Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE CHICAGO CORPORATION
NORTH AMERICAN CHICAGO CORP.
August 2, 1991
Opposition No. 80,998, to application Serial No. 711,996 filed February 18, 1988
Richard W. Young and Louis K. Ebling of Gardner, Carton & Douglas for The Chicago Corporation
John P. Halvonik of Law Offices of John P. Halvonik for North American Chicago Corp.
Before Sams, Rooney & Quinn
Opinion by Quinn
An application has been filed by North American Chicago Corp. to register the mark shown below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for educational services, namely providing courses and seminars to train individuals to become licensed securities representatives. [FN1]
Registration has been opposed by The Chicago Corporation on the grounds that applicant's mark, when applied to its services, so resembles opposer's previously used mark THE CHICAGO CORPORATION for financial and securities investment services as to be likely to cause confusion, mistake or deception. [FN2]
Applicant, in its answer, denied the salient allegations of the opposition and set forth affirmative defenses.
The record consists of the pleadings; the file of the involved application; the trial testimony (and related exhibits) of Victor Elting III, an officer of opposer; applicant's responses to opposer's interrogatories, and numerous documents relied upon by opposer by way of its notice of reliance. Applicant did not take any testimony or offer any other evidence. [FN3] Both parties filed briefs on the case. An oral hearing was not requested.
Opposer, as shown by the testimony of Mr. Elting, was founded in 1965. At the time of its founding opposer acted as a securities broker/dealer selling securities to individuals and institutions; opposer was also engaged in corporate finance, that is, raising capital for corporations. In later years opposer expanded its activities to include asset management by way of investment advising. In addition to these services, opposer conducts seminars and other educational programs related to financial and securities investments. These programs are directed to individuals of varying sophistication, from individual investors to institutional risk managers and finance professionals. Opposer has grown from 30 employees to over 600 employees at the present time. Opposer's revenues in 1989 exceeded $100 million. Annual advertising expenditures total more than $150,000. Advertisements have appeared in publications such as The Wall Street Journal and The Chicago Tribune. Opposer also has done direct-mailing advertising. Opposer presently has about 10,000 active investor accounts.
Applicant, as can be gleaned only from its responses to interrogatories, is engaged in "consulting and trading." Applicant apparently did some advertising although the advertisements are unavailable. No information was given on revenues, if any, generated under applicant's mark.
The record establishes opposer's priority of use. In the absence of any testimony or evidence, the earliest date of use upon which applicant may rely is the filing date of the involved application. See: David Crystal, Inc. v. Glamorise Foundations, Inc., 189 USPQ 740 (TTAB 1975). Opposer has shown continuous use of the designation THE CHICAGO CORPORATION from a date long prior to applicant's filing date.
*2 As to the services, it is often stated that it is not necessary that the services be similar or competitive to support a holding of likelihood of confusion. It is sufficient that the services are so related or that conditions surrounding their marketing are such that they are encountered by the same persons who, because of the relatedness of the services and the similarities of the marks, would believe mistakenly that the services originate from or are in some way associated with the same source. See, e.g., Hercules Inc. v. National Starch and Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984). We find that the services are so related in this case. As shown by the record, opposer offers a wide range of investment, financial and securities services under the designation THE CHICAGO CORPORATION. These services include educational seminars in areas such as personal investing and futures and options trading for securities professionals. As pointed out by opposer, in the absence of any restriction in the recitation of services, applicant's services must be assumed to move through all of the normal channels of trade for services of this type and reach all of the normal purchasers of such services. See: The Alliance Manufacturing Co., Inc. v. ABH Diversified Products, Inc., 226 USPQ 348, 350 (TTAB 1985). When so considered, it is apparent that the parties' services are marketed and sold through the normal channels of trade for financial and securities services and would be offered and sold to the same class of purchasers in the financial and securities field.
We next turn to consider the marks. Applicant has incorporated a portion of opposer's mark, namely CHICAGO CORP, and added a geographical term and a design feature. While the addition thereof in applicant's mark creates obvious differences in the marks, we view the differences as insufficient to avoid a likelihood of confusion with opposer's mark. The marks, when considered in their entireties, engender similar commercial impressions. [FN4]
Opposer has shown by Mr. Elting's testimony that an unspecified number of its customers, after receiving a direct-mailing from applicant, contacted opposer to see if applicant was connected or affiliated with opposer. Mr. Elting states that "whatever they [these customers of opposer] thought, there seemed to be some confusion in their minds between North American Chicago Corporation and The Chicago Corporation" (Elting dep., p. 37). This testimony stands unrebutted by applicant. While we are left to speculate, without direct testimony from opposer's customers, as to what the customers thought upon receiving applicant's direct-mailing, the circumstances would tend to show actual confusion. In any event, actual confusion is but one factor in our analysis, and we would find a likelihood of confusion in this case independent of the alleged actual confusion.
We conclude that customers familiar with opposer's investment services offered under the mark THE CHICAGO CORPORATION would be likely to believe, upon encountering applicant's mark NA NORTH AMERICAN CHICAGO CORP. and design for educational services, namely providing courses and seminars to train individuals to become licensed securities representatives, that the respective services originated with or were somehow associated with or sponsored by the same entity. [FN5]
*3 Decision: The opposition is sustained and registration to applicant is refused.
J. D. Sams
L. E. Rooney
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/711,996, filed February 18, 1988, alleging first use on May 28, 1980. The term "Corp." is disclaimed apart from the mark. Applicant has indicated that the mark consists, in part, of the letters "NA."
FN2. While opposer asserted, in the amended notice of opposition, that the declaration accompanying the involved application is fraudulent, this claim neither was pressed at trial nor mentioned in the brief. In fact, opposer's brief indicates that the sole issue in this case is likelihood of confusion. Accordingly, no consideration is given to opposer's fraud allegations which stand, in any event, unproven.
FN3. The Board, in an order dated November 27, 1990, granted opposer's motion to strike applicant's notice of reliance as untimely. We hasten to add, however, that even if the material accompanying the notice were properly of record, we would reach the same result in this case.
FN4. Opposer, in its brief, argues that its mark is famous in the securities trade. While there is no doubt that opposer has enjoyed considerable success in the securities investment field, we do not believe that this success translates to fame of opposer's mark. The overall record simply falls short of a persuasive showing of fame.
FN5. In reaching our conclusion, we obviously are aware of applicant's contention, raised for the first time in the brief at final hearing, that opposer lacks proprietary rights in the designation THE CHICAGO CORPORATION. Applicant contends that opposer's mark is geographically descriptive and further that opposer has failed to prove that its mark has acquired secondary meaning.
Applicant is correct in asserting that if a party's alleged trade designation does not in fact identify source, then there is no basis upon which to predicate a finding of likelihood of confusion. BellSouth Corp. v. Planum Technology Corp., 14 USPQ 1555, 1557 (TTAB 1988). That is to say, a likelihood of confusion cannot be recognized where one claimed to be aggrieved by that confusion does not have a proprietary right in the term upon which it relies to demonstrate likelihood of confusion as to source. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43-45 (CCPA 1981).
The problem with applicant's contention that opposer lacks proprietary rights is that this argument is raised for the very first time in this case in the final brief. Applicant's claim was not pleaded as an affirmative defense in its answer, and applicant did not introduce any testimony or evidence on its claim at trial. While applicant's allegations, if proved, might constitute a good defense and warrant a different result in this case, applicant's defense was never joined as an issue in this proceeding and the issue was never tried, either expressly or implicitly, by the parties. To allow applicant to interject its defense for the first time at final hearing would constitute an undue surprise for opposer who had no notice until well after trial that the defense would be raised by applicant. Inasmuch as applicant's defense neither was pleaded nor tried by the parties, the instant case is distinguishable from those situations where the Board has considered the merits of such a defense. Compare: NASA v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1676 (TTAB 1987); and Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 188-89 (TTAB 1983) [opposer, in its reply brief, conceded descriptiveness of its alleged mark].
In view of the above, no consideration has been given to applicant's allegations in its brief on the case.