Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA569842
`ESTTA Tracking number:
`11/08/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85622771
`Lavien Group, LLC
`LAVIEN
`L. DONALD PRUTZMAN
`Tannenbaum Helpern Syracuse & Hirschtritt LLP
`900 3RD AVE
`NEW YORK, NY 10022-4728
`UNITED STATES
`prutzman@thsh.com
`Appeal Brief
`Applicant's Brief.pdf(502722 bytes )
`L. Donald Prutzman
`prutzman@thsh.com
`/LD Prutzman/
`11/08/2013
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant: Lavien Group, LLC
`
`Mark: LAVIEN
`
`Examining Attorney: Catherine L. Roehl
`
`Serial No.: 85/622771
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`2
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`Law Office: 105
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`Filing Date: May 11, 2012
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`
`Madison East, Concourse Level Room C 55
`600 Dulany Street
`Alexandria, Virginia 22314
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`EX PARTE APPEAL
`
`APPLICANTS BRIEF
`
`L. Donald Prutzman
`
`TANNENBAUM HELPERN
`
`SYRACUSE & HIRSCHTRITT LLP
`900 Third Avenue
`
`New York, New York 10022
`(212) 508-6700
`Attorneys for Applicant
`
`

`
`TABLE OF CONTENTS
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`filgé
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`TABLE OF AUTHORITIES ........................................................................................................ .. 3
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`PRELIMINARY STATEMENT .................................................................................................. .. 5
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`DESCRIPTION OF THE RECORD ............................................................................................ .. 6
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`A. Prosecution History........................................................................................................... .. 6
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`B. The First Office Action ..................................................................................................... .. 7
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`C. Applicant’s Response........................................................................................................ .. 7
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`‘
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`D. The Second Office Action ................................................................................................ .. 8
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`ARGUMENT ................................................................................................................................ .. 9
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`A. Applicant’s and Registrant's Marks are not Confusingly Similar. ................................... .. 9
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`1. The Marks are Not Phonetic Equivalents. .................................................................. .. 9
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`2. The Marks have Different Connotations and Commercial Impressions................... .. 13
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`3. Arguable Relatedness of Applicant’s and Registrant’s Services does not Justify a
`Finding of Likelihood of Confusion between Applicant’s and Registrant’s Marks 13
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`B. Sophistication of the Relevant Consumers Makes Confusion Highly Unlikely ............. .. 14
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`CONCLUSION ........................................................................................................................... .. l8
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`

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`TABLE OF AUTHORITIES
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`Page
`
`Cases
`
`Astra Pharmaceutical Prods. v. Beckman Instruments,
`718 F.2d 120, 220 U.S.P.Q. 786 (1st Cir. 1983) .................................................................... .. 15
`
`Beneficial Corp. v. Beneficial Capital Corp.,
`529 F. Supp. 445 (S.D.N.Y. 1982) ....................................................................................... .. 16
`
`Centraz Indus. Inc. v. Spartan Chem. Co.,
`77 U.S.P.Q.2d 1698 (T.T.A.B. 2006) ................................................................................... .. 11
`
`Elec. Design & Sales, Inc. v. Elec. Data Systems Corp,
`954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) ...................................................... .. 14, 15
`
`Franklin Res, Inc. v. Franklin Credit Mgr. Corp.,
`988 F. Supp. 322 (S.D.N.Y. 1997) ....................................................................................... .. 16
`
`Haven Capital Mgt. Inc. v. Havens Advisors, L.L.C.,
`965 F. Supp. 528 (S.D.N.Y. 1997), afi‘"’d, 159 F.3d 1346 (2d Cir. 1998) ............................. .. 16
`
`Imagineering Inc. v. Van Klassens Inc.,
`53 F.3d 1260, 34 U.S.P.Q.2d 1526 (Fed. Cir. 1995) ............................................................ .. 16
`
`In re Davey Prods. Pty Ltd,
`92 U.S.P.Q.2d 1198 (T.T.A.B. 2009) ................................................................................... .. 14
`
`In re General Elec. C0,,
`304 F.2d 688, 134 U.S.P.Q. 190 (C.C.P.A. 1962) .......................................................... .. 10, 12
`
`In re Homeland Vinyl Prods, Inc.,
`81 U.S.P.Q.2d 1378 (T.T.A.B. 2006). .................................................................................. .. 15
`
`In re I\/'.A.D., Inc.,
`754 F.2d 996, 224 U.S.P.Q. 969 (Fed. Cir. 1985) ............................................................... .. 15
`
`In re Nat ’l Data Corp.,
`753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985). ............................................................. .. 12
`
`In re Toshiba Med. Sys. Corp,
`91 U.S.P.Q.2d 1266 (T.T.A.B. 2009). .................................................................................. .. 14
`
`

`
`In re Viterra Ina,
`671 F.3d 1358, 101 U.S.P.Q.2d 1905 (Fed. Cir. 2012) ........................................................ ..11
`
`Interlego AG v. Abrams/Gentile Entertainment, Inc,
`63 U.S.P.Q. 1862 (T.T.A.B. 2002) ....................................................................................... .. 11
`
`-
`Top Tobacco LP v. N. Ail. Operating Co.,
`101 U.S.P.Q.2d 1163 (T.T.A.B 2011) ................................................................................. .. 17
`
`
`Rules
`
`SEC Securities Act of 1933, Reg. D, Rule 501, 17 CFR 230.501(a) ......................................... .. 15
`
`SEC Securities Act of 1933, Reg. D, Rule 506, 17 CFR 230.506 .............................................. .. 15
`
`

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`PRELINHNARY STATEMENT
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`Applicant Lavien Group, LLC appeals to the Trademark Trial and Appeal Board (the
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`‘‘Board’’) from the Examining Attorney’s March 14, 2013 final refusal to register Applicant’s
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`mark LAVIEN for “Financial services, namely, management and operation of private investment
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`funds commonly known as hedge filnds.” Registration of LAVIEN was 1‘Cfi1S€d under § 2(d) of
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`the Lanham Act on the grounds of likelihood of confusion with Registration No. 3,701,703 for
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`the mark LEVION INVESTMENTS for “financial investment in the field of securities and real
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`5!
`estate. Applicant submits, and demonstrates below, that the Examining Attorney’s refusal to
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`register was erroneous primarily because:
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`0 The Examining Attorney incorrectly determined that LAVIEN and LEVION
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`“are essentially phonetic equivalents” (OAII at 3).
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`In fact,
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`they differ
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`significantly in sound when pronounced as they ordinarily would be in the
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`English language.
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`In reaching her conclusion,
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`the Examining Attorney
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`3
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`distorted and overextended the maxim that “there is no correct pronunciation
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`of a mark because it is impossible to predict how the public will pronounce a
`3!
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`particular mar
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`and postulated that the public would likely mispronounce
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`LAVIEN as LEVION.
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`(OA22 at 4.) The “no correct pronunciation” principle
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`has only been applied to refute arguments that marks are not confusingly
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`similar when “properly” (accordingly to the proponent) pronounced in non-
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`standard or strained ways that the public is unlikely to adopt.
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`It
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`is not
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`1 First Office Action, dated September 6, 2012.
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`2 Second Office Action, dated March 14, 2013.
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`logically or properly applied where, as here, ordinary rules of English vowel
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`sound pronunciation give marks clearly different sounds.
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`0 The Examining Attorney also improperly gave absolutely no consideration to
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`the “sophistication of the customers” du Pont factor. Where, as here, the
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`record indicates that consumers of both Applicant’s and Registrant’s services
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`are making purchasing decisions involving six and seven figure dollar
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`k
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`amounts confusion between LAVIEN and LEVION INVESTMENTS is
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`highly unlikely.
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`In addition, the Examining Attorney erred by dissecting Registrant’s mark and focusing
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`exclusively on the LEVION element to the exclusion of the INVESTMENTS element, and by
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`wrongly concluding that Applicant’s hedge fund management services are sufficiently related to
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`Registrant’s real estate related services to support likelihood of confusion. A proper balancing of
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`all the relevant factors leads to the conclusion that registration of Applicant’s mark should not
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`have been refused under § 2(d) of the Lanharn Act.
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`DESCRIPTION OF THE RECORD
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`A. Prosecution History
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`Applicant applied for the mark LAVIEN for “Financial services, namely, financial
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`fund management” on May 11, 2012. Applicant’s mark was initially refused registration on
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`September 6, 2012 in a non—f1nal Office Action that cited the LEVION INVESTMENTS
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`registration. Applicant responded to that Office Action on March 6, 2013, addressing the
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`Examining Attorney’s refusal to register and narrowing the description of services to “Financial
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`services, namely, management and operation of private investment funds commonly known as
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`hedge funds.” The Examining Attorney issued a final refusal to register in a second Office
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`6
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`Action dated'March 7, 2013. Applicant’s Notice of Appeal was timely filed on September 9,
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`2013.
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`B. The First Office Action
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`In the First Office Action, the Examining Attorney refused registration under § 2(d) on
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`the grounds of likelihood of confusion with the registered mark LEVION INVESTMENTS‘,
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`noted a prior pending application for LEVION for computer software—related services that might
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`lead to suspension of the Applicant’s application pending disposition, and required clarification
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`of the identification of services.
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`In refusing registration, the Examining Attorney concluded that
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`the marks were highly similar because LAVIEN and the LEVION element of the registered mark
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`“are essentially phoenetic equivalents and thus sound similar” (OAl at 3), the “connotation and
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`commercial impression does not change between the marks when used in connection with the
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`applicant and registrant’s goods” (OA 1 at 3), and that the marks were also “used in connection
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`with similar services” (OA1 at 3-5). Although acknowledging that Appiicant’s and Registrant’s
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`services were different,
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`the Examining Attorney reasoned that “the respective marks are
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`substantially similar and therefore the services need not be identical .
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`.
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`. in order to find a
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`likelihood of confusion.” (OAl at 4.)
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`C. AppIicant’s Response
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`In App1icant’s Response to the First Office Action, Applicant argued that (a) the marks
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`differ significantly in sound, appearance and commercial impression, (b) the services are not
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`closely related, particularly in View of Applicant’s narrowed identification of services, and (c)
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`the “sophistication of the customers” du Pom‘ factor is highly relevant here and must be
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`considered. Applicant pointed out, inter alia, that two of the three Vowel sounds in Applicant’s
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`mark and the LEVION element of Registrant’s mark are different and lead to distinctly different
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`pronunciations of these elements accordingly to ordinary English language pronunciation rules.
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`Applicant further showed that the consumers for both Applicant’s and Registrant’s services are
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`making six and seven figure purchasing decisions. Such consumers will exercise a high degree of
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`care and are unlikely to be confused as to the origin of the services.
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`In response to the
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`requirement to modify the identification of services, Applicant also narrowed the identification
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`to “Financial services, namely, management and operation of private investment
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`funds
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`commonly known as hedge funds.”
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`D. The Second Office Action
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`Only a week after Applicant filed its response, the Examining Attorney issued the
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`Second‘ Office Action making the refusal
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`to register final.
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`The Second Office Action
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`substantially reiterated the arguments made in the First Office Action and gave almost no
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`consideration to Applicant’s arguments.
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`The Examining Attorney dismissed Applicant’s
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`demonstration that the marks are pronounced very differently in accordance with the ordinary
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`rules of English pronunciation by merely invoking, without analysis, the maxim that “there is no
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`correct pronunciation of a mark because it is impossible to predict how the public will pronounce
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`a particular mar .”
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`(OA2 at 4.)
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`In response to Applicant’s argument that the marks have
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`different commercial impressions and connotations,
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`the Examining Attorney, again without
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`analysis, simply reiterated her
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`initial view that
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`the marks “appear to connote the same
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`commercial impression, thus, the marks are confusingly similar.”
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`(OA2 at 4.) Finally, the
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`Examining Attorney essentially declined to consider the customer sophistication du Pont factor
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`at all. She dismissed it with the cryptic statement that “while although the relevant consumers
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`may be wealthy and sophisticated, the fact that purchasers are sophisticated or knowledgeable in
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`a particular field does not necessarily mean that they are sophisticated or knowledgeable in the
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`8
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`field of trademarks or immune from source confusion.”
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`(OA2 at 5.)
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`In the Second Office
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`Action, the Examining Attorney also accepted Applicant’s modification of the identification of
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`services and withdrew the advisory notice regarding the prior pending application for LEVION
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`for computer software-reiated goods and services.
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`ARGUMENT
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`A. Applicant’s and Registrant’s Marks are not Confusingly Similar.
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`In finding that Applicant’s mark LAVIEN and the Registrant’s mark LEVION
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`INVESTMENTS are “confusingly similar” (OAI at 3; OA2 at 4) the Examining Attorney erred
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`in concluding (i) that the marks are “essentially phonetic equivalents” (OAI at 3), and (ii) that
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`the marks’ connotations and commercial impressions are the same.
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`1. The Marks are Not Phonetic Equivalents.
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`Applicant’s mark and the LEVION element of Registrant’s mark are different
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`in
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`I
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`appearance and sound. The sounds of the first and last of the three syllables of the two words
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`LAVIEN and LEVION are quite different. The first syllable of Applicant’s mark, LA, has an
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`“ah” or short a sound when pronounced in accordance with ordinary English pronunciation rules,
`whereas the first syllable of Registrant’s mark, LEV, has an “e ” or short e sound. Further, the
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`last syllable of Applicant’s mark, EN, has a an “eh” or short e sound, whereas the last syllable of
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`Registrant’s mark, ON, has a distinctly different “an” or short 0 sound. Applicant submits that
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`these differences in two of the three vowel sounds in each of the marks’ first words makes the
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`sound of the marks distinctly different, certainly not phonetic equivalents, and unlikely to cause
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`confusion.
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`Further, the marks look different. The appearance of the initial elements of the two
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`marks are quite different. The different Vowels near the beginning (A Versus E) and near the end
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`9
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`(E versus 0) of each element are readily distinguishable and give the words different looks.
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`They are thus unlikely to be confused even when viewed separately, rather than compared side
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`by side.
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`Indeed, marks closer in sound and appearance, differing by only one, not two, vowel
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`sounds, have been found not likely to cause confusion, even where the goods are identical.
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`In re
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`General Elec. C0,, 304 F.2d 688, 134 U.S.P.Q. 190 (C.C.P.A. 1962) (VULCAN and VULKENE
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`for electrical wires and cables not confusingly similar).
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`The Examining Attorney’s reliance on the maxim that “there is no correct pronunciation
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`of a mar ” to refute the above is misplaced here and would wrench that principle from its logical
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`and case law underpinnings. Properly applied, the principle refutes arguments that marks the
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`public will likely pronounce the same way are not, in fact, confusingly similar because — the
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`proponent of the challenged mark contends —- there is a “correct” pronunciation of the challenged
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`mark that is different but that would defy ordinary rules of English pronunciation or the way
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`consumers are actually likely to pronounce the mark.
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`It should not be applied where, as here, the
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`natural pronunciations of the marks in questions would be distinctly different. Put differently,
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`the “no correct pronunciation” maxim properly applies where stilted, unnatural or unlikely
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`pronunciations are urged to create differences between otherwise similar sounding marks, but not
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`where, as here, the ordinary and natural pronunciations would be different.
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`It is logical to
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`assume that consumers will not spontaneously adopt unnatural pronunciations. But there is no
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`logic to support the Examining Attorney’s notion that LAVIEN and LEVION are phonetic
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`equivalents because consumers will not pronounce one or both in accordance with normal rules.
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`The cases on which the Examining Attorney relies, and other cases applying the “no
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`correct pronunciation” maxim, show that it was created in the context of, and is applicable to,
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`situations in which stilted, unnatural or unlikely pronunciations are urged to create differences in
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`10
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`sound that are unlikely to apply in the real world.
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`In re Virerra Inc., 671 F.3d 1358, 101
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`U.S.P.Q.2d 1905 (Fed. Cir. 2012), on which the Examining Attorney relied (OA2 at 4), affirmed
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`the Board’s affinnance of an Examining Attomey’s refusal to register the mark XCEED for
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`“agricultural seed” over the existing registration for X-SEED and design for “agricultural seeds.”
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`Applicant argued that the marks were “not phonetic equivalents” because XCEED is properly
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`pronounced with the second syllable accented as if it were the word “exceed,” whereas X-SEED
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`would be pronounced with the accent on the X. The Board and the Federal Circuit rejected that
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`argument, invoking the “no correct pronunciation” maxim because ‘“it is hard to imagine that the
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`two marks will not sound alike when spoken?”
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`671 F.3d at 1367, 101 U.S.P.Q.2d at 1912.
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`Pronouncing XCEED as if it were “exceed” would be unnatural and unlikely, even if it what the
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`brand owner intended or preferred.
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`Similarly in Centraz Indus. Inc. v. Spartan Chem. Ca, 77 U.S.P.Q.2d 1698 (T.T.A.B.
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`2006), on which the Examining Attorney also relied (OA2 at 4),
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`the Board sustained an
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`opposition to registration of the mark ISHINE and design for “floor finishing preparations” by
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`the owner of the registered mark ICE SHINE for “floor finishing preparations.” The Board
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`I
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`rejected Applicant’s argument that the marks sound different if “properly pronounced,” 1'. e., if
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`ICE and SHINE are carefully, precisely and distinctly Separately articulated, relying on the “no
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`correct pronunciation” maxim.
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`77 U.S.P.Q. 2d at 1701.
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`Recognizing that Applicant’s
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`pronunciation of Opposer’s mark would be unnatural and unlikely, the Board found it “quite
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`reasonable” that purchasers would instead elide the two Words of Opposer’s mark so that it
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`would sound “remarkably similar” to App1icant’s. Id.
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`Interlego AG v. Abrams/Gentile Entertainment, Inc., 63 U.S.P.Q. 1862 (T.T.A.B. 2002),
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`cited by the Federal Circuit in Virerra, is similar. The Board there invoked the maxim to sustain
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`11
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`an opposition to registration of MEGO for toys by the owner of the registered mark LEGO for
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`toys. Applicant argued that the marks were dissimilar in sound because its mark was “properly”
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`pronounced as if it were “Me-Go” with a long e sound, as opposed to Opposer’s mark, which is
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`pronounced “Leg-O”. The Board rejected the notion that consumers would adopt Applicant’s
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`unlikely, stilted pronunciation, even if Applicant made efforts to educate the public to do so,
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`finding that “[a] more logical pronunciation of applicants’ mark MEGO is that it would be
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`pronounced as a girl’s name (Meg) followed by a long ‘O’ sound.” 63 U.S.P.Q.2d at 1863.
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`These cases thus
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`support
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`the proposition that an alleged unnatural or unlikely
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`pronunciation will not save a mark from being considered confusingly similar to another where
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`the two marks will most likely be pronounced the same. They do not support the Examining
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`Attorney’s opposite proposition that LAVIEN and LEVION are “phonetic equivalents” because
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`some consumers might, in the Examining Attorney’s view, ignore the ordinary rules of English
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`pronunciation and pronounce them identically. There is no reason to assume that consumers will
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`tend to do that. This case is much closer to In re General Elec. Ca, 304 F.2d 688, 134 U.S.P.Q.
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`190 (C.C.P.A. 1962), which found the marks VULCAN and VULKENE for identical goods not
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`confusingly similar. As in this case, the two marks would naturally be pronounced differently.
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`The Examining Attorney essentially reasoned that In re General Elec. was wrongly decided
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`because some consumers could, contrary to ordinary rules, pronounce the two marks the same
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`way.
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`There is also no justification for the Examining Attorney’s complete disregard of the
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`INVESTMENTS element of Registrant’s mark in the likelihood of confusion analysis. It is well
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`established that for purposes of § 2(d) analysis marks are to be considered in their entireties and
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`not dissected into their component parts.
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`In re Nat’! Data Corp, 753 F.2d 1056, 1058, 224
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`12
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`U.S.P.Q. 749, 750-51 (Fed. Cir. 1985). Here, even though the INVESTMENTS element of
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`Registranfs mark is descriptive and disclaimed, it is part of the mark and must be considered.
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`It
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`cannot be entirely disregarded merely because consumers may tend to focus more on the first or
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`the non—descriptiVe part of a trademark. Particularly when the marks are not erroneously viewed
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`as “phonetic equivalents” (as
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`the Examining Attorney viewed them), consideration of
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`Registrant’s mark as a whole indicates that LEVION INVESTMENTS is unlikely to be confiased
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`with LAVIEN alone.
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`2. The Marks have Different Connotations and Commercial Impressions.
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`The Examining Attorney also improperly ignored Applicant’s demonstration that the
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`commercial impressions of LAVIEN and LEVION are very different. LAVIEN has a soft,
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`caring vaguely French sound and connotation, reminiscent of the name of Edith Piaf’ s famous
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`song “La Vie en Rose.”
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`In contrast LEVION has a harder, more industrial sound and
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`connotation. Consumers are unlikely to confuse these very different commercial impressions.
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`Yet, even after acknowledging Applicant’s argument (OA2 at 4), the Examining Attorney simply
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`stated without analysis that “the terms ‘LAVIEN’ and ‘LEVION’ appear to connote the same
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`commercial impression, thus the marks are confusingly similar.” (Id)
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`3. Arguable Relatedness of Applicant’s and Registrant’s Services
`does not Justify a Finding of Likelihood of Confusion between
`Applicant’s and Registrant’s Marks.
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`Applicant’s and Registrant’s services are not closely related. Registrant’s services relate
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`to real estate investment, as the specimen it submitted in connection with its application (Exhibit
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`A to Applicanfs Response to Office Action) makes clear. In contrast, Applicant's services relate
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`to non-real estate private investment funds commonly known as “hedge funds.” The Examining
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`Attorney acknowledged that Applicant’s and Registrant’s services are not the same, but she
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`13
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`considered them related.
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`In finding likelihood of confusion, the Examining Attorney relied on
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`the legal proposition that “[g]enera1ly, the greater [the] degree of similarity between the applied-
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`for mark and the registered mark, the lesser the degree of similarity between the services of the
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`respective parties is required to support a finding of likelihood of confusion” and reasoned that
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`“[i}n this comparison, the respective marks are substantially similar and therefore the services
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`need not be identical in this comparison in order to find a likelihood of confusion.” (OA2 at 6.)
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`As demonstrated above, the cornerstone of that reasoning—that the respective marks are
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`substantially similar—Was erroneous.
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`In fact they are significantly different. The invalidity of
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`that cornerstone undermines the Examining Attorney’s conclusion of likelihood of confusion.
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`Here, the opposite of the legal proposition the Examining Attorney appiied—where the degree of
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`similarity between the marks is low, a high degree of similarity between the services is required
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`to support a finding of likelihood of confusion—supports a finding of no likelihood of confusion.
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`Because the marks are not properly considered confusingly similar, any arguable relatedness of
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`the services is insufficient to support a finding of likelihood of confusion.
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`B. Sophistication of the Relevant Consumers Makes Confusion Highly Unlikely.
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`The Examining Attorney failed properly to consider the customer sophistication factor in
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`her analysis of likelihood of confusion.
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`In addition to similarity of the marks and relatedness of
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`the goods, other du Pont factors, including sophistication of the customers, must be considered in
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`§ 2(d) likelihood of confusion analyses where relevant. Elec. Design & Sales, Inc. v. Elec. Data
`
`Sys. Corp, 954 F.2d 713, 718, 21 U.S.P.Q.2d 1388, 1392 (Fed. Cir. 1992) (Board reversed for
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`failing to give due weight to sophistication of purchasers du Pant factor); In re Davey Prods. Pty
`
`Ltd, 92 U.S.P.Q.2d 1198, 1203-04 (T.T.A.B. 2009); In re Toshiba Med. Sys. Corp, 91
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`U.S.P.Q.2d 1266, 1272-74 (T.T.A.B. 2009). Circumstances suggesting care in purchasing,
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`14
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`including high expense of goods or services, tends to minimize the likelihood of confusion. As
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`the Federal Circuit has noted, “’[T]here is always less likelihood of confusion where goods are
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`expensive and purchased after careful consideration.” Elec. Design & Sales, Inc., 954 F.2d at
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`718, 21 U.S.P.Q.2d at 1392, quoting Astra Pharm. Prods. v. Beckman Instruments, 718 F.2d
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`1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983); See, e.g., In re N.A.D., Inc., 754 F.2d 996,
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`999-1000, 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985) (no likelihood of confusion between NARCO
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`and NARKOMED for similar products because only sophisticated purchasers exercising great
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`care would purchase the relevant goods); In re Homeland Vinyl Prods, Inc, 81 U.S.P.Q.2d
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`1378, 1382-83 (T.T.A.B. 2006).
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`In this application, the relevant consumers are Wealthy investors considering or making
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`investments of hundreds of thousands, if not millions, of dollars in hedge funds, in Applicant’s
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`case, or real estate or securities representing interests in real estate in Registrant’s case. See, e.g.,
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`Exhibit A to App1icant’s Response to Office Action ($3,289,223 equity required for Registrant’s
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`real estate investment). Such sums would only be invested with great care due to the cost and
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`investors at such a high level can be expected to investigate the source of the services on which
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`they are relying for the success of the investment. Hedge fund investments, and significant real
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`estate investments, typically entail significant purchaser due diligence. For hedge funds, this
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`involves review of a confidential private placement memorandum containing a description of the
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`business, its management and the investment strategy. It would thus be clear to any investor that
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`the services provided under the LAVIEN mark are unrelated to LEVION INVESTMENT’s I
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`services.
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`In fact, SEC rules mandate that hedge fund managers such as Applicant may only deal
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`with “accredited investors” who meet financial tests designed to insure sophistication. SEC
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`Securities Act of 1933, Reg. D, Rule 501, 17 CFR 230.501(a), Rule 506, 17 CFR 230.506.
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`Courts have often held that where, as here, the relevant consumers are sophisticated and a
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`significant amount of money is involved in the purchasing decision, there is no likelihood of
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`confusion even where the marks involved are identical or similar. E.g., Elec. Design & Sales,
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`Inc., 954 F.2d 713 (no likelihood of confusion based on sophistication of the buyers, even though
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`marks nearly identical); Haven Capital Mgr. Inc. v. Havens Advisers, L.L.C., 965 F. Supp. 528
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`(S.D.N.Y. 1997), afi’d, 159 F.3d 1346 (2d Cir. 1998) (HAVENS ADVISORS not confusingly
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`similar to HAVEN for mutual fund services given sophistication of investors and cost of
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`investment); Franklin Res, Inc. v. Franklin Credit Mgr. Corp, 988 F. Supp. 322 (S.D.N.Y.
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`1997)
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`(customer
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`sophistication significant
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`factor
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`in finding FRANKLIN CREDIT not
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`confusingly similar to FRANKLIN for financial services); Beneficial Corp. v. Beneficial Capital
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`Corp, 529 F. Supp. 445 (S.D.N.Y. 1982) (customer sophistication and large sums involved
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`significant factors in finding no likelihood of confusion).
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`The Examining Attorney dismissed any consideration of the customer sophistication
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`factor, stating that “while although the relevant consumers may be wealthy and sophisticated, the
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`fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily
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`mean that they are sophisticated or knowledgeable in the field of trademarks or immune from
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`source confusion." (0A2 at 5.) However, the cases on which the Examining Attorney relied in
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`refusing to consider customer sophistication are inapposite and do not support rejection of that
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`factor in this application.
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`Imagineering Inc. v. Van Klassens Inc, 53 F.3d l260, 34 U.S.P.Q.2d 1526 (Fed. Cir.
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`1995) (OA2 at 5), was a trade dress infringement case involving furniture, in which the court
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`upheld a jury verdict of infringement. The court noted that the customer sophistication factor
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`could support
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`the verdict because, although the customers were sophisticated, customer
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`sophistication was not sufficient to obviate confusion. The court noted that the record showed
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`that even a trained furniture salesman could not distinguish the plaintiffs and the defendant’s
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`products. 53 F.3d at 1265, 34 U.S.P.Q.2d at 1529. Nothing similar is present here. There is
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`nothing in the record to suggest that sophisticated customers prepared to invest six or seven
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`figure sums would not be able to distinguish Applicant’s services from the Registrant’s services
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`because of similarity of the marks.
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`In fact, the record indicates the opposite—that the marks are
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`dissimilar and would be readily distinguished by a purchaser exercising the care ordinarily
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`exercised before investing large sums.
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`Nor does Top Tobacco LP 12. N. Ail. Operating Co., 101 U.S.P.Q.2d 1163 (T.T.A.B.
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`2011) (OA2 at 5), support the Examining Attorney’s disregard of the customer sophistication
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`factor here.
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`In Top Tobacco the Board found that the customer sophistication factor was not
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`sufficient to outweigh the other du Pom‘ factors favoring likelihood of confusion because (a) the
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`parties’ marks could also be used for bulk or generic less expensive products for which “the
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`buyers would not necessarily exercise any greater degree of caution” and might “make an
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`impulse purchase,” and (b) even as to the more expensive products the goods were not
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`sufficiently “complex and extremely expensive” to insure that purchasers would likely exercise a
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`high degree of care.
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`101 U.S.P.Q.2d at 1171. Here,
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`in contrast, both Applicant’s and
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`Registrant’s services are sufficiently expensive and complex that a high degree of care by
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`purchasers is likely.
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`Proper consideration of customer sophistication here weighs heavily against a finding of
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`likelihood of confusion. Both Applicant’s and Registrant’s consumers are sophisticated and are
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`investing large amounts. They can be fully expected to exercise care and know with whom they
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`are dealing.
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`It is highly unlikely that any relevant consumer would invest a six or seven figure
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`sum in Applicant’s hedge funds believing that he or she is investing in Registrant’s real estate
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`projects.
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`CONCLUSION
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`For all of the foregoing reasons, Applicant respectfully submits that the Examining
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`Attorney has failed to meet her burden to demonstrate that registration of Applicant’s mark
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`LAVIEN should be refused because of likelihood of confusion with‘ the registered mark
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`LEVION INVESTMENTS. The Board should reverse the refusal to register.
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`Dated: November 8, 2013
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`Respectfully submitted,
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`TANNENBAUM HELPERN
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`SYRACUSE & HIRSCHTRITT LLP
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`By
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`/L. Donald Prutzman/
`L. Donald Prutzman
`
`900 Third Avenue
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`New York, New York 10022
`(212) 508-6739
`Attorneysfor Applicant
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