Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA430065
`ESTTA Tracking number:
`09/13/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195214
`Defendant
`Institute of Management Accountants
`JORDAN S. WEINSTEIN
`OBLON, SPIVAK, MCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 DUKE STREET
`ALEXANDRIA, VA 22314
`UNITED STATES
`jweinstein@oblon.com, dbondurant@oblon.com, kimai@oblon.com,
`tmdocket@oblon.com
`Motion for Summary Judgment
`Jordan S. Weinstein
`jweinstein@oblon.com, dbondurant@oblon.com, tmdocket@oblon.com,
`kimai@oblon.com
`/jsw/
`09/13/2011
`361184US - MSJ.pdf ( 17 pages )(111307 bytes )
`361184US - Exh 01-07.pdf ( 184 pages )(7984987 bytes )
`361184US - Exh 08-25.pdf ( 93 pages )(3740275 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`
`
`Attorney Docket No.: 361184US56
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
` Opposition No.: 91/195,214
` Appln. Serial No. 77/828,940
` Mark:
`IMA THE ASSOCIATION FOR
`ACCOUNTANTS AND
`FINANCIAL PROFESSIONALS
`IN BUSINESS
`
`
`
`
`
`
`
`
`
`
`)
`
`))
`
`)
`)
`)
`)
`)
`
`))
`
`)
`)
`)
`
`
`ASSOCIATION FOR FINANCIAL
`PROFESSIONALS, INC.,
`
`
`Opposer,
`
`
` v.
`
`INSTITUTE OF MANAGEMENT
`ACCOUNTANTS,
`
`
`Applicant.
`
`
`
`The Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT ON THE OPPOSITION
`AND SUPPORTING MEMORANDUM OF LAW
`
`Pursuant to Rule 56(b) of the Federal Rules of Civil Procedure and Rule 2.127 of the
`
`
`
`Trademark Rules of Practice, Applicant and Counterclaimant, Institute of Management
`
`Accountants (“IMA” or “Applicant”), moves the Trademark Trial and Appeal Board (“Board”)
`
`for partial summary judgment in this proceeding, namely summary judgment with respect to the
`
`opposition by Association for Financial Professionals (“AFP” or “Opposer”) against IMA’s
`
`application, Serial No. 77/828,940. 1 Summary judgment is appropriate because there is no
`
`genuine issue of material fact to be tried and the undisputed evidence establishes that there is no
`
`likelihood of confusion between Opposer’s asserted marks and the opposed mark.
`
`
`1 This Motion does not address the counterclaim.
`
`
`
`

`
`
`
`I.
`
`
`
`PRELIMINARY STATEMENT
`
`Applicant’s mark:
`
`is
`
`so
`
`dissimilar
`
`to Opposer’s marks ASSOCIATION
`
`FOR
`
`FINANCIAL
`
`
`
`PROFESSIONALS,
`
` and
`
`,
`
`that confusion
`
`is unlikely.
`
`Consumers encountering Applicant’s mark are likely to impart the generic meanings of
`
`“association” and “financial professionals” to Applicant’s mark, and to view the phrase “the
`
`association for accountants and financial professionals in business” as a descriptive phrase. The
`
`inclusion of the first and dominant element of Applicant’s mark, the house mark “IMA”, as well
`
`as the additional wording in Applicant’s mark, are sufficient to render confusion unlikely.
`
`Where the marks are so dissimilar, the first du Pont factor — the degree of similarity
`
`between the marks — may be determinative of the absence of a likelihood of confusion, and
`
`outweigh evidence as to other du Pont factors favoring an opposer. Kellogg Co. v. Pack-Em
`
`Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed.
`
`Cir. 1991); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1317 (TTAB 2005).
`
`
`
`
`
`- 2 -
`
`

`
`
`
`II.
`
`REGISTRATIONS/APPLICATIONS AT ISSUE
`
`IMA seeks registration on the Principal Register of the mark:
`
`
`
`for: “association services, namely, promoting the interests of management accountants;
`
`promoting public awareness of the need for management accountants and of the need for
`
`educational programs in the fields of management accounting and financial management” in
`
`International Class 35; and “educational programs in the financial management and management
`
`accounting fields, namely, educational research, arranging and conducting educational
`
`conferences, educational demonstrations and educational testing” in International Class 41. The
`
`application was filed on September 17, 2009, and is based upon an intent to use the mark in
`
`commerce.
`
`
`
`Opposer bases its opposition on the following trademarks:
`
`TM
`
`SN/RN/
`Key Dates
`
`Disclaimer/
`2(f) claim
`
`Goods/Services
`
`ASSOCIATION FOR
`FINANCIAL
`PROFESSIONALS
`
`
`SN: 76-627628
`RN: 3,044,174
`Filed: 1/12/2005
`Registered:
`1/17/2006
`
`Registered pursuant
`to Section 2(f).
`
`ASSOCIATION FOR
`FINANCIAL
`PROFESSIONALS
`
`SN:75-689418
`RN:2,564,105
`Filed: 4/23/1999
`Registered:
`4/23/2002
`
`
`
`- 3 -
`
`
`
`
`
`(Int'l Class: 35) Association services,
`namely, promoting the interests of
`treasury and financial professionals by
`providing a forum for the exchange of
`concepts and techniques related to
`improving financial management
`First Use: October 25, 1999
`
`(Int'l Class: 41) Educational services for
`financial professionals, namely,
`conducting conferences, classes and
`seminars in the field of professional
`development and distributing course
`materials in connection therewith
`First Use: November 25, 1999
`
`

`
`TM
`
`SN/RN/
`Key Dates
`
`Disclaimer/
`2(f) claim
`
`Goods/Services
`
`SN:75-689419
`RN:2,485,789
`Filed: 4/23/1999
`Registered:
`9/4/2001
`
`ASSOCIATION FOR
`FINANCIAL
`PROFESSIONALS
`
`SN:75-689417
`RN:2,556,564
`Filed: 4/23/1999
`Registered:
`4/2/2002
`
`ASSOCIATION FOR
`FINANCIAL
`PROFESSIONALS
`
`FINANCIAL
`PROFESSIONALS
`
`SN:75-689416
`RN:2,445,050
`Filed: 4/23/1999
`Registered:
`4/17/2001
`
`
`
`
`
`
`
`(Int'l Class: 42) Association services,
`namely, promoting the interests of
`financial professionals by providing a
`forum for the exchange of concepts and
`techniques related to improving financial
`management
`First Use: November 25, 1999
`
`(Int'l Class: 42) Association services,
`namely, promoting the interests of
`financial professionals by providing a
`forum for the exchange of concepts and
`techniques related to improving financial
`management
`First Use: November 25, 1999
`
`(Int'l Class: 41) Educational services for
`financial professionals, namely,
`conducting conferences, classes and
`seminars in the field of professional
`development and distributing course
`materials in connection therewith
`First Use: October 25, 1999
`
`(Int'l Class: 41) Educational services for
`financial professionals, namely,
`conducting conferences, classes and
`seminars in the field of professional
`development and distributing course
`materials in connection therewith
`First Use: November 25, 1999
`
`
`
`
`
`
`
`
`
`ASSOCIATION FOR
`FINANCIAL
`PROFESSIONALS
`
`
`
`SN:75-666273
`RN:2,537,041
`Filed: 3/23/1999
`Registered:
`2/5/2002
`
`FINANCIAL
`PROFESSIONALS
`
`
`
`III.
`
`PROCEDURAL HISTORY
`
`
`
`On June 8, 2010, AFP filed a Notice of Opposition against IMA’s application, Serial No.
`
`77/828,940, claiming priority and likelihood of confusion. On July 6, 2010, Applicant timely
`
`filed an answer and a counterclaim for cancellation of Opposer’s Registration No. 3,044,174.
`
`AFP filed an answer to the counterclaim on August 20, 2010. Discovery opened on September
`
`20, 2010, and is scheduled to close on August 16, 2011 (pursuant to stipulated and approved
`
`extensions of time). A Stipulated Protective Order was approved by the Board on March 4, 2011.
`
`
`
`- 4 -
`
`

`
`
`
`
`
`Applicant now moves for summary judgment on the opposition against Application
`
`Serial No. 77/828,940.
`
`IV.
`
`FACTS
`
`
`
`The following facts are undisputed:
`
`‚
`
`Opposer’s ownership of marks. For purposes of this Motion, Applicant stipulates
`
`to Opposer’s ownership of valid and subsisting trademark registrations as set forth above.
`
`Applicant also stipulates for purposes of this Motion that ASSOCIATION FOR
`
`FINANCIAL PROFESSIONALS became distinctive for the services in Registration No.
`
`3,044,174 on January 5, 2005.
`
`‚
`
`Disclaimers in Opposer’s registrations. Opposer’s registrations, with the
`
`exception of Registration No. 3,044,174, contain disclaimers of “ASSOCATION FOR
`
`FINANCIAL PROFESSIONALS” or “FINANCIAL PROFESSIONALS”, as set forth in
`
`the table above (Section II).
`
`‚
`
`The term “association” is not distinctive. The term “association” alone is not
`
`distinctive of Opposer’s services. (AFP’s response to request for admission No. 2,
`
`attached to this Motion as Exhibit 1.)
`
`‚
`
`The term “financial professionals” is not distinctive. The term “financial
`
`professionals” alone is not distinctive of Opposer’s services. (AFP’s response to
`
`interrogatory No. 6, attached to this Motion as Exhibit 2.)
`
`‚
`
`The services covered by Opposer’s registrations. The identification of services in
`
`Opposer’s registrations include the terms “association” and “financial professionals.”
`
`‚
`
`Goods and Services. For purposes of this Motion, Applicant stipulates that the
`
`parties’ respective goods and services under the relevant marks are overlapping.
`
`
`
`- 5 -
`
`

`
`
`
`‚
`
`Trade Channels. For purposes of this Motion, Applicant stipulates that the
`
`parties’ services travel through the same trade channels.
`
`‚
`
`Actual confusion. Neither party is aware of any instances of actual confusion.
`
`(AFP’s response to Interrogatory No. 4, attached to this Motion as Exhibit 2; IMA’s
`
`response to Interrogatory No. 12, attached to this Motion as Exhibit 3.)
`
`‚
`
`Dictionary definitions. Copies of dictionary definitions of
`
`the words
`
`“association”, “financial”, and “professionals” are attached to this Motion as Exhibit 4.
`
`‚
`
`Applicant’s registration No. 2,285,425 for the mark IMA. A copy of Applicant’s
`
`federal trademark registration record from the USPTO’s website is attached to this
`
`Motion as Exhibit 5.
`
`‚
`
`Third party registrations. A third party, Million Dollar Round Table, owns
`
`registrations for the following marks, records for which are collectively attached to this
`
`Motion as Exhibit 6:
`
`Description
`
`Reg. No.
`
`Services
`
`3,711,245
`
`2,730,920
`(Supplemental)
`
`3,674,330
`
`association services,
`namely, promoting the
`interest of life insurance
`underwriters
`association services,
`namely, promoting the
`interest of life insurance
`underwriters
`charitable fund raising
`services
`
`3,743,723
`
`charitable fund raising
`services
`
`THE PREMIER ASSOCIATION OF
`FINANCIAL PROFESSIONALS
`
`registered pursuant to Section 2(f)
`THE PREMIER ASSOCIATION OF
`FINANCIAL PROFESSIONALS
`
`registered on the Supplemental Register
`FINANCIAL PROFESSIONALS
`CHANGING LIVES WORLDWIDE
`
`(“FINANCIAL PROFESSIONALS”
`disclaimed)
`MDRT FOUNDATION FINANCIAL
`PROFESSIONALS CHANGING
`LIVES WORLDWIDE & Design
`
`(“FOUNDATION” and “FINANCIAL
`PROFESSIONALS” disclaimed)
`
`- 6 -
`
`
`
`
`
`

`
`
`
`
`
`
`
`‚
`
`Articles regarding third parties. There are numerous articles in print publications
`
`describing non-parties as an “association” for, of, or serving, “financial professionals.”
`
`Copies of the following printouts of these print articles from the NEXIS database are
`
`attached as Exhibits 7-25 to this Motion:
`
`Description
`Million Dollar Round Table Foundation: “(premier) association of financial
`professionals”
`Government Finance Officers Association: "a nonprofit professional
`association serving ... government financial professional"
`National Association of Insurance and Financial Professionals
`Korean American Insurance and Financial Professional Association
`Financial Executives International: an “association of financial professionals”
`CFA Institute: “an American association of financial professionals”
`
`Healthcare Financial Management Association: “premier professional
`association and continuing education body for financial professionals serving
`in the healthcare industry”
`Financial Women International: “association for women financial
`professionals”
`Wealth Advisor Institute: “an association of financial professionals”
`Social Investment Forum: “a national association of businesses, nonprofit
`groups and financial professionals”
`Financial Managers Society: “the only association devoted exclusively to
`serving financial professionals from community banks, thrifts and credit
`unions”
`Financial Planning Association: “an international association of approximately
`30,000 financial professionals”
`Forum for Investor Advice: “a nonprofit association of financial professionals
`and companies”
`National Funding Association: “a national networking association of financial
`professionals”
`The National Ethics Bureau: “an association for financial professionals”
`
`Bank Insurance & Securities Association: “an association for firms and
`financial professionals”
`
`Exh.
`7
`
`8
`
`9
`10
`11
`12
`
`13
`
`14
`
`15
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`‚
`
`Third party websites. Copies of the following web page printouts are attached to
`
`this Motion:
`
`Description
`
`pages from mdrt.org and mdrtfoundation.org, the websites of Million Dollar
`Round Table: the “premier association of financial professionals”
`
`- 7 -
`
`Exh.
`
`23
`
`

`
`Description
`
`pages from kaifpa.org: the Korean American Insurance & Financial
`Professional Association
`
`Exh.
`
`24
`
`Articles regarding IMA. Several articles about Applicant, published prior to the
`
` ‚
`
`
`
`
`
`filing date of IMA’s application, describe Applicant as an “association” of, or for,
`
`“financial professionals. Copies of the following printouts from the NEXIS database are
`
`collectively attached to this Motion as Exhibit 25:
`
`Description
`
`2000 article describing IMA as "an association of financial professionals"
`
`2000 article describing IMA as "the world's largest association for financial
`professionals"
`2002 article describing IMA as "the world's leading association for accounting
`and financial professionals"
`2004 article describing IMA as an "association of financial professionals"
`
`2005 article listing IMA as one of 5 major "financial professional associations
`in the United States"
`2006 journal article describing IMA as “an association of accounting and
`financial professionals”
`
`
`
`V.
`
`DISCUSSION
`
`
`
`A.
`
`Standard for Summary Judgment
`
`The Court of Appeals for the Federal Circuit has encouraged resolution of Board
`
`proceedings by means of summary judgment. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc.,
`
`4 USPQ2d 1793, 1795 (Fed. Cir. 1987). "[T]he purpose of summary judgment is one of judicial
`
`economy, namely, to save the time and expense of a useless trial where no genuine issue of
`
`material fact remains and more evidence than is already available in connection with the
`
`motion … could not be reasonably expected to change the result." University Book Store v.
`
`University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
`
`
`
`- 8 -
`
`

`
`
`
`Rule 56(c) provides in part:
`
`The judgment sought should be rendered if the pleadings, the discovery and
`disclosure materials on file, and any affidavits show that there is no genuine issue
`as to any material fact and that the movant is entitled to a judgment as a matter of
`law.
`
`Fed. R. Civ. P. 56(c). As stated by the Supreme Court, "the motion … should … be granted so
`
`long as whatever is before the [Board] … demonstrates that the standard for entry of summary
`
`judgment, as set forth in Rule 56(c), is satisfied." Celotex Corp. v. Catrett, 477 U.S. 317, 323
`
`(1986).
`
`A genuine dispute with respect to a material fact exists only if the non-moving party
`
`presents sufficient evidence so that a reasonable fact finder could decide the question in its favor.
`
`Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
`
`1992). The Board must resolve all reasonable inferences in the light most favorable to the non-
`
`moving party. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
`
`1992).
`
`
`
`B.
`
`No Likelihood of Confusion
`
`The analysis of “whether a likelihood of confusion exists is an issue of law based on the
`
`underlying facts.” Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1256 (Fed.
`
`Cir. 2011); China Healthways Institute Inc. v. Xiaoming Wang, 83 USPQ2d 1123, 1124 (Fed. Cir.
`
`2007).
`
`Although all probative facts in evidence that are relevant to the factors set forth in In re E.
`
`I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), should be
`
`considered, “[n]ot all of the DuPont factors are necessarily ‘relevant or of equal weight in a
`
`given case, and any one of the factors may control a particular case.’” Citigroup Inc. v. Capital
`
`City Bank Group Inc., 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (citing In re Majestic Distilling
`
`
`
`- 9 -
`
`

`
`
`
`Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201 (Fed. Cir. 2003)). Furthermore, the “fundamental
`
`inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
`
`characteristics of the goods and differences in the marks.” Knight Textile Corp. v. Jones
`
`Investment Co., 75 USPQ2d at 1315 (quoting Federated Foods, Inc. v. Fort Howard Paper Co.,
`
`544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
`
`Where a registrant’s mark is so highly descriptive, highly suggestive or weak, confusion
`
`may be unlikely even if the applicant’s mark incorporates the senior mark in its entirety.
`
`Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 951 (TTAB 1983) (registrant’s BOND-
`
`PLUS versus applicant’s WONDER BOND PLUS).
`
`Knight Textile Corp. v. Jones Investment Co.
`
`1.
`
`The facts in the instant case are similar to Knight Textile Corp. v. Jones Investment Co.,
`
`75 USPQ2d 1313 (TTAB 2005). In that case, the Board found that there was no likelihood of
`
`confusion between the opposer’s mark ESSENTIALS and the applicant’s mark NORTON
`
`MCNAUGHTON ESSENTIALS because the marks were so dissimilar, even though other du
`
`Pont factors favored opposer.
`
`Opposer relied upon its mark ESSENTIALS, registered for “women’s clothing, namely
`
`pants, blouses, shorts, and jackets for women.” Affidavits under Trademark Act Sections 8 and
`
`15 had been accepted and acknowledged. Knight Textile Corp. at 1314-15. The application for
`
`NORTON MCNAUGHTON ESSENTIALS was for “ladies’ sportswear, namely, shirts, shorts,
`
`pants, jumpers, dresses, skirts, jackets, blouses and vests.”
`
`The Board found applicant’s goods to be “in part identical to and otherwise highly similar
`
`to the goods identified in opposer’s pleaded registration.” The Board also found the parties’
`
`respective goods to be marketed in the same trade channels and to the same classes of purchasers.
`
`
`
`- 10 -
`
`

`
`
`
`No evidence of third party use of similar marks was of record. Id. All of these factors favored
`
`opposer.
`
`However, the Board found the parties’ respective marks to be “dissimilar rather than
`
`similar when viewed in their entireties....” Id. at 1315. While noting the common term
`
`“ESSENTIALS”, the Board found that “the marks are dissimilar in terms of sight, sound and
`
`meaning to the extent that applicant’s mark, but not opposer’s, includes and begins with the
`
`words NORTON MCNAUGHTON, which would be perceived to be applicant’s house mark.”
`
`Id. The Board stated:
`
`In terms of overall commercial impression, we find that although the word
`ESSENTIALS is the entirety of the commercial impression created by opposer’s
`mark, in applicant’s mark it contributes relatively less to the mark’s commercial
`impression than does the house mark NORTON MCNAUGHTON. This is
`because . . . we find that the word ESSENTIALS is highly suggestive as applied
`to the parties’ clothing items and as it appears in both parties’ marks, especially in
`applicant’s mark.
`
`Id. The Board took judicial notice of the dictionary definition of “essential,” and found that
`
`although there was no evidence of third party use in the record, the third-party registrations of
`
`marks containing the term “ESSENTIALS” could be given some weight to corroborate the
`
`dictionary definition. Id. at 1316.
`
`In conclusion, the Board found that:
`
`confusion is unlikely to result from contemporaneous use of opposer’s
`ESSENTIALS mark and applicant’s NORTON MCNAUGHTON ESSENTIALS
`mark, even where the marks are used on identical goods marketed in the same
`trade channels and to the same classes of purchasers. We find that the
`dissimilarity of the marks, under the first du Pont factor, simply outweighs the
`evidence as to the other factors which favor opposer’s case.
`
`Id. at 1317.
`
`
`
`
`
`- 11 -
`
`

`
`
`
`2.
`
`Dissimilarity of the Marks Under the First du Pont Factor Is
`Controlling in this Case
`
`
`In the instant case, confusion is even less likely than in the Knight Textile case.
`
`Applicant’s mark is:
`
`
`
`Applicant’s mark begins with the letters “IMA” in large font; IMA is Applicant’s house mark
`
`and the subject of trademark registration number 2,285,425. A copy of this registration record
`
`from the TESS database is attached to this Motion as Exhibit 5. “[I]n general, distinctive terms
`
`appearing first in marks are more likely to play a prominent role in forming a commercial
`
`impression than any latter, less distinctive terms.” Hunt Control Systems Inc. v. Koninklijke
`
`Philips Electronics N.V., 98 USPQ2d 1558, 1568 (TTAB 2011).
`
`The remainder of the wording in Applicant’s mark is not identical to any of Opposer’s
`
`marks because Applicant’s mark contains additional wording. Furthermore, unlike
`
`ESSENTIALS for women’s clothing, the terms “Association” and “Financial Professionals”
`
`directly identify the services covered by Opposer’s registrations and the opposed application.
`
`Applicant requests that the Board take judicial notice of dictionary definitions of the
`
`words “association”, “financial” and “professional”. TBMP § 704.12(a). The Random House
`
`Dictionary of the English Language (2d. ed., unabridged, 1987) includes the following
`
`definitions:
`
`association: an organization of people with a common purpose and having a formal
`structure
`
`
`financial:
`
`of or pertaining to those commonly engaged in dealing with money and
`credit
`
`
`
`- 12 -
`
`

`
`
`
`professional: a person who belongs to one of the professions, esp. one of the learned
`professions
`
`
`Copies of these definitions are attached as Exhibit 4.
`
`Merriam-Webster’s online dictionary includes the following definitions:
`
`association: an organization of persons having a common interest
`
`financial:
`
`relating to finance or financiers
`
`professional: one that is professional; especially : one that engages in a pursuit or
`
`activity professionally
`
`Copies of these definitions also are attached as Exhibit 4. The American Heritage Dictionary
`
`(Second College Edition, 1985) also contains similar definitions, and copies are attached as part
`
`of Exhibit 4.
`
`The word “association” is generic for association services, and the term “financial
`
`professionals” describes the group to whom (and for whom) the association renders its services.
`
`The fact that the words common to the parties’ marks are generic or highly descriptive reduces
`
`the likelihood of confusion. See Gruner + Jahr USA Publishing v. Meredith Corp., 26 USPQ2d
`
`1583 (2d Cir. 1993)(PARENTS unlikely to be confused with PARENTS DIGEST because
`
`“parents” is extremely weak). Prospective purchasers encountering the wording “The
`
`Association for Accountants and Financial Professionals in Business” in IMA’s mark are likely
`
`to view it as a description of Applicant, and not an indication of origin.
`
`
`
`The following facts corroborate the determination that ASSOCIATION and FINANCIAL
`
`PROFESSIONALS are generic or highly descriptive terms for the services offered by the parties:
`
`‚
`
`The disclaimers of “ASSOCIATION FOR FINANCIAL PROFESSIONALS”,
`
`“ASSOCIATION”, and “FINANCIAL PROFESSIONALS” in Opposer’s various
`
`registrations respectively (excepting Registration No. 3,044,174, which was registered
`
`
`
`- 13 -
`
`

`
`
`
`pursuant to Section 2(f)), as indicated in Section II above and stated in Opposer’s
`
`registration records as attached to the Complaint.
`
`‚
`
`The inclusion of “association” and “financial professionals” in the identification
`
`of services in Opposer’s registrations.
`
`‚
`
`The requirement by the Examining Attorney that Applicant disclaim the wording
`
`“THE ASSOCIATION FOR ACCOUNTANTS AND FINANCIAL PROFESSIONALS
`
`IN BUSINESS” apart from the mark, and Applicant’s subsequent entry of the disclaimer.
`
`‚
`
`News articles describing third party associations and IMA as “association(s)”
`
`for/of “financial professionals”.
`
`‚
`
`Use and registration of THE PREMIER ASSOCIATION FOR FINANCIAL
`
`PROFESSIONALS by Million Dollar Round Table, as evidenced by its registrations
`
`(Exhibit 6), news articles (Exhibit 7), and its website (Exhibit 23).
`
`‚
`
`AFP’s discovery responses stating that neither “association” nor “financial
`
`professionals” is distinctive for AFP’s services.
`
`VI. CONCLUSION
`
`
`
`Applicant submits that its mark:
`
`
`
`is so different from Opposer’s marks that confusion is unlikely as a matter of law. The words
`
`“association” and “financial professionals” being generic or highly descriptive for the services
`
`offered by the parties and their prospective purchasers, reasonable purchasers of the parties’
`
`services are likely to ascribe to the words their descriptive meaning, and are not likely to be
`
`
`
`- 14 -
`
`

`
`confused as to the source ofthe services, especially when they first see Applicant’s house mark
`
`IMA. Applicant submits that there is no material fact
`
`in dispute that could alter this legal
`
`conclusion, and therefore that summaryjudgment in favor of registration of Applicant’s mark is
`
`appropriate.
`
`Respectfully submitted,
`
` ordan S. Weinstein
`
`Kyoko Imai
`Oblon, Spivak, McClelland,
`Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, Virginia 22314
`
`(703) 413-3000
`fax (703)413-2220
`e-mail: tmd0cket@0bl0n.c0m
`
`Counsel for Applicant
`
`Date: Septemberl3, 2011
`JSW/Kl/DHA/cds
`:5854377_1.ooc-,
`
`-15-
`
`

`
`
`
`Table of Exhibits
`
`
`Exhibit
`Description
`AFP’s response to request for admission No. 2...................................................................1
`AFP’s response to interrogatory Nos. 4 and 6 .....................................................................2
`IMA’s response to interrogatory No. 12 ..............................................................................3
`Dictionary definitions of the words “association”, “financial”, and “professionals” ..........4
`Registration No. 2,285,425 for the mark IMA.....................................................................5
`Third Party Million Dollar Round Table’s Trademark Registrations..................................6
`NEXIS database articles:
`Million Dollar Round Table Foundation: “(premier) association of financial
`
`professionals”...........................................................................................................7
`Government Finance Officers Association: "a nonprofit professional association
`
`serving government financial professional" ............................................................8
`National Association of Insurance and Financial Professionals ....................................9
`Korean American Insurance and Financial Professional Association .........................10
`Financial Executives International: an “association of financial professionals”.........11
`CFA Institute: “an American association of financial professionals” .........................12
`Healthcare Financial Management Association: “premier professional
`
`association and continuing education body for financial professionals
`
`serving in the healthcare industry” ........................................................................13
`Financial Women International: “association for women financial professionals”.....14
`Wealth Advisor Institute: “an association of financial professionals” ........................15
`Social Investment Forum: “a national association of businesses, nonprofit
`
`groups and financial professionals”.......................................................................16
`Financial Managers Society: “the only association devoted exclusively to serving
`
`financial professionals from community banks, thrifts and credit unions” ...........17
`Financial Planning Association: “an international association of approximately
`
`30,000 financial professionals”..............................................................................18
`Forum for Investor Advice: “a nonprofit association of financial professionals
`
`and companies”......................................................................................................19
`National Funding Association: “a national networking association of financial
`
`professionals”.........................................................................................................20
`The National Ethics Bureau: “an association for financial professionals”..................21
`Bank Insurance & Securities Association: “an association for firms and financial
`professionals”.........................................................................................................22
`Web pages from mdrt.org and mdrtfoundation.org ...........................................................23
`Web pages from kaifpa.org................................................................................................24
`NEXIS database articles on IMA.......................................................................................25
`
`
`
`
`- 16 -
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy ofthe foregoing APPLICANT’S MOTION FOR SUMMARY
`JUDGMENT ON THE OPPOSITION AND SUPPORTING MEMORANDUM OF LAW was
`served on counsel for Opposer, this 13th day of September, 2011, by sending same via e—mail to:
`
`Terence P. Ross tross@crowe11.com
`Ann M. Mace amace@crowe11.com
`W. Sauers wsauers@crowe11.com
`A. Field afie1d@crowel1.com
`edocket@crowe1I.com
`
`/4/22
`
`

`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`ASSOCIATION FOR FINANCIAL
`)
`PROFESSIONALS,
`
`
`
`)
`
`
`
`
`
`
`)
`
`Opposer and Counterclaim
`
`)
`
`Defendant,
`
`
`
`)
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`INSTITUTE OF MANAGEMENT
`
`)
`ACCOUNTANTS,
`
`
`
`)
`
`
`
`
`
`
`)
`
`
`Applicant and
`
`)
`
`
`Counterclaim Plaintiff
`____________________________________)
`
`
`Opp. No.
`App. No.
`Mark:
`
`
`
`
`
`
`
`
`
`
`
`
`
`91,195,214
`77/828,940
`IMA THE
`ASSOCIATION FOR
`ACCOUNTANTS AND
`FINANCIAL
`PROFESSIONALS IN
`BUSINESS
`
`
`ASSOCIATION FOR FINANCIAL PROFESSIONALS’
`FIRST AMENDED RESPONSES TO APPLICANT’S FIRST REQUEST FOR
`ADMISSIONS
`
`Association for Financial Professionals (“AFP”) hereby submits its First Amended
`
`Responses to Applicant’s First Request for Admission pursuant to Rule 36 of the Federal Rules
`
`of Civil Procedure, and Sections 2.116 and 2.120 of the U.S. Trademark Law Rules of Practice
`
`and Federal Statutes. AFP reserves the right to amend these First Amended Responses to
`
`Applicant’s First Request for Admissions as additional information becomes available or if any
`
`information has been inadvertently omitted.
`
`General Objections
`
`1.
`
`Opposer objects to the requests to the extent that they request information that is
`
`covered by the attorney-client privilege and/or work product doctrine or any other applicable
`
`privilege. Any responsive documents will be reflected on a privilege log at the appropriate time.
`
`

`
`2.
`
`Opposer objects to each request that purports to impose upon Opposer any
`
`obligation greater than or different from those required under the Federal Rules of Civil
`
`Procedure, the rules of the Trademark Trial and Appeal Board, or applicable case law.
`
`3.
`
`Opposer objects to the requests to the extent that they seek confidential,
`
`proprietary, or commercially sensitive information. To the extent that such information is
`
`otherwise discoverable, Opposer will provide it to Applicant pursuant to terms of a suitable
`
`Protective Order entered by the TTAB.
`
`4.
`
`The following responses reflect Opposer’s present knowledge, information, and
`
`belief, and may be subject to change or modification based on Opposer’s further discovery, or on
`
`facts or circumstances that may come to Opposer’s knowledge.
`
`5.
`
`Opposer objects to the requests to the extent that they request identification of
`
`documents. Where appropriate, Opposer will produce non-privileged documents pursuant to
`
`Fed. R. Civ. P. 33(d) instead of undertaking the burden of identifying the documents. A
`
`response stating that Opposer will produce/provide documents, things or information is not a
`
`representation that any resp