XE Capital Management, LLC

Trademark Trial and Appeal Board

Dec 20, 2007

No. 78509295 (T.T.A.B. Dec. 20, 2007)

Hearing: Mailed:
April 24, 2007 December 20, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re XE Capital Management, LLC
________

Serial No. 78509295
_______

Judith L. Church, S. Zev Parnass and David Bernstein of
Debevoise & Plimpton LLP for XE Capital Management, LLC.

Daniel J. Russell1, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

XE Capital Management, LLC has filed an application to
register on the Principal Register the mark XE SELECT, in
standard character form, for services which were ultimately
identified as “financial services for sophisticated
investors, namely, offering hedge fund and fund of funds

1 The above application originally was examined by another
examining attorney, but subsequently was reassigned to the
attorney whose name is shown to prepare the appeal brief and who
participated in the oral hearing.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78509295
2
investment products.”2 In response to a request by the
examining attorney, applicant has disclaimed the term
SELECT.
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 the
identified services, so resembles the mark XE, in standard
character form, previously registered for “currency
exchange services through a global communications network”3
as to be likely to cause confusion, mistake, or deception.
Applicant and the examining attorney filed briefs and
an oral hearing was held.
We reverse the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the

2 Application Serial No. 78509205, filed November 1, 2004, and
alleging April 1, 2004 as the date of first use of the mark
anywhere and in commerce.

3 Registration No. 2612105, issued August 27, 2002.
Ser No. 78509295
3
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Another key factor in this case concerns
the conditions under which and buyers to whom sales of the
services at issue are made.
Applicant, in urging reversal of the refusal to
register, argues that consumers will not believe that the
services offered by the parties under their respective
marks emanate from the same source because the services are
different, applicant’s consumers are sophisticated, the
decision to purchase applicant’s services is not made on
impulse, the normal trade channels do not overlap and there
is no evidence that the registrant intends to expand into
applicant’s type of financial services.
Applicant has supported its position with the
declarations, and accompanying exhibits, of Terence S.
Leighton, a managing director of applicant, and Zev
Parnass, one of applicant’s attorneys.
We first consider the du Pont factor of similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In re E. I. du Pont de Nemours & Co., supra. We note that
Ser No. 78509295
4
applicant does not contend that its mark is dissimilar to
that of registrant. Indeed, applicant states that the
issue of similarity of the marks “is not relevant to this
appeal.” (Reply brief at p. 1). Applicant’s standard
character form mark XE SELECT is substantially similar in
appearance, sound, connotation and commercial impression to
the cited registered mark, XE, also in standard character
form. The dominant portion of applicant’s mark is the term
“XE” because the term “SELECT” is descriptive when used in
connection with financial services, as evidenced by the
disclaimer thereof and by the third-party registrations
[submitted by the examining attorney with his Office action
issued June 7, 2005] showing that it is common practice to
disclaim the term “SELECT” when it appears in marks for
financial services. Although likelihood of confusion must
be determined by analyzing the marks in their entireties,
“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 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).
Ser No. 78509295
5
Because the dominant portion of applicant’s mark is
identical to the registered mark, the factor of similarity
of the marks favors a finding of likelihood of confusion.
We next turn to a consideration of the similarity or
dissimilarity of the services. It is well settled that the
question of likelihood of confusion must be determined
based on an analysis of the services recited in applicant’s
application vis-à-vis the services recited in the
registration. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d
1715 (TTAB 1991). Further, it is a general rule that the
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is enough that the services are related in some manner
or that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which would give rise, because
of the marks used therewith, 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 (TTAB 1991), and the cases
cited therein.
Ser No. 78509295
6
We find in this case, however, that applicant’s
services are unrelated to the registrant’s services for
purposes of the second du Pont factor. Applicant’s
services are recited as “financial services for
sophisticated investors, namely, offering hedge fund and
fund of funds investment products.” The registrant’s
services are recited as “currency exchange services through
a global communications network.” Applicant argues that
the services offered under its mark are distinctly
different than those offered under the registered mark.
The examining attorney, on the other hand, contends
that the respective services are similar because they are
financial in nature and involve international markets. The
examining attorney specifically argues that:
[d]ue to their dependence on international
markets, the services are complementary in that
consumers could use the services together. For
instance, as applicant’s hedge fund services
involve international speculation, they
presumably require information about markets
and currency rates in other countries.
Likewise, registrant’s services involve
international currency rate information. Thus,
a consumer could use registrant’s foreign
currency exchange service to find currency
information to better make decisions before
using applicant’s hedge fund services or follow
the performance of applicant’s hedge funds.

(Applicant’s brief at unnumbered pp. 7-8).

Ser No. 78509295
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In support of this position, the examining attorney
made of record excerpts of web pages and articles retrieved
from a search of the Google search engine for the words
“hedge fund currency exchange”; excerpts from the website
http://broker.compassweb.com, an online fund glossary; and
copies from the X-Search database of the United States
Patent and Trademark Office of a third-party application
and a third-party registration that purportedly demonstrate
that consumers are familiar with entities offering
applicant’s type of services and registrant’s type of
services under the same mark.4
Applicant submitted a copy of Registration No. 2982359
for the following services:
financial investment in the field of
exchange-traded futures, cash instruments,
cash commodities and currencies; investment
advice, investment consultation, and
investment management; funds advice, namely,
mutual fund and hedge fund investment
advice; funds investment consultation, funds
investment for others, funds investment
management for others; financial portfolio

4 Although the examining attorney indicated that copies of two
registrations were submitted, only one copy was of a
registration; the other was for an application that has since
matured into a registration. However, the recently issued
registration has little, if any, probative value because it is
based on a foreign registration, and not use in commerce. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993); In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998).

Ser No. 78509295
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management; financial services in the nature
of an investment security; commodity and
futures investment advice; commodity trading
for others; currency exchange and advice.

We find the single third-party registration cited by the
examining attorney to be insufficient to establish that
hedge fund investment services and currency exchange
services are related.
As regards the website excerpts, they do not show even
one instance where hedge fund investment services and
currency exchange services emanate from a single source, or
are in any way promoted together. Rather, they show only
that hedge funds may invest in foreign currency as part of
their overall investment strategy.
Simply put, there is insufficient evidence of record
to support the examining attorney’s contention that
applicant’s services are related to registrant’s
services. Further, applicant’s financial services, as
identified, are not so closely related to registrant’s
recited currency exchange services that, on the face
thereof, they are complementary or that a viable
relationship exists between.
Moreover, we are not persuaded that applicant’s
services are within the normal field of expansion for
registrant’s recited services. As pointed out by
Ser No. 78509295
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applicant, there is nothing in the record to support a
finding that purchasers are likely to believe that
registrant will expand its services to encompass the
services identified in the application at issue. Cf. In re
General Motors Corp., 196 USPQ 574 (TTAB 1977).
Accordingly, we find that the specific services
recited in the application and the cited registration are
not sufficiently related to warrant a finding of likelihood
of confusion.
We next consider the du Pont factor of similarity or
dissimilarity of the trade channels and classes of
purchasers. Applicant argues that there is no reasonable
basis to conclude that the same consumers will encounter
the respective services offered by it and the registrant.
Specifically, applicant asserts that it “does not transact
business on the Internet, relying instead on personal
contacts with investors or brokers to provide specialized
investment services and advice.”5 In addition, applicant
argues that its customers are highly sophisticated and thus
exercise a heightened degree of care when evaluating the
services before making purchasing decisions.

5 Leighton Dec at ¶ 14.

Ser No. 78509295
10
The examining attorney, on the other hand, argues that
because applicant’s recitation of services places no limit
on the channels of trade, applicant’s channels of trade
would include the use of global communications networks,
i.e., the Internet. The examining attorney also argues
that as registrant’s recitation of services contains no
restrictive language relating to the class of purchasers,
it must be presumed that the registrant’s services target
all classes of purchasers, including applicant’s target
class, “sophisticated investors.” The examining attorney
thus maintains that “there is a reasonable basis for
assuming the same consumers will encounter both
registrant’s and applicant’s services as the channels of
trade and class of purchasers overlap.” (Examining
attorney’s brief at p. 9).
As discussed more fully infra, applicant’s clients are
“qualified purchasers” under the Investment Company Act of
1940. It is inconceivable that a “qualified purchaser”
would invest in a hedge fund through the Internet.
However, as the examining attorney correctly points out,
even sophisticated investors may use currency exchange
services, and therefore the services of the applicant and
the registrant may overlap.
Ser No. 78509295
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The fact that sophisticated purchasers are the only
connection between the services of the applicant and the
registrant weighs against a finding of likelihood of
confusion. As a general rule, the fact that purchasers are
sophisticated or knowledgeable in a particular field does
not necessarily mean that they are immune from source
confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988);
In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
However, circumstances suggesting care in purchasing may
tend to minimize likelihood of confusion. As our principal
reviewing court has pointed out, “sophistication is
important and often dispositive because sophisticated end-
users may be expected to exercise greater care.”
Electronic Design & Sales Inc. v. Electronic Date Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992).
In this case, we note that applicant’s purchasers, i.e.,
its “sophisticated investors,” are “highly sophisticated
organizations and individuals seeking complex investment
vehicles for investments averaging several million dollars
each.” Applicant requires these U.S. investment management
clients to be “qualified purchasers” under the Investment
Company Act of 1940 (that is, generally, individuals or
entities with respective investment portfolios of at least
$5 million or $25 million). (Leighton dec. at ¶ 8). Under
Ser No. 78509295
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these circumstances, we find that the purchasers of
applicant’s services are extremely knowledgeable and
careful in their purchasing decisions. Moreover, given the
expense involved, we agree with applicant that its
investment services are not “impulse” buys by consumers,
but rather are carefully considered decisions requiring
significant deliberation. (Applicant’s brief at p. 9 and
Leighton dec. at ¶ 10).
An additional argument made by applicant requires
comment. Specifically, applicant argues that “[t]he mark
‘XE’ is not unique to the Internet currency exchange
provided by XE Corporation.” To the extent that applicant
is arguing that the registered mark is weak and entitled to
a narrow scope of protection, such argument is not well
taken. In this regard, applicant submitted copies from the
TESS database of the United States Patent and Trademark
Office of six used-based, third-party registrations for
marks consisting of the term “XE” alone or in combination
with other matter. While these registrations may be used
to demonstrate that a portion of a mark is suggestive or
descriptive, they are not evidence that the marks shown
therein are in use or that the public is aware of them.
See AMF Incorporated v. American Leisure Products, Inc.,
177 USPQ 268, 269 (CCPA 1973)[“little weight is to be given
Ser No. 78509295
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such registrations in evaluating whether there is
likelihood of confusion.”]. Moreover, our review of such
registrations reveals that one has been cancelled and the
other five are for goods unrelated to the services involved
herein. As such, they are entitled to little probative
value.
As discussed above, we find that the evidence of
record does not support a finding that there is a
likelihood of confusion. While the marks are substantially
similar, the services, on their face, are distinctly
different, and applicant’s services clearly are very
expensive and would be bought only by highly knowledgeable,
discriminating and sophisticated purchasers after thorough
deliberation. We therefore conclude that purchasers of
registrant’s currency exchange services through a global
communications network, as provided under its XE mark would
not be likely to believe, if they encounter applicant’s
financial services for sophisticated investors, namely,
offering hedge fund and fund of funds investment products,
which are rendered under its XE SELECT mark, that the
respective services emanate from, or are sponsored by or
associated with, the same source.

Decision: The refusal under Section 2(d) is reversed.