On June 30, 2011, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a non-precedential opinion in In re MarineMax, Inc. In its decision, the TTAB affirmed the Examining Attorney’s refusal to register MarineMax, Inc.’s trademark applications for DEALER FINANCIAL SERVICES and DEALER FINANCIAL SERVICES GROUP, both in standard characters and in design form based on a likelihood of confusion with Dealers’ Finance Co., LLC’s U.S. Trademark Registration No. 3,540,836 for DEALERS FINANCE COMPANY design mark.

In affirming the refusal, the TTAB noted that the services at issue were also similar.  The Applicant sought to register its marks in connection with “financial services, namely, providing loans for purchase or refinance; insurance brokerage services, namely, brokering of property insurance and casualty insurance for boats, recreational vehicles and other means of transportation and providing extended warranties on/for boats, recreational vehicles and other means of transportation,” in International Class 36.  The registered mark was registered in connection with “automobile financing services; financing relating to automobiles; financing services,” in International Class 36.

Finally, the TTAB also rejected Applicant’s contention that the sophistication of the parties’ respective customers would obviate any likelihood of confusion:

Applicant urges us to consider consumer sophistication and consumer care in selecting the services. In this regard, as with the other du Pont factors, we make our determination based on the parties’ respective identifications of services and not based on actual use of the mark(s). Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [citations omitted]).

We have no doubt that “financial services,” including the “automobile financing services” and general “financing services” identified in the cited registration, could be sold to the general population seeking financial services or automobile financing, which would include unsophisticated consumers who would use ordinary care in selecting such services. Applicant argues that because its customers must typically “apply to receive the services and complete an application requiring personal and financial and information,” then “logically,” the degree of care must be higher. (Reply brief at 5). Applicant has not indicated how care in filling out forms ameliorates any likelihood of source confusion, when the decision to use a particular financing company is made prior to filling out such forms. Also, applicant has not introduced evidence into the record to support applicant’s arguments; furthermore, if it had, our conclusion would not be any different because we must consider solely the identifications of services as they are presented and they encompass those consumers who would not be sophisticated in their selection of the services. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration).

Finally, applicant argues that the sophistication and conditions of purchasers is evidenced by a number of instances where registrations have been granted to different entities for marks similar to each other for related services in this field indicating that “[a] notable characteristic of the financial services industry is that highly similar and even identical descriptive and weak marks are used by multiple trademark owners.” (Appl’s brief at 14). Applicant offered a number of examples of this pairing (including for example marks that share the common words “FIRST BANK”; “FIRST NATIONAL BANK”; and “eFinance”). We are aware, of course, that varying results can be reached depending on varying goods or services and varying marks. The evidence submitted by applicant does not show an established practice in this industry or field, and the Board is not bound by prior decisions or records. As the Federal Circuit instructs, every case must be decided on its own merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Accordingly, we deem this du Pont factor to weigh in favor of finding a likelihood of confusion for each of applicant’s marks.

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