Geographic and Market Separation Neutralizes Concurrent Use DuPont Factor

Overview

This case is a TTAB precedent.

In 2017, the Board affirmed the Examining Attorney's refusal to register Applicant's mark. However, the Federal Circuit vacated that ruling in 2019, noting that the Board had failed to address the Applicant's evidence regarding the eighth DuPont factor: the lack of actual confusion over forty years of concurrent use. The current decision represents the Board's analysis and findings on remand.

Specifically, the Board found that the dominant "GUILD" portion of both marks created a substantially similar commercial impression. Furthermore, the Board held that the Applicant's evidence of long-term concurrent use was insufficient to overcome the refusal because it lacked proof of actual geographic market overlap and failed to account for the Registrant's potential experiences with confusion.

Background

The Applicant, Guild Mortgage Company, filed an application seeking to register GUILD MORTGAGE COMPANY with design for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans" in International Class 36. The Applicant disclaimed the exclusive right to use "MORTGAGE COMPANY" apart from the mark as a whole.

The Trademark Examining Attorney refused the registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the mark GUILD INVESTMENT MANAGEMENT (Registration No. 3657486). This cited mark is registered for "investment advisory services" in Class 36 and contains a disclaimer for the terms "INVESTMENT MANAGEMENT."

How the Board Analyzed the DuPont Factors

In accordance with the instructions from the Federal Circuit, the Board conducted a comprehensive analysis of the relevant DuPont factors, incorporating the original record and briefing to determine whether a likelihood of confusion existed.

DuPont #1: Similarity of the Marks

The Board began by comparing the marks in their entireties, analyzing their appearance, sound, connotation, and commercial impression. It observed that the cited mark, GUILD INVESTMENT MANAGEMENT, is registered in standard characters, while the Applicant's mark features a specific typeface alongside a design element of three curved lines. Despite these visual differences, the Board emphasized that the literal portion of a composite mark is typically given more weight because it is the element consumers actually use to request the services.

Consequently, the Board found the term "GUILD" to be the dominant feature in both marks. In the Applicant's mark, "GUILD" stands out as the most visually striking element due to its prominent size and placement. Furthermore, the record showed that both the Applicant and the Registrant frequently referred to themselves simply as "Guild."

The Board rejected the Applicant's argument that "GUILD" carried different connotations in each mark. While the Applicant provided evidence that the Registrant's mark was derived from its founder's surname (Monty Guild), the Board took judicial notice of the dictionary definition of "guild" as an "association of people with similar interests." Ultimately, the Board concluded that consumers would likely perceive both marks suggestively, referring to a business group or "guild" providing financial services, whether that meant mortgages in one case or investment management in the other.

In the process of reaching its decision that the marks are similar, the Board addressed the conceptual strength of the shared term "GUILD." The Applicant argued that "GUILD" was weak, pointing to a TESS (Trademark Electronic Search System) search showing 315 registrations containing the word. However, upon closer inspection, the Board found only six registrations for services in Class 36, with only two of those involving real estate financing. The Board stated that this limited evidence was insufficient to prove the term was so conceptually weak that consumers would find the marks dissimilar as a whole.

Ultimately, the Board held that the similarities in connotation and commercial impression outweighed the differences in sight and sound.

DuPont #2: Relatedness of the Services

To determine the relatedness of the services, the Board compared the Applicant's "mortgage banking services" with the Registrant's "investment advisory services." The primary question was whether consumers would reasonably believe these distinct services emanated from a common source.

To prove this connection, the Examining Attorney provided approximately a dozen use-based, third-party registrations covering both types of services under a single mark. The Applicant attempted to counter this by arguing that these registrations were not probative because they belonged to massive, full-service banks. Furthermore, the Applicant argued that the Registrant's services should be narrowly defined as "discretionary management services" because, in reality, the Registrant caters exclusively to high-net-worth individuals and institutions.

The Board dismissed these arguments. It noted that a likelihood of confusion analysis must be based strictly on the identifications as written in the application and registration, rather than on real-world operational restrictions or subsets of services not explicitly stated in the record. Because the cited registration for "investment advisory services" contained no limitations, it was legally presumed to encompass all such services. Additionally, the Board pointed out that the Applicant failed to introduce any evidence showing that large banks are overinclusive in their service identifications.

For this factor, the Board found that the third-party registrations sufficiently established that these services are of a type that may emanate from a single source.

DuPont #3: Channels of Trade and Classes of Customers

Because there were no specific limitations in the descriptions of services, the Board applied the legal presumption that the services travel through all normal, usual channels of trade and are available to all classes of purchasers. Under this framework, the Board found that the same individuals who seek investment advice might also require mortgage banking services.

To support this finding, the Examining Attorney submitted evidence from the websites of major financial institutions demonstrating that they frequently offer both mortgage services and investment advisory services under a single, unified brand. Consequently, the Board concluded that these factors weighed in favor of finding a likelihood of confusion.

DuPont #4: Degree of Consumer Care

The Applicant urged the Board to consider that consumers seeking these types of financial services exercise a highly sophisticated degree of care, particularly given the "high-net-worth" nature of the Registrant's client base. While the Board acknowledged that consumers generally exercise a heightened level of caution when investing money or securing a mortgage, it reiterated that a likelihood of confusion analysis must be based on the "least sophisticated potential purchasers."

The Board noted that while some consumers may indeed be sophisticated, others might simply be everyday individuals looking for a mortgage loan who are focused primarily on obtaining funding. Consequently, the Board found that consumer sophistication weighed only slightly against a finding of a likelihood of confusion.

DuPont #8: Length of Concurrent Use Without Evidence of Actual Confusion

The Applicant presented a declaration from its President and CEO stating that the company had used its mark since 1960, starting in San Diego and eventually expanding to 46 states and over 250 offices. The Applicant also submitted evidence showing that the Registrant's business was registered in 1978 and based in Los Angeles. Based on this extensive history, the Applicant argued that forty years of peaceful coexistence in Southern California, without a single documented instance of confusion, proved that a likelihood of confusion was highly unlikely.

However, the Board performed a far more granular analysis of the geographic data. While the Registrant was based in Los Angeles and the Applicant in San Diego, the Board took judicial notice of the fact that these cities are 126.3 miles apart. Noting the massive populations of both metropolitan areas, the Board found that the parties were actually separated geographically and operated within entirely separate consumer bases.

The Board determined that the Applicant had failed to provide evidence of an actual, meaningful overlap in the specific local markets or neighborhoods where consumers would have been exposed to both marks simultaneously. Because there was no proof that the same consumers had encountered both marks in the same marketplace context, the Board deemed the eighth DuPont factor to be neutral.

Board’s Decision

The TTAB affirmed the refusal to register the mark GUILD MORTGAGE COMPANY and design under Section 2(d) of the Trademark Act. After weighing all relevant DuPont factors, the Board concluded that the striking similarities between the marks and the relatedness of the underlying services created a clear likelihood of confusion and the 8th DuPont factor did not outweigh the other factors favoring a likelihood of confusion.

It is rare to see an ex parte proceeding involve a meaningful analysis of the eighth DuPont factor. In fact, the Federal Circuit remanded this case precisely because the Board failed to consider the length of time and conditions of concurrent use without evidence of actual confusion.

This factor requires a shift from an analysis strictly bound by the written identifications in the application and registration to an evaluation of "real-world" market conditions.

Despite the forty-year timeframe, the Applicant failed to prove that consumers had actually been exposed to both marks in the marketplace in a way that would give actual confusion a meaningful opportunity to occur. Because the Board deemed the factor neutral, it did not outweigh the other factors favoring a likelihood of confusion, and the refusal to register was affirmed.

The bar seems high to move the needle on this factor during ex parte proceeding, largely due to the inherent structure. Because the Registrant is not a party, the Board gets only half the story and has no way of knowing whether the Registrant has actually experienced or recorded instances of confusion.

I wonder if the Applicant's earlier arguments that the services do not overlap ultimately undermine its own eighth DuPont factor argument. The Board mentioned it briefly, but did not discuss whether this impacted its decision.