federal
Circuit, held that the following marks for a dietary
potassium supplement were not likely to cause confusion,
noting that “[t]he letter ‘K’ in both marks is the chemical
symbol for potassium”:

Serial No. 78462370
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However, unlike in those marks, where the common
element was the non-distinctive letter K, the letter
combination TMG in the instant case is arbitrary as used in
connection with registrant’s and applicant’s services.
Thus, despite some differences in appearance,
applicant’s stylized mark creates the same commercial
impression as registrant’s TMG mark. This factor favors a
finding of likelihood of confusion.
The services
We turn then to the du Pont factor focusing on the
relationship of the respective services. Registrant’s
services are identified as “Real estate brokerage services;
Real estate agencies; Loan brokerage, consulting and
services; Mortgage brokerage”; while applicant’s application
includes a number of services, the closest of them to
registrant’s recited services are “mortgage loan services”
provided to credit unions, so we will concentrate our
analysis on these services. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 209 USPQ 986, 988 (CCPA 1981) [if
confusion is likely with respect to any of the identified
goods (or services) in a class, likelihood of confusion must
be found for the class as a whole].
Serial No. 78462370
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Applicant argues that its services are quite different
from registrant’s services. Additionally, applicant cites
to the home page of registrant’s website, which states:
TMG - The Mardrian Group, Inc., founded in
1992, is a general construction company
specializing in construction of commercial,
industrial, residential developments,
religious and non-profit facilities.”4

Applicant argues from this extrinsic evidence that
registrant’s service mark is used in connection with
registrant’s construction company services “aimed at
consumers who would like to build and develop real estate.”
“This is a much different group of consumers than the
consumers that will be purchasing the credit and debit
processing and financial services of the applicant’s
company. Consequently, because of the difference in the
services, the overlap between the consumers of the
applicant’s services and the consumers of the Registrant’s
services would be de minimus.” Applicant’s response of May
6, 2005, pp. 6 – 7.
By contrast, the Trademark Examining Attorney claims
that applicant’s services are related to registrant’s
services. In asserting this, he has taken the position that
extrinsic evidence regarding the nature of registrant’s

4 http://www.mardrian.com/pages/866830/index.htm
Serial No. 78462370
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actual services may not be used to limit the protection
accorded to registrant by its registration.
We agree with the Trademark Examining Attorney. It is
well settled that the likelihood of confusion determination
must be made on the basis of the recitation of services as
set forth in the involved application, compared with the
recitation of services contained in the cited registration,
rather than on the basis of what the evidence might show the
applicant’s or registrant’s actual services to be. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) and Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Accordingly,
we must deem the registrant’s services to encompass all
those services identified in its registration, and to move
in all appropriate channels of trade and to all appropriate
customers for those services as recited.
The Trademark Examining Attorney is also correct in
noting that services need not be identical in order to
support a finding of likelihood of confusion, provided there
is a showing of the relatedness of the services and an
overlap of customers.
In this vein, the Trademark Examining Attorney
acknowledges that there are differences in the wording of
Serial No. 78462370
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the recitations of registrant’s and applicant’s services,
but argues that the respective service recitations include
“critical overlap.” Trademark Examining Attorney’s brief,
unnumbered p. 4.
In fact, there appear to be a number of ways in which
credit unions would be in the market for the services listed
in the cited registration.
This registration recites “mortgage brokerage” services
among the services registrant offers. Mortgage brokers act
as intermediaries, distributing mortgage products from large
lenders to qualified borrowers. Smaller lending
institutions like credit unions may well use such
specialized mortgage brokers. Furthermore, a credit union
that offers mortgage loans directly to its members could use
a mortgage broker to arrange for a subsequent sale of the
mortgage paper in the secondary wholesale markets.
Similarly, applicant’s recitation of services includes
providing mortgage loan services to credit unions. This
service recitation would include helping credit unions with
the lending process by offering mortgage loans to qualified
credit union borrowers.
Therefore, from the standpoint of the employees and/or
officers of a credit union, the services offered by
registrant as a mortgage broker and those offered by
Serial No. 78462370
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applicant as a mortgage wholesaler would likely be seen as
closely-related activities.
Indeed, applicant does not dispute the position of the
Trademark Examining Attorney that mortgage brokerage and
mortgage loans services are complementary. Rather, its
entire argument is that because the cited registration “does
not recite services to credit unions,” then “the
registrant’s identification of services does not encompass
the services described by Applicant.” However, because
there are not any limitations in registrant’s recitation,
its services are presumed to be rendered to all appropriate
consumers for its services. In re Elbaum, 211 USPQ 639
(TTAB 1981). There is nothing in the record to suggest that
mortgage brokerage services of the kind recited by
registrant would not be offered to credit unions.
Hence, this factor too favors the position taken by the
Trademark Examining Attorney.
Channels of Trade
As discussed above, absent any specific limitations in
the recitation of services contained within the cited
registration, the issue of likelihood of confusion must be
determined by looking at all the usual channels of trade and
methods of distribution for the respective services. See
Serial No. 78462370
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CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
1983). The Trademark Examining Attorney is correct in
noting that the recitation of services contained in the
cited registration has no limitations on registrant’s
customers. Because, as noted above, such services may be
rendered to credit unions, registrant’s recitation of
services must be deemed to encompass services rendered to
credit unions. Thus, this key du Pont factor also favors
the position taken by the Trademark Examining Attorney.
Sophistication of customers
Credit unions, as purchasers of both types of services,
would be considered to be sophisticated purchasers – a
factor that would normally favor applicant. However, we
find that because of the strong similarities in the marks
herein, even careful consumers are likely to be confused.
Resolve any doubt against the newcomer
We confess, after weighing all the relevant du Pont
factors in the instant case, that the issue of likelihood of
confusion is not free from doubt. However, it is well
established that should we retain any doubt on the issue of
likelihood of confusion, such doubt must be resolved in
favor of the prior user and against the newcomer. Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Serial No. 78462370
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Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.