TTAB Test: Is FUNDAMENTAL DASHBOARD Confusable With FUNDAMENTAL CAPITAL for Financial Services?
Fundamental Capital opposed an application to register FUNDAMENTAL DASHBOARD for financial analysis and research services, claiming likelihood of confusion with its registered mark FUNDAMENTAL CAPITAL for financial investment services. The Board found the services to be overlapping or closely related, but what about the marks? Opposer's mark was registered under Section 2(f), and applicant submitted evidence of nine third-party websites and 18 third-party registrations for marks or names that include the word FUNDAMENTAL in the financial field. How do you think this came out? Fundamental Capital, LLC v. Global Select Research LLC, Opposition No. 91221151 (December 5, 2016) [not precedential].
The words "capital" and "dashboard" are descriptive in the context of the parties' respective services. Therefore the Board found that the word FUNDAMENTAL is the dominant portion of each mark. Opposer's registration under Section 2(f) was a concession that FUNDAMENTAL CAPITAL "is merely descriptive." [Or maybe just that not inherently distinctive? - ed.]. The third-party registrations included the marks FUNDAMENTAL INVESTORS, FUNDAMENTAL EQUITY, and FUNDAMENTAL CHOICE.
Even though there was no evidence regarding sales or promotional efforts regarding the third-party marks, registrations plus web pages may be sufficient to show that a term is weak "where a considerable number of third parties use similar marks in connection with similar goods or services." Here, however, there was evidence of use of only three of the registered marks. (Compare Jack Wolfskin, where there were 14 such examples).
Third-party registrations, standing alone, may show the sense in which the term FUNDAMENTAL is used and understood. Here the examples of use and registration "tend to show at minimum suggestiveness of the term FUNDAMENTAL in this field." However, the record does not establish that FUNDAMENTAL is used to such an extent that customers "have been educated to distinguish between different ... marks on the basis of minute distinctions."
Thus, although this third-party evidence does weigh in favor of applicant by narrowing the scope of protection merited by the term FUNDAMENTAL, "it does not outweigh the factors of the similarity of the marks, relatedness of services and trade channels in this case." The addition of the words CAPITAL and DASHBOARD to the respective marks does not change the commercial impressions of the marks to avoid confusion, nor does the evidence establish that FUNDAMENTAL is so diluted as to preclude confusion.
And so the Board sustained the opposition.
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TTABlog comment: What do you think? FWIW - The Board seems always to be pulling back from Juice Generation and Jack Wolfskin.
Text Copyright John L. Welch 2016.