Vision Group of Funds, Inc.

Trademark Trial and Appeal Board

Jun 23, 1997

EX (T.T.A.B. Jun. 23, 1997)

Paper No. 11
GDH/gdh
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB June 23, 1997
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vision Group of Funds, Inc.
________
Serial No. 74/575,732
Serial No. 74/575,733
_______
Charles W. Saber of Dickstein Shapiro Morin & Oshinsky LLP for
applicant.
Angela M. Micheli, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
_______
Before Cissel, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Vision Group of Funds, Inc. has filed applications to
register the marks "VISION"1 and "VISION" and design,2 as
reproduced below,

1 Ser. No. 74/575,732, filed on September 16, 1994, which alleges
dates of first use of June 1, 1988.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
2

for, in each case, "financial services, namely offering of mutual
funds and money market investments".
In each case, registration has been finally refused
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's mark, when applied to its services,
so resembles the mark "VISION," which is registered in both typed
form for "underwriting insurance services"3 and in the manner
depicted below

for "investment management services other than insurance,"4 as to

2 Ser. No. 74/575,733, filed on September 16, 1994, which alleges a
date of first use anywhere of September 13, 1993 and a date of first
use in commerce of October 1, 1993. The phrase "GROUP OF FUNDS,
INC." is disclaimed.
3 Reg. No. 1,335,908, issued on May 14, 1985, which sets forth dates
of first use of September 1, 1984.
4 Reg. No. 1,708,620, issued on August 18, 1992, which sets forth
dates of first use of July 20, 1990.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
3
be likely to cause confusion, mistake or deception.5
Applicant, in each instance, has appealed. Briefs have
been filed, but an oral hearing was not requested. Because the
issue in each case is essentially the same, the appeals have been
treated in a single opinion. We affirm, in each instance, the
refusal to register on the basis of the registration for the mark
"VISION" for "investment management services other than
insurance," but reverse the refusal to register in light of the
registration for the mark "VISION" for "underwriting insurance
services".
Turning first to consideration of the respective marks,
it is plain from a comparison of the word marks that applicant's
"VISION" mark is identical in all respects, including commercial
impression, to registrants' "VISION" marks. As to a comparison
of applicant's "VISION" and design mark with registrants'
"VISION" marks, it is well established that, while marks must be
compared in their entireties, it is nevertheless the case that,
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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular

5 The two cited registrations neither issued to, nor are presently
owned by, the same registrant.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
4
feature is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for giving
less weight to a portion of a mark ...." 224 USPQ at 751.
In the case of applicant's composite mark, we concur
with the Examining Attorney that the disclaimed phrase "GROUP OF
FUNDS, INC." clearly is merely descriptive of the various mutual
and money market funds offered by applicant and that, since it
appears in a much smaller size than either the word "VISION" or
the lighthouse design, such phrase is a relatively insignificant
portion of the mark. Moreover, while we also agree with the
Examining Attorney that "[t]he design of the lighthouse is a
prominant feature of applicant's mark," we disagree with
applicant's contention that such design is the dominant feature
of the mark. We share, instead, the Examining Attorney's view
that, as a matter of degree, the lighthouse design "is less
significant than the VISION portion" due to the fact that the
word feature is not only likely to be impressed upon a customer's
memory, but it also would be used by prospective purchasers when
requesting information, either orally or in writing, about
applicant's financial services.6 Here, the lighthouse design,
which according to applicant "creates an image of guidance and
provides a consumer with a sense that Applicant will guide him or
her if Applicant's services are used," simply reinforces the

6 See, e.g., In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554
(TTAB 1987).
Ser. No. 74/575,732 and
Ser. No. 74/575,733
5
notion of foresight or discernment conveyed by the word "VISION"7
as used in connection with financial investments.
Thus, while the lighthouse design in applicant's
"VISION" and design mark is undeniably prominent visually, due to
its large size in relation to the other elements in the mark, the
same is also true of the word "VISION," which in each case
constitutes the entirety of registrants' marks. However,
inasmuch as such design, as noted above, serves by virtue of its
placement directly over the word "VISION" in applicant's
composite mark to underscore or highlight the notion of financial
acumen or guidance projected by that word, the prominence of the
lighthouse design in applicant's composite mark does not
sufficiently distinguish it from registrants' VISION" marks8
Accordingly, we concur with the Examining Attorney that since,
respectively, applicant's marks are identical and substantially
similar to registrants' marks, contemporaneous use thereof in

7 We judicially notice, for example, that The American Heritage
Dictionary of the English Language (3d ed. 1992) at 1997 defines
"vision" as, inter alia, "2. Unusual competence in discernment or
perception; intelligent foresight: a leader of vision" and that The
Random House Dictionary of the English Language (2d ed. 1987) at 2126
similarly defines such term as, among other things, "2. the act or
power of anticipating that which will or may come to be: prophetic
vision; the vision of an entrepreneur". It is well settled that the
Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
8 Applicant's reliance upon the case of In re Electrolyte
Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990), is
misplaced since, unlike the shared term "K+" in the marks "K+EFF" and
"K+" and design for dietary potassium supplements, the common term
"VISION" in the marks at issue herein is not merely descriptive of
any of the services in connection with which it is used.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
6
connection with the same or closely related services would be
likely to cause confusion as to source or sponsorship.
Applicant maintains, however, that marks which consist
of or feature the term "VISION" are entitled to only a narrow
scope of protection since, "based on the large number of VISION
marks that already exist, it is clear that such marks are
relatively weak." Specifically, applicant argues that, as shown
by the results of its search of the "TRADEMARKSCAN" commercial
database, "there are at least 13 additional existing Federal
registrations or applications for marks which include the term
VISION and cover services in the financial arena."9 Such third-
party marks, however, are entitled to little weight on the
question of likelihood of confusion since the registrations and
applications are not evidence of what happens in the marketplace

9 The Examining Attorney, in her brief in each case, has stated an
objection to consideration thereof, asserting that applicant failed
to make the evidence properly of record since it submitted only a
list of third-party registrations and applications instead of true
copies of the registrations and applications. While third-party
applications, irrespective of the type of copies thereof submitted,
have no evidentiary value other than showing that the applications
were filed, the Examining Attorney is correct that the proper
procedure for making third-party registrations of record is to submit
either copies of the actual registrations or the electronic
equivalents thereof, i.e., printouts of the registrations taken from
the Patent and Trademark Office's own computerized data base. See,
e.g., In re Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB
1995) at n. 3; In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) at n. 3 and In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB
1991) at n. 2. Nevertheless, inasmuch as the Examining Attorney, in
response to applicant's submission of such evidence, raised no
objection thereto in finally refusing registration and instead
treated the evidence as being of record, the objection raised for the
first time in each of her briefs is deemed to have been waived and
the evidence has been considered. See In re Melville Corp., supra.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
7
or that the public is familiar with the use of the marks.10
Moreover, while third-party registrations may be competent to
establish, like dictionary definitions, that a term common to the
marks involved in a proceeding is weak in the sense that it has a
normally understood and well known meaning,11 we agree with the
Examining Attorney that the evidence furnished by applicant
relates to "marks that are distinctly different and/or [to]
services that are unrelated". In consequence thereof, the term
"VISION" has not been demonstrated to be weak in the fields of
offering mutual funds and money market investments, underwriting
insurance or rendering investment management.12
Turning next to consideration of the respective
services, applicant argues that its financial services are
specifically limited to the offering of mutual and money market
funds and thus do not involve either insurance underwriting or
investment management advice. Applicant urges, in addition, that
the coexistence of the two cited registrations "for different

10 See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973); In re Hub Distributing, Inc.,
218 USPQ 284, 285 (TTAB 1983); and National Aeronautics & Space
Administration v. Record Chemical Co., Inc., 185 USPQ 563, 567 (TTAB
1975).
11 See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693, 694-95 (CCPA 1976); and American Hospital Supply Corp. v.
Air Products & Chemicals, Inc., 194 USPQ 340, 343 (TTAB 1977).
12 Applicant also insists that "[r]egistrants' VISION marks are
clearly not famous marks" and that, "[a]s a result, these marks are
not likely to be widely recognized by the public and are not afforded
the broader degree of protection often afforded to famous marks."
However, inasmuch as there is simply no evidence as to whether
registrants' marks are famous, such a factor has bearing on the
issues of likelihood of confusion herein.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
8
services within the financial services arena" demonstrates that
"the Trademark Office, itself, has already recognized that
registration of Applicant's mark is appropriate."
The Examining Attorney contends, however, that
"[i]nsurance and financial services are related and [that the
same] companies offer both services" under the same marks. In
support thereof, the Examining Attorney has made of record copies
of several use-based registrations of third-party marks which
broadly list, in each instance, various insurance underwriting
services, on the one hand, and investment advisory services,
financial services, investment counseling and trust management
services, investment management services, and/or financial and
investment consulting services, on the other hand.13 The
Examining Attorney also relies upon copies of pages from a yellow
pages directory which, under the heading of "INSURANCE," list a
few insurance companies that advertise both insurance policies
and either annuities or financial services. While conceding that
such classified ads "do not specifically show money market or
mutual fund investment services advertised with insurance
services," the Examining Attorney nevertheless asserts that "they

13 The most pertinent of these is a single registration which sets
forth "insurance services; namely, underwriting life, health,
annuity, property and casualty insurance; [and] financial services;
namely, the sale of mutual funds, money market funds, pension plans
and IRA plans". It is settled that although use-based third-party
registrations are not evidence that the different marks shown therein
are presently in use or that the public is familiar with them, they
nevertheless have some probative value to the extent that they serve
to suggest that the services or goods listed therein are of a kind
which may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Ser. No. 74/575,732 and
Ser. No. 74/575,733
9
show the close tie between insurance and financial services and
that customers are use[d] to seeing the two services offered
together." Finally, with respect to applicant's argument that
the coexistence of the two cited registrations should similarly
entitle it to registration of its marks, the Examining Attorney
insists that because the reasons for such a situation occurring
are not known, "the actions of another examining attorney are not
binding" on the issues of likelihood of confusion herein.
Taking this last contention first, it is true that the
file history of the most recent of the cited registrations (like
that of the earlier one) is not of record. It is also the case
that, as a general proposition, the issuance of such registration
over the other cited registration is not determinative of the
issue of likelihood of confusion herein since prior
determinations by other Examining Attorneys have no precedential
effect and that each case must, instead, be resolved on its own
merits.14 Nevertheless, in the appeals before us, it is plain
that the coexistence of the cited registrations is due primarily,
if not exclusively, to the specifically stated exclusion of all
forms of insurance services, including underwriting, from the
investment management services listed in the most recent of the
cited registrations. In view thereof, it was determined that
contemporaneous use of the identical marks "VISION" for
underwriting insurance services and "VISION" for financial

14 See, e.g., In re Citibank, N.A., 225 USPQ 612, 616 (TTAB 1985) and
In re Hunter Publishing Co., 204 USPQ 957, 961 (TTAB 1979).
Ser. No. 74/575,732 and
Ser. No. 74/575,733
10
services consisting of investment management services other than
insurance would not be likely to cause confusion.
Similarly, in these appeals, the evidentiary record
furnished by the Examining Attorney is not sufficiently probative
to lead us to conclude that contemporaneous use of the mark
"VISION" by one registrant for underwriting insurance services
and applicant's "VISION" marks for its financial services of
offering mutual funds and money market investments is likely to
cause confusion. The Examining Attorney concedes, as noted
previously, that the yellow pages excerpts "do not specifically
show money market or mutual fund investment services advertised
with insurance services". Thus, contrary to the Examining
Attorney's assertion, the excerpts simply do not "show the close
tie between insurance and financial services and that customers
are use[d] to seeing the two services offered together."
Furthermore, although such excerpts indicate that some insurance
underwriters also offer annuities, which are admittedly a type of
financial investment, only one of the third-party registrations
introduced by the Examining Attorney specifically sets forth both
insurance underwriting services, including annuities, and
financial services which involve the sale of mutual funds and
money market funds. In light of this meager showing, we are not
persuaded that the purchasing public would expect that providers
of insurance underwriting services would also offer mutual funds
and money market investments, or vice versa, even when such
"financial services" are offered by different entities under
marks which consist of or prominently feature the word
Ser. No. 74/575,732 and
Ser. No. 74/575,733
11
"VISION".15 Confusion, in such circumstances, has therefore not
been demonstrated to be likely to occur.
We reach a different conclusion, however, with respect
to contemporaneous use of the cited mark "VISION" for investment
management services other than insurance and applicant's "VISION"
marks for its financial services of offering mutual funds and
money market investments. It is settled, as the Examining
Attorney correctly observes, that services or goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the services or goods are related in some manner and/or that
the circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same provider or
producer.16 Moreover, it is also well established that the issue
of likelihood of confusion must be determined in light of the
services or goods set forth in the involved application and cited
registration and, in the absence of any specific limitations

15 The mere fact, however, that a term such as "financial services"
may be found which encompasses both a registrant's and an applicant's
services or goods does not mean that customers will view the
particular services or goods as related in the sense that they will
assume that they emanate from or are associated with a common source.
See, e.g., General Electric Co. v. Graham Magnetics Inc., 197 USPQ
690, 694 (TTAB 1977) and Harvey Hubbell Inc. v. Tokyo Seimitsu Co.,
Ltd., 188 USPQ 517, 520 (TTAB 1975).
16 See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96
(TTAB 1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Ser. No. 74/575,732 and
Ser. No. 74/575,733
12
therein, on the basis of all normal and usual channels of trade
and methods of distribution for such services or goods.17
Here, it is common knowledge that providers of
financial investment services, such as securities brokers, offer
recommendations or advice about mutual funds and money market
investments and also sell money market investments and other
mutual funds, including those of their own creation, in
connection with the rendering of investment management services
to their clients. Given this close relationship, customers who
are familiar or otherwise acquainted with investment management
services (other than insurance) which are sold under the mark
"VISION" would be likely to believe, upon encountering the mutual
funds and money market investments provided by applicant under
its "VISION" marks, that the respective services emanate from or
are affiliated or associated with the same source. While
undoubtedly, as applicant argues, actual and prospective
customers for investment management services, mutual funds and
money market investments are careful, deliberate and
discriminating in their purchasing decisions given the expense
typically associated therewith, the fact that such consumers may
be knowledgeable or sophisticated in the investment management
and mutual fund securities fields does not necessarily mean that

17 See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1993); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Ser. No. 74/575,732 and
Ser. No. 74/575,733
13
they are immune from confusion relating to source or
sponsorship.18
Applicant, nevertheless, further insists that "despite
contemporaneous use ... for at least three years, Applicant knows
of no instance of actual confusion between the use of its mark[s]
and those of the Registrants," including the cited "VISION" mark
for investment management services other than insurance. The
record, however, contains no evidence as to the nature and extent
of the alleged contemporaneous use of the respective "VISION"
marks in the same geographical areas. The asserted absence of
any instances of actual confusion, therefore, is not a meaningful
factor.19
Decision: In each instance, the refusal under Section
2(d) on the basis of the registration for the mark "VISION" for
"investment management services other than insurance" is
affirmed, but the refusal under Section 2(d) in light of the
registration for the mark "VISION" for "underwriting insurance
services" is reversed.
R. F. Cissel
E. W. Hanak

18 See, e.g., Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ
289, 292 (CCPA 1962); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983).
19 Compare Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992) with In re General Motors Corp., 23 USPQ2d 1465, 1470-71
(TTAB 1992).
Ser. No. 74/575,732 and
Ser. No. 74/575,733
14
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board