From: Milton, Priscilla
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`Sent: 6/2/2015 7:18:50 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86030490 - FINANCIALLY WISE WOMEN - N/A - EXAMINER
`BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 86030490.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86030490
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`MARK: FINANCIALLY WISE WOMEN
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`*86030490*
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`CORRESPONDENT ADDRESS:
` JESSICA T OLMON
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`GENERAL TRADEMARK INFORMATION:
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` VERO LAW GROUP PC
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`http://www.uspto.gov/trademarks/index.jsp
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` 225 SANTA MONICA BOULEVARD 11TH FLOOR
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` SANTA MONICA , CA 90401
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`APPLICANT: FINANCIALLY WISE WOMEN
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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`CORRESPONDENT E-MAIL ADDRESS:
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` jessica@verolawgroup.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Financially Wise Women, a corporation (hereinafter referred to as “applicant”) has appealed the
`trademark examining attorney’s final refusal to register the mark FINANCIALLY WISE WOMEN based
`upon Section 2(d) of the Trademark Act.
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`FACTS
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`On 08/09/2013, applicant filed an application to register the mark, FINANCIALLY WISE WOMEN, for
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`“consulting and information concerning insurance; financial advice; financial advice and consultancy
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`services; financial advice, namely, budget planning; financial planning; financial planning and investment
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`advisory services; insurance brokerage; insurance brokerage services; life insurance brokerage; on-line
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`financial planning services; and workshops and seminars in the field of financial planning. Applicant
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`alleged use of the mark for the identified services in interstate commerce.
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`In the first Office action mailed November 13, 2013, the examining attorney refused registration
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`pursuant to Section 2(d) of the Trademark Act on the basis that the applicant's mark when applied to
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`the services, so resembles the registrant's mark, WISE WOMEN WORKSHOP ("WOMEN WORKSHOP"
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`disclaimed) for "educational services, namely, conducting workshops for women in the field of finance,
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`namely, to help women achieve financial independence and a comfortable retirement." Registration
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`was also refused because the specimen did not show the applied-for mark in use in commerce in
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`connection with any services specified in the application in Class 41. Additionally, the examining
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`attorney required a disclaimer of the wording FINANCIALLY and WOMEN.
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`On 5/20/15, applicant responded to the first Office action. In response to the specimen refusal for
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`services in Class 41, applicant amended the filing basis to intent to use under Section 1(b). Applicant
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`submitted a disclaimer of the wording WOMEN and arguments in support of registration without a
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`disclaimer of FINANCIALLY. Applicant also submitted arguments and evidence in support of registration.
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`On July 7, 2014, the examining attorney accepted the amendment to the filing basis for the services in
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`Class 41, withdrew the specimen requirement for services in class 41, accepted the disclaimer of the
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`wording WOMEN, withdrew the disclaimer request for the wording FINANCIALLY, and made the refusal
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`under Trademark Act Section 2(d) final.
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`On 11/21/14, in response to the second Office action, applicant filed a Notice of Appeal. On January 10,
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`2015, applicant submitted a request for reconsideration with evidence and arguments in support of
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`registration. On 2/7/15 the examining attorney denied the request for reconsideration and made
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`additional evidence of record to support the refusal under Trademark Act Section 2(d). On 4/17/14,
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`applicant filed its appeal brief.
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`The sole issue on appeal is whether the applicant's mark FINANCIALLY WISE WOMEN" ("WOMEN"
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`disclaimed) for "consulting and information concerning insurance; financial advice; financial advice and
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`consultancy services; financial advice, namely, budget planning; financial planning; financial planning
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`and investment advisory services; insurance brokerage; insurance brokerage services; life insurance
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`brokerage; on-line financial planning services; and workshops and seminars in the field of financial
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`planning," is confusingly similar to U.S. Registration No. 4367630, WISE WOMEN WORKSHOP
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`("WOMEN WORKSHOP" disclaimed) for "educational services, namely, conducting workshops for
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`women in the field of finance, namely, to help women achieve financial independence and a
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`comfortable retirement."
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`ARGUMENTS
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`APPLICANT’S MARK IS CONFUSINGLY SIMILAR TO REGISTRANT’S MARK AND THE RESPECTIVE
`SERVICES ARE RELATED
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
`that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the
`goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of
`likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In
`re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this
`determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256
`(Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471,
`1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight,
`and any one of the factors may control in a given case, depending upon the evidence of record.
`Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic
`Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de
`Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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`In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of
`the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re
`Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures
`Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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`A. THE MARKS ARE CONFUSINGLY SIMILAR
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`The likelihood of confusion is not avoided between otherwise confusingly similar marks simply by adding
`or deleting terms. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188
`USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In
`re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly
`similar). However, a likelihood of confusion can be avoided if the addition or deletions of terms are such
`that the marks in their entireties convey significantly different commercial impressions; or the matter
`common to the marks is not likely to be perceived by purchasers as distinguishing source because it is
`merely descriptive, or diluted.
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`See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004)
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`(RITZ and THE RITZ KIDS create different commercial impressions).
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`In the present case, the marks are identical in part. The applicant's mark is FINANCIALLY WISE WOMEN
`("WOMEN" disclaimed). The mark in the cited registration is WISE WOMEN WORKSHOP ("WOMEN
`WORKSHP" disclaimed). The respective marks create a substantially similar overall commercial
`impression because they share the wording WISE WOMEN. Marks may be confusingly similar in
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`appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared
`marks and create a similar overall commercial impression. See Crocker Nat'l Bank v. Canadian Imperial
`Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff'd sub nom. Canadian Imperial Bank of
`Commerce v. Wells Fargo Bank, Nat'l Ass'n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987)
`(finding COMMCASH and COMMUNICASH confusingly similar); In re Pellerin Milnor Corp., 221 USPQ
`558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-
`(iii). Because the applicant's mark and registrant's mark both contain the common wording WISE
`WOMEN, the overall commercial impression of the marks is substantially similar.
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`Applicant argues that its mark FINANCIALLY WISE WOMEN create an entirely different appearance,
`sound, connotation and commercial impression than the cited mark. Applicant contends that when its
`mark is viewed in its entirety it is different from the cited mark in several important ways. These
`purportedly important ways merely points to the differences in the respective marks, in that applicant's
`mark includes the additional wording FINACIALLY, registrant's mark includes the wording WORKSHOP,
`and the absence of the alliteration (i.e., the repeated initial consonant sound) present in the cited mark,
`WISE WOMEN WORKSHOP. However, the test of a likelihood of confusion is not whether the marks
`can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar
`in terms of their overall commercial impression that confusion as to the source of the goods and/or
`services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des
`Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110
`USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the
`average purchaser, who retains a general rather than specific impression of trademarks. United Global
`Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L'Oreal S.A. v. Marcon, 102 USPQ2d
`1434, 1438 (TTAB 2012); TMEP §1207.01(b).
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`Applicant argues that the addition of the word FINANCIIALLY and the omission of the word WORKSHOP
`are significant in creating a different connotation from the cited mark. Applicant contends that the
`inclusion of the word FINANCIALLY in applicant's mark suggest to consumers that applicant's services "
`fall within the world of finance," and such a connotation does not exists when viewing the cited mark.
`As to the cited mark applicant speculates that consumers might convey the connotation as "community,
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`social unity or perhaps something spiritual" or "suggest educational activities or participatory
`experience directed at women." The examining attorney respectfully disagrees with this analysis.
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`While marks must be compared in their entireties and should not be dissected, a trademark examining
`attorney may weigh the individual components of a mark to determine its overall commercial
`impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157,
`1161 (Fed. Cir. 2014) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir.
`1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing
`improper in stating that, for rational reasons, more or less weight has been given to a particular feature
`of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties”).
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`The examining attorney recognizes the disclaimed portion in both marks WOMEN in applicant’s mark
`and WOMEN WORKSHOP in the cited mark, but attaches less significance to these terms. In other
`words, unlike applicant, the examining attorney does not believe that the generic designation workshop
`is essential in creating the commercial impression of the cited mark. Disclaimed matter that is
`descriptive of or generic for a party's goods and/or services is typically less significant or less dominant
`when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
`(Fed. Cir. 1997); In re Nat'l Data Corp., 753 F.2d at 1060,
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`224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Similarly, the wording WOMEN in both marks
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`merely indicates that the applicant’s services and registrant’s services are directed to women. As to the
`wording FINANCIALLY, it is merely suggestive of the subject matter of applicant’s services.
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`The question arises as to what is the dominant feature in applicant’s mark? Applicant argues that the
`dominant feature of the applicant’s mark is the first word in applicant’s mark, FINANCIALLY. Applicant
`gives great weight to the wording FINANCIALLY, and very little weight to the word “WISE,” despite the
`fact that the word “WISE” in applicant’s mark has not been disclaimed. In the request for
`reconsideration applicant suggested that applicant would be willing to disclaim WISE WOMEN, if it
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`would avoid the refusal under Trademark Act Section 2(d). However, even if the wording WISE WOMEN
`had been disclaimed, the wording FINANCIALLY standing alone would not be considered the dominant
`feature of applicant’s mark when applied to applicant’s financial services. The wording FINANCIALLY
`used in connection with applicant’s services is highly suggestive and not sufficient to avoid confusion in
`this case. The addition of a suggestive element to a registered mark may not be sufficient to avoid a
`likelihood of confusion. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984) (finding likelihood of confusion
`between GOLIATH for pencils and LITTLE GOLIATH for a stapler).
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`In the present case, the dominant feature of applicant’s mark is FINANCIALLY WISE and the dominant
`feature in the cited mark is WISE. It is important to note that the marks are in part identical because
`they share the wording WISE WOMEN. Contrary to applicant’s belief, this current case is distinguishable
`from the line of cases relied upon by applicant that demonstrates that matter common to the marks can
`be perceived by purchasers as the distinguishing source if it is not merely descriptive or diluted. See
`Bass Pro Trademarks, L.L.C. v.Sportsman’s Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) (Board found
`no likelihood of confusion between the word and design marks BASS PRO SHOPS SPORTMAN’S
`WAREHOUSE (with SPORTSMAN’S WAREHOUSE disclaimed) and SPORTSMAN’S WAREHOUSE (with all
`wording disclaimed) for essentially the same retail store services); In re Farm Fresh Catfish Co., 231
`USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with “CATFISH” disclaimed) for fish held not likely to be
`confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985)
`(GOLDEN CRUST for flour held not likely to be confused with ADOLPH’S GOLD’N CRUST and design (with
`“GOLD’N CRUST” disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ
`54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be
`confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics). In the present case, the
`wording WISE WOMEN has not been determined to be descriptive as applied to the applicant’s services
`or the registrant’s services. Moreover, the applicant has not made sufficient evidence of record to
`support applicant’s claim that that “WISE WOMEN” is diluted when applied to financial services and or
`services in the field of finance.
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`Applicant contends that because the wording WISE WOMEN is a familiar archetype used in connection
`with a variety of goods and services marketed to women, it is an insufficient basis upon which to base a
`holding of confusing similarity. In support, applicant submitted copies of the following third party
`registrations containing “WISE” and “WOMAN” or “WOMEN” for a variety of services.1 See excerpts
`below.
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`U.S. Registration No. 3474058, WOMANWISE A WATERSMOLITOR COMPANY WW
`and Design for “pre-recorded CDs, DVDs, videotapes and downloadable podcasts
`featuring information for marketers relevant to marketing and branding; printed
`lectures; printed speeches; series of non-fiction books featuring information for
`marketers in the field of marketing and branding; newsletters featuring information
`for marketers in the field of marketing and branding; printed visuals in the nature of
`photographs, information graphics and promotional materials; printed white papers
`featuring information for marketers in the field of marketing and branding; a series of
`articles featuring information for marketers in the field of marketing and branding;
`printed seminar notes; advertising and marketing services, namely, consumer
`research, market research, conducting marketing studies, market research on
`consumers to gain insight regarding goods, services and marketing messages of others,
`market research consultation, advertising services, namely, creating corporate and
`brand identity for others; arranging and conducting marketing promotional events for
`others; market opinion polling studies; public opinion polling; business consulting
`services in the fields of marketing, advertising, promotion, public relations, direct
`marketing and planning events for others; providing newsletters featuring information
`for marketers relevant to marketing and branding via e-mail; providing on-line
`publications, namely, books, newsletters, white papers, speeches, and articles
`featuring information for marketers relevant to marketing and branding; arranging of
`seminars; educational services, namely, providing seminars and speeches featuring
`information for marketers relevant to marketing and branding; educational services,
`namely, providing classes, seminars and workshops featuring information for
`marketers in the field of marketing and branding; Special event planning and
`consultation.”
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`1 See applicant’s Exhibit A to the Request for Reconsideration.
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`U.S. Registration No. 4451206, WOMEN-WISE and Design for “medical services,
`namely, in the field of women's health; obstetrics and gynecology services; Providing
`health information; providing medical advice in the field of women's health.”
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`U.S. Registration No. 4534130, WOMANWISE! for “educational services, namely,
`providing Christian-affiliated educational programs for women on faith-based topics;
`entertainment services, namely, hosting Christian-affiliated social events for women
`on faith-based topics; providing a website featuring information about Christian-
`affiliated educational programs and events for women on faith-based topics and social
`events for women on faith-based topics.”
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`U.S. Registration No. 4296155, WISE WOMAN WELLNESS for “on-line retail store
`services featuring products relating to the healing arts.”
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`U.S. Registration No. 4001517, WISE WOMAN HERBALS and Design for “essential oils,
`essential oils for aromatherapy use, essential oils for household use, essential oils for
`use in aromatherapy, and natural essential oils all containing herbals; anti-
`inflammatory salves, dietary and nutritional supplements, dietary supplements, herb
`teas for medicinal purposes, herbal supplements, herbal teas for medicinal purposes,
`herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for
`the relief of aches and pain, medicated skin care preparations, namely, creams,
`lotions, gels, toners, cleaners and peels, medicated throat sprays, medicinal
`preparations for the mouth and as sprays, medicinal tea, multipurpose medicated
`antibiotic cream, analgesic balm and mentholated salve, natural herbal supplements,
`nutritional supplements in lotion form sold as a component of nutritional skin care
`products, pharmaceutical skin lotions, and homeopathic suppositories all containing
`herbals.”
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`U.S. Registration No. 3952504, WISE WOMEN ROCK for “educational services,
`namely, conducting live and teleconferencing seminars in the field of self-esteem,
`career management, relationship coaching, and child rearing skills and distribution of
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`printed materials in connection therewith in hard copy or electronic format on the
`same topics.”
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`U.S. Registration No. 3317957, ONE HUNDRED WISE WOMEN W and Design for
`“general business networking services, namely, providing opportunities for discussion
`and interaction with corporate, community, and professional leaders.”
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`U.S. Registration No. 3317957, ONE HUNDRED WISE WOMEN for “general business
`networking services, namely, providing opportunities for discussion and interaction
`with corporate, community, and professional leaders.”
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`U.S. Registration No. 3376557, WISE WOMEN IGNITING THE SPIRIT OF
`ENTREPRENEURSHIP for “venture capital services, namely, providing financing to
`emerging and start-up companies; educational services, namely, conducting seminars,
`conferences, and workshops in the field of entrepreneurship and women-owned and
`operated businesses.”
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`U.S. Registration No. 3789620, WISE WOMEN IN SPORTS AND EVENTS (Stylized) for
`“association services, namely, promoting the interests of people in the sports and
`event industry.
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`U.S. Registration No. 3744482, WISE WOMAN PUBLISHING for “a series of books and
`written articles in the field of women's spirituality, with a focus on personal growth,
`prosperity, empowerment, creative expression, community and leadership; blank
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`cards; blank journal books; blank note cards; blank writing journals; bookmarks;
`calendars; greeting cards; note cards.”
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`U.S. Registration No. 3605966, WISE WOMEN IGNITING THE SPIRIT OF
`ENTREPRENEURSHIP for “educational services, namely, conducting seminars, classes,
`and workshops in the field of entrepreneurship.
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`U.S. Registration No. 3560246, WOMEN ARE WISE for “life coaching in the field of
`women's health and wellness; educational services, namely, classes, workshops, and
`seminars for women in the field of health and wellness.”
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` U.S. Registration No. 3683722, WISE WOMAN PUBLISHING W P and Design for
`“books, a series of written articles, blank journal books, blank note cards, blank writing
`journals, bookmarks, calendars, greeting cards, note cards, blank cards, all of the
`foregoing in the field of women's spirituality, with a focus on personal growth,
`prosperity, empowerment, creative expression, community and leadership.
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`There are several problems with applicant’s argument. The sixteen third-party registrations made of
`record, including the cited registration fail to demonstrate that the various WISE and WOMEN or
`WOMAN marks are actually being used in commerce or that the extent of use is so great as it relates to
`financial services that consumers have become so accustomed to seeing various WISE WOMEN marks
`and, thus have learned to distinguish them. The only third-party registrant other than the owner of the
`cited mark that services are related to financial matters is U.S. Registration No. 3376557, WISE WOMEN
`IGNITING THE SPIRIT OF ENTREPRENEURSHIP for “venture capital services, namely, providing financing
`to emerging and start-up companies.” Evidence of weakness or dilution consisting solely of third-party
`registrations, such as those submitted by applicant in this case, is generally entitled to little weight in
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`determining the strength of a mark, because such registrations do not establish that the registered
`marks identified therein are in actual use in the marketplace or that consumers are accustomed to
`seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A.
`1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d
`1634, 1639 (TTAB 2009); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).
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`Applicant contends that the conditions under which and whom, sales are made suggest careful
`purchasing weighing against a finding of likelihood of confusion. Applicant states as follows. “Both
`applicant’s and the registrant’s service is in the nature of professional services (i.e., consulting and
`advice, educational services) in the field of personal finance… The nature of these services is such that
`they are not purchased carelessly or on impulse. Rather, consumers of the services under both marks
`are certain to be highly selective about who they entrust with their money and their confidential,
`financial and possibly other information.” While this may be true, applicant has not made any evidence
`of record to support this conclusion. It appears from applicant’s online advertisements that applicant’s
`services are directed to the general public. One advertisement encourages consumers to sign up for a
`“Money Class” during a designated period and the paying consumer is able to enroll one friend for free.
`2 It is questionable as to whether this ad is directed to sophisticated purchasers or to the general public.
`Moreover, the fact that purchasers are sophisticated or knowledgeable in a particular field does not
`necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune
`from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital
`LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl.
`Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
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`Applicant contends that there has been an absence of actual confusion despite the fact that there has
`been five years of concurrent use. However, the test under Trademark Act Section 2(d) is whether there
`is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of
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`2 See Office electronic application file Outgoing 2/7/2015 at page 59.
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`confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir.
`2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed.
`Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
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`[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the
`contemporaneous use of the marks of applicant and registrant is of little probative value in an
`ex parte proceeding such as this where we have no evidence pertaining to the nature and extent
`of the use by applicant and registrant (and thus cannot ascertain whether there has been ample
`opportunity for confusion to arise, if it were going to); and the registrant has no chance to be
`heard from (at least in the absence of a consent agreement, which applicant has not submitted
`in this case).
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`In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
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`The examining attorney maintains that the marks create a substantially similar overall commercial
`impression. The marks are similar in sound, appearance and connotation in that they are identical in
`part and because the additional wording in each of the marks is either highly suggestive (FINANCIALLY)
`or generic (WORKSHOP). Moreover, the applicant evidence of dilution of the common elements in the
`mark, WISE WOMEN, is insufficient and there is no evidence to support applicant’s claim that consumers
`of the respective services are sophisticated purchasers. Thus, in the case at hand, viewing the marks in
`their entireties, the similarities in appearance sound, connotation and overall commercial impression
`outweighs the dissimilarities. The impression of both marks remains the same, that of a WISE WOMEN.
`There is no evidence of record that would support a different conclusion.
`
`A. THE SERVICES ARE RELATED AND IN THE SAME CHANNELS OF TRADE
`
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`

`
`
`
`The respective services are related and in the same channels of trade. The goods and/or services of the
`parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline
`Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton,
`214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are
`different from, and thus not related to, one another in kind, the same goods can be related in the mind
`of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
`
`
`
`The respective goods and/or services need only be “related in some manner and/or if the circumstances
`surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods
`and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
`1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
`1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). In the present case, the services are related. Applicant’s
`financial consulting, advising, planning services and investment advisory services are described broadly
`and could include services related to financial planning for retirement and wealth creation. Applicant
`has not argued to the contrary in applicant’s brief.
`
`
`
`The trademark examining attorney has attached evidence from the USPTO’s X-Search database
`consisting of a number of third-party marks registered for use in connection with the same or similar
`goods and/or services as those of both applicant and registrant in this case. This evidence shows that
`the goods and/or services listed therein, namely financial information, financial planning, investment
`services, insurance brokerage and educational services in the field of finance, are of a kind that may
`emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
`
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`2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard
`Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).3
`
`
`
`The trademark examining attorney refers to the excerpted materials from the Google search engine in
`which also demonstrates that the applicant’s services and the services offered by the owner of the cited
`registration are related and in the same channels of trade. See attachments. Material obtained from
`the Internet is generally accepted as competent evidence. See In re Davey Prods. Pty Ltd., 92 USPQ2d
`1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of
`confusion determination).
`
`
`
`Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely
`related,” the degree of similarity between the marks required to support a finding of likelihood of
`confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6
`USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d
`1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
`
`CONCLUSION
`
`
`
`
`
`Applicant’s mark FINANCIALLY WISE WOMEN is confusingly similar to the registrant’s mark WISE
`WOMEN WORKSHOP. The marks are substantially similar in sound, appearance, connotation and overall
`
`
`3 See attachment to the Office actions mailed 11/21/2013 and 2/7/2015.
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`commercial impression. Further, the respective services are closely related and in the same channels of
`trade. Any doubt that could possibly exists in determining the likelihood of confusion must be resolved
`in the favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281
`F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002).
`
`
`
`Respectfully submitted,
`
`/Priscilla Milton/
`
`Law Office 110
`
`priscilla.milton@uspto.gov
`
`571-272-9199
`
`
`
`
`
`Chris A. F. Pedersen
`
`Managing Attorney
`
`Law Office 110