Wednesday, May 25, 2011

Differences in Financial Goods/Services, Sophistication of Customers Lead TTAB to Reverse 2(d) HOMER Refusal

Despite the identity of the involved marks, the Board reversed a Section 2(d) refusal to register the mark HOMER for financial engineering software and services for institutions, accredited investors, governments, hedge funds, and bankers, finding it not likely to cause confusion with the same mark registered for "savings and loan financial services." In re Barkley International Incorporated, Serial No. 77311059 (May 4, 2011) [not precedential].

Actually, the Examining Attorney cited three registered marks for savings and loan services: one for HOMER, one for HOMER'S CLUB, and one for a design form of HOMER'S CLUB. The Board focused on the mark HOMER, since a finding of no likelihood of confusion with that mark perforce means that the other two cited marks are not confusingly similar.

The Examining Attorney argued that the involved goods and services are related “because they are financial in nature and involve potentially overlapping clients or markets.” She submitted third-party registrations purporting to show that consumers are familiar with entities offering these goods and services under the same mark.

The Board found that, although the third-party registrations contains “some of the wording” from Applicant’s identification of goods, none “contains the clear limitation present in applicant’s identification “for institutions, accredited investors, governments, hedge funds, and bankers.’” Accredited investors comprises a very specialized group, defined by the Securities Act of 1933.

“Accordingly, the third-party registrations, which do not include goods and services 'for institutions, accredited investors, governments, hedge funds, and bankers' are not availing to show similarity of the goods and services at issue in this case.”

The Board found that “Applicant’s identification, on its face, shows that applicant’s goods and services are different from, and would be marketed via distinct channels of trade from, those in the cited registration.”

"In this case, we note that applicant’s purchasers, i.e., its “highly sophisticated” investors are “high net worth institutions and accredited individuals.” (applicant’s brief at 14). Applicant requires these clients to be “accredited investors” under the Securities Act of 1933, as defined, supra. (Koziol decl. at ¶ 10). Under these circumstances, we find that the purchasers of applicant’s goods and services are extremely knowledgeable and careful in their purchasing decisions."

In sum, "applicant’s goods and services clearly are very expensive and would be bought
only by highly knowledgeable, discriminating and sophisticated purchasers after thorough deliberation." The Board therefore concluded that confusion is not likely.

TTABlog note: The cited registrations are owned by a bank called Home Savings Bank. "Homer" is a cartoon character used in advertising the bank. Do you think that fact had some influence on the Board's decision?

Text Copyright John L. Welch 2011.


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