Align Financial Partners LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: December 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Align Financial Partners LLC

Serial No. 87121417
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Cheryl L. Burbach of Hovey Williams LLP
for Align Financial Partners LLC.

Tara L. Bhupathi, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.

_____

Before Zervas, Gorowitz and Heasley
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

Align Financial Partners LLC (“Applicant”) seeks registration on the Principal

Register of the mark ENGAGE ADVISORS (in standard characters, with

“ADVISORS” disclaimed) for

Financial investment analysis and stock research;
Financial investment brokerage; Financial planning and
investment advisory services; Investment advisory
services; Investment consultancy; Investment
management; Investment of funds; Investment of funds for
Serial No. 87121417

others; Providing investors with financial information, in
International Class 36.1

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it

so resembles the registered mark INGAGE (in stylized form), as set forth below

for

Provision of financial information to companies and
investors, primarily stock market listed companies,
institutional investors and sovereign wealth funds;
provision of financial information to companies and
investors, primarily stock market listed companies,
institutional investors and sovereign wealth funds by
means of a webcast or webinar” in International Class 36.2

that it is likely to cause confusion or mistake or to deceive.3

When the refusal was made final, Applicant appealed and requested

reconsideration. After the Examining Attorney denied the request for

reconsideration, the appeal was resumed. We affirm the refusal to register.

1Application Serial No. 87121417 was filed on July 29, 2016, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of bona fide intent to
use the mark.
2 Registration No. 4985734 issued on June 28, 2016.
3Registration No. 4119023 was also cited as a bar to registration. The refusal was withdrawn
in the May 15, 2017 Office Action.

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Serial No. 87121417

I. Evidentiary Issues.

Applicant attached approximately 100 pages of evidence to its appeal brief. “The

record in [an] application should be complete prior to the filing of an appeal. Evidence

should not be filed with the Board after the filing of a notice of appeal.” Trademark

Rule 2.142(d); 37 C.F.R. §2.142(d). Thus, to the extent that any of the evidence was

not introduced during prosecution, it has not been considered.

II. Likelihood of Confusion.

Our determination of the issue of likelihood of confusion is based on an analysis

of all of 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 Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

In any likelihood of confusion analysis, two key considerations are the similarities

between the marks and the similarities between the goods 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 Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

A. Similarity of the services and channels of trade.

We start our analysis with the second and third du Pont factors, the similarities

or dissimilarities of the services and the channels of trade. We base our determination

under these factors on the services as they are identified in the registration and

application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

USPQ2d 1157, 1162 (Fed. Cir. 2014). See also Octocom Systems, Inc. v. Houston

Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

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Serial No. 87121417

As identified, Applicant’s services include “providing investors with financial

information.” The services in the cited registration are identified, in part, as

“provision of financial information to companies and investors, primarily stock

market listed companies, institutional investors and sovereign wealth funds.”

Applicant contends that “[w]hile some of the services connected with the cited

mark and the products associated with the present application all fit within the

broadly – and loosely – defined field of financial services, they are still very, very

different services.” Appeal Brief, 5 TTABVUE 10. To that end, Applicant argues that

the “description immediately identifies that Applicant’s services are being provided

to individual clients or small company clients …” id. at 10, while “registrant’s services

… are directed to stock market listed companies, institutional investors and

sovereign wealth funds. Their services are not investment services but are

information services.” Id. at 11.

Neither the application nor the registration limit the respective services to any

specific class of purchasers or travels of trade. To the contrary, Applicant’s

identification does not provide any information about its purchasers or channels of

trade, and while Registrant’s identification indicates that its services are provided

“primarily” to stock market listed companies, institutional investors and sovereign

wealth funds, the services are not limited to these investors/investments. As stated

above, “when determining the relationship between services, 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.” Stone Lion Capital Partners 110 USPQ2d at

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Serial No. 87121417

1162. “This is so 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 to

which sales of the goods are directed.” Id.

Applicant’s services that are identified as “providing investors with financial

information” encompass the cited services identified as “provision of financial

information to companies and investors.” As such, Applicant’s services are in-part

identical to the services in the cited registration.4

Further, to the extent the services are legally identical, they are presumed to

travel in the same channels of trade, and to be sold to the same class of purchasers.

See Stone Lion Capital Partners, 110 USPQ2d at 1159; In re Smith & Mehaffey, 31

USPQ2d 1531, 1532 (TTAB 1994). Thus, the services are in-part identical and

deemed to travel in the same channels of trade and sold to the same class of

purchaser.

Accordingly, the second and third du Pont factors favor a finding of likelihood of

confusion.

B. Sophistication of customers.

Applicant argues that “the ordinary purchasers of both parties’ services are likely

to be ‘discriminating purchasers’ who exercise heightened care.” Appeal Brief, 5

4If we find there is a likelihood of confusion between Applicant’s mark and the cited
mark, the finding applies to all of the services in the application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any item that comes
within the identification of goods in the application)

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Serial No. 87121417

TTABVUE 15. However, the services identified in both the application and the cited

registration include “the provision of investors with financial information” and there

is no limitation regarding who the investors may be. As such, the Board must consider

all potential investors for the recited services, including
ordinary consumers seeking to invest in services with no
minimum investment requirement. Although the services
recited in the application also encompass sophisticated
investors, Board precedent requires the decision to be
based “on the least sophisticated potential purchasers.”
Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100
U.S.P.Q.2d 1584, 1600 (T.T.A.B. 2011), judgment set aside
on other grounds, 2014 WL 343267 (T.T.A.B. Jan. 22,
2014); cf. Ford Motor Co. v. Summit Motor Prods., Inc., 930
F.2d 277, 293 [18 USPQ2d 1417] (3d Cir. 1991) (stating, in
the context of a trademark infringement case, that “when
a buyer class is mixed, the standard of care to be exercised
by the reasonably prudent purchaser will be equal to that
of the least sophisticated consumer in the class”).
Substantial evidence supports the Board’s finding that
such ordinary consumers “will exercise care when making
financial decisions,” but “are not immune from source
confusion where similar marks are used in connection with
related services.

Stone Lion Capital Partners, 110 USPQ2d at 1163-64.

Accordingly, the fourth du Pont factor either favors a finding of likelihood of

confusion or can be considered neutral.

C. Strength of the marks.

Applicant contends that “the Patent and Trademark Office records show

registrations coexisting on the Principal Register for ‘engage’ or ‘ingage’ marks which

cover financial related products or products. Appeal Brief, 5 TTABVUE 16. Based on

the purported records, Applicant argues that “[t]he Trademark Office likely

recognized [the] difference between ‘ingage’ and ‘engage’ even in instances when the

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Serial No. 87121417

‘in’ portion of ‘ingage’ is not purposefully separated into a separate word.” Id. at 19.

In other words, Applicant contends that because there are a number of registrations

covering financial products containing either the word “INGAGE” or “ENGAGE,” that

the terms are diluted and thus, there is no likelihood of confusion for its mark

ENGAGE ADVISORS for services, i.e., “providing investors with financial

information” and for services, i.e., “provision of financial information

to companies and investors, primarily stock market listed companies, institutional

investors and sovereign wealth funds.”

However, Applicant only submitted six registrations, one of which is cancelled,

and one pending application. The application is not evidence of anything except that

it was filed. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007);

Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB

2003). The cancelled registration is not probative. See Action Temporary Servs. Inc.

v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]

cancelled registration does not provide constructive notice of anything”); Time Warner

Entertainment Co. v. Jones, 65 USPQ2d 1650, 1654 n.6 (TTAB 2002).

The five live third-party registrations submitted by Applicant are of little

probative value to show a crowded field and relative weakness. See In re Mighty Leaf

Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); AMF Inc. v. Am. Leisure

Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty

Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). Moreover, third-party registrations are

generally entitled to little weight in determining the strength of a mark because they

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Serial No. 87121417

are not evidence that the mark is in actual use in the marketplace or that consumers

have been exposed to the mark. 5 See Fort Howard Paper Co. v. Kimberly-Clark Corp.,

221 USPQ 732 (TTAB 1984); and In re Hub Distributing Inc., 218 USPQ 284 (TTAB

1983). Cf. Juice Generation, Inc. v. GS Enters. LLC, 740 F.3d 1334, 115 USPQ 2d

1671, 1675 (Fed Cir. 2015) (record of 25 registered or unregistered marks in the food

service industry that included the phrase “PEACE LOVE” evidenced that the phrase

was weak). Further, our determination would not change if we had found the mark

to be weak because even a weak mark is entitled to protection against the registration

of a similar mark for closely related goods or services. See King Candy Co. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).

D. Similarity of the marks.

In comparing the marks we must consider their 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). “The

proper test is not a side-by-side comparison of the marks, but instead ‘whether the

marks are sufficiently similar in terms of their commercial impression’ such that

persons who encounter the marks would be likely to assume a connection between

the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101

USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).

5Similarly the eight registrations for INGAGE and ENGAGE formative marks for unrelated
goods and services do not affect the strength of the cited mark.
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Serial No. 87121417

Applicant states that “[t]he marks are similar, but not identical.” Appeal Brief, 5

TTABVUE 8. Applicant explains that

[t]he cited mark is comprised of what could arguably be
seen as a fanciful spelling of the word ‘engage.’ However,
the fanciful nature of the spelling itself, combined with the
stylization of the mark, creates a connotation of an
altogether different phrase.

Id.

To find the marks similar, it is not necessary that the marks be identical.

Moreover, when marks appear on legally identical services, the degree of similarity

necessary to support a conclusion of likely confusion declines. Century 21 Real Estate

Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).

While “the similarity or dissimilarity of the marks is determined based on 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 a consideration of the marks in their entireties.” In

re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). It is well-

settled that descriptive matter may have less significance in likelihood of confusion

determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,

1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the

‘descriptive component of a mark may be given little weight in reaching a conclusion

on the likelihood of confusion.’”) (quoting Nat’l Data Corp., 224 USPQ at 752). See

also Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir.

1997);In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)

(finding JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the

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Serial No. 87121417

commercial significance of the descriptive and otherwise non-dominant terms JOSE,

GOLD and ALE are properly discounted).

Applicant’s mark includes the disclaimed descriptive term “advisor.” An “advisor”

is “a person who gives advice especially professionally.”6 Applicant’s services include

“providing investors with financial information.” Thus, the term “advisor” is

descriptive of a characteristic of Applicant’s services and is given less weight in a

determination of the similarity of the marks.

The dominant part of Applicant’s mark is the distinctive first word, ENGAGE. See

Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is

often the first part of a mark which is most likely to be impressed upon the mind of a

purchaser and remembered”). Applicant concedes that “the cited mark [INGAGE in

stylized format] is comprised of what could arguably be seen as a fanciful spelling of

the word ‘engage.’” Appeal Brief, 5 TTABVUE 8. However, as discussed above,

Applicant contends that “the nature of the spelling itself, combined with the

stylization of the mark, creates a connotation of an altogether different phrase,” id.

which has a different pronunciation and meaning. Applicant argues that the cited

mark is meant to be pronounced IN GAGE, not ENGAGE. Id. It has long been held

that “there is no correct pronunciation of a trademark, and consumers may pronounce

6 We take judicial notice of the definition of advisor from the Merriam-Webster On-line
Dictionary/Thesaurus, advisor.www.merriam-webster.com/thesaurus. The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format, In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d 823 F.3d 594,
118 USPQ2d 1632 (Fed. Cir. 2016)

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Serial No. 87121417

a mark differently than intended by the brand owner.” In re Viterra Inc., 671 F.3d

1358, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); see also, Centraz Indus. Inc. v.

Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there

is no correct pronunciation of a trademark” and finding ISHINE (stylized) and ICE

SHINE, both for floor finishing preparations, confusingly similar).

We find that the dominant elements of both marks are similar, if not identical in

sound. Similarity in sound alone may be sufficient to find marks similar in a

determination of likelihood of confusion. See Interstate Brands Corp. v. McKee Foods

Corp., 53 USPQ2d 1910, 1913 (TTAB 2000); Krim-Ko Corp. v. Coca-Cola Co ., 390

F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (confusion likely in view of aural

similarities of the marks VEEP and BEEP).

Applicant argues that the cited mark’s stylization creates the impression of “IN”

separate and apart from the word “GAGE,” differentiating the cited mark from the

term ENGAGE. Since Applicant’s mark is in standard characters, this argument is

inapposite. As our primary reviewing court affirmed in Viterra, “a standard character

mark is not limited to any particular font, size, style, or color.” Viterra, 101 USPQ2d

at 1909, citing Squirtco v. Tomy Corp., 697 F2d 1038, 216 USPQ 937, 939 (Fed. Cir.

1983) (Likelihood of confusion between registered mark SQUIRT stylized with design

for balloons and applicant’s mark SQUIRT SQUAD for floating water

toys). Thus, the word ENGAGE in a registration for the mark ENGAGE ADVISORS

could be depicted in the same format as that in the cited registration, engage.
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Serial No. 87121417

Further, the addition of the descriptive word ADVISORS does not sufficiently

distinguish the marks.

Applicant also argues that the marks have different connotations because

viewing and pronouncing the ingage mark, as is obviously
intended by the registrant, it becomes “in gage.” So the
connotation could be “in promise or pledge” of providing
financial information, or of accepting a challenge to provide
exceptional care of services. The “in” portion of the mark if
borne out by the registrant’s website … which is replete
with instances of words beginning with “in”: intuitive,
innovative, increasingly clear, financial institutions,
invaluable insights, investor, intention, and interaction.

Appeal Brief, 5 TTABVUE 8. This is similar to the argument the applicant made in

the Viterra case, in which Viterra argued that “its XCEED mark will be construed by

customers as ‘exceeding’ their expectations, whereas the X-Seed Mark is subject to a

variety of meanings, including the roman numeral for ten, an unknown quantity, or

an abbreviation for ‘cross.’” Viterra, 101 USPQ2d at 1912. The Court concurred with

the Board’s finding that “it is reasonable that purchasers will perceive registrant’s

mark in a similar manner, that is purchasers may give the same meaning of

superiority to registrant’s mark.” Id.

Taking into consideration both the identical nature of some of the services and the

similarity in the sound of the marks, we find that the marks are more similar than

not and that the first du Pont factor favors a finding of likelihood of confusion.

III. Conclusion.

Having considered all the evidence and arguments on the relevant du Pont

factors, whether discussed herein or not, we find that Applicant’s mark ENGAGE

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Serial No. 87121417

ADVISORS for “financial investment analysis and stock research; financial

investment brokerage; financial planning and investment advisory services;

investment advisory services; investment consultancy; investment management;

investment of funds; investment of funds for others; providing investors with

financial information” is likely to cause confusion with the cited registered mark

INGAGE in stylized form for “provision of financial information to companies and

investors, primarily stock market listed companies, institutional investors and

sovereign wealth funds; provision of financial information to companies and

investors, primarily stock market listed companies, institutional investors and

sovereign wealth funds by means of a webcast or webinar”.

Decision: The refusal to register Applicant’s mark ENGAGE ADVISORS is

affirmed.

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