Monday, June 13, 2011

Test Your TTAB Judge-Ability: Are "LION GLOBAL INVESTORS" and "LION" Confusingly Similar for Financial Services?

The PTO refused registration of the mark LION GLOBAL RESOURCES for various financial services [GLOBAL INVESTORS disclaimed] in view of the registered mark LION for partly identical financial services. Applicant argued that LION is a weak formative in view of seven registrations in class 36 for marks that include LION, and the Board observed that purchasers of investment management and financial advisory services will exercise a high degree of care. So what's your decision? In re Lion Capital Management Limited, Serial No. 79051786 (May 25, 2011) [not precedential].

Of course, with the services overlapping and with no limitations as to trade channels or customers, the Board presumed that they "move in all channels of trade normal for those services" [Do services move? - ed.] and are available to all classes of purchasers for those services.

Again of course, when the services overlap, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, the Board not surprisingly found the word LION to be the dominant portion of the applied-for mark. The appearance of LION as the first word in the mark reinforced that dominance.

Applicant argued that the word LION "is diluted when used in connection with investment management and financial advisory services and, therefore, ... should be accorded only a narrow scope of protection." It submitted seven third-party registrations for "LION" marks, for services related to investment and financial services, in an effort to show that “Lion” marks can co-exist on the Principal Register in class 36.

The Board, however, pointed out that mere registrations "have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them." And although third-party registrations may, at times, be used like a dictionary to show that a term has a suggestive or descriptive meaning, the Board saw no such meaning for the word "LION."

The Board observed that purchasers of these services will exercise a high degree of care, and therefore will "focus on the trademark for the services and become aware of the source of the service because these purchases will be characterized by a personal sales experience by knowledgeable salespersons and a focused need for the services. However, even sophisticated purchasers are not immune to confusion when the marks are similar and the services in part identical.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.


At 9:01 AM, Blogger matthew h said...

Seems close to WYHA? territory.

At 1:54 PM, Blogger John L. Welch said...

Very close, I think.


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