In re Muddy Waters Marketing LLC

Mailed: February 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

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In re Muddy Waters Marketing LLC

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Serial No. 88363722

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Wei Wei Jeang of Grable Martin Fulton PLLC

for Muddy Waters Marketing LLC.

Caitlin Watts-Fitzgerald, Trademark Examining Attorney, Law Office 111,

Chris Doninger, Managing Attorney.

_____

Before Cataldo, Adlin and Coggins, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Muddy Waters Marketing LLC seeks registration of MUDDY WATERS,

in standard characters, for:

Providing advertising services, marketing services, and

branding services, namely, placing advertisements on

behalf of clients to promote their brand, product, service,

and event; digital advertising services; media buying and

planning, namely, creating marketing strategies, selecting

commercial inventory for sale, and purchasing advertising

space for others across a mix of media and advertising

platforms in order to effectively and efficiently achieve an

advertiser’s campaign goals through audience marketing

research and analysis, media platform analysis,

advertising campaign duration recommendations,

advertisement placement recommendations, commercial

sales inventory selection, pricing negotiations in the nature

of negotiation of business contracts for others with media

This Opinion is Not a

Precedent of the TTAB

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platforms and companies, and purchasing of advertising

inventory on media platforms, specifically, on broadcast

TV, cable TV, connected TV, outdoor advertising and

billboards, transit advertising, print advertising, direct

mail, magazines, newspapers, sponsorships, and digital

advertising, consumer insights, namely, providing clients

with marketing insights in the nature of market research

and business analyses regarding consumer interests,

demographics, geographic location, device usage,

engagement metrics, purchasing and shopping behaviors,

conversion tracking and campaign performance metrics;

consumer research; search engine marketing services,

namely, promoting the goods and services of others

through search engine referral traffic analysis and

reporting; search engine optimization for sales promotion;

social media advertising services; social media business

management; audience targeting, namely, identifying and

targeting consumers most likely to be, or become,

interested in a clients’ products and services based on

consumer research and consumer data, all being marketing

research and market analysis services; creative strategy,

namely, building customized marketing and advertising

strategies to target the right audience with the right

messaging across the right media platforms at the right

time to help advertisers achieve their goals most efficiently

and effectively; marketing consulting; advertising

consulting; branding consulting being brand imagery

consulting services; media buying advice, namely,

providing consulting services in the field of facilitating the

buying of media; targeted display advertising services,

namely, consulting clients on ways to improve the

effectiveness of their marketing, advertising, and branding

by providing marketing direction and recommendations

related to creative design, brand designs, advertisement

and marketing campaign content, advertising strategy,

advertising budgets, competitor marketing research,

marketing and branding campaign analysis, media

marketing platforms, audience targeting for advertising

purposes, consumer insights, sales lead attribution,

advertising contract negotiations, advertising campaign

monitoring, sales lead tracking, business reputation

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monitoring, and product review solicitation, in

International Class 35.1

The Examining Attorney refused registration on two grounds: (1) the identification

of services is indefinite; and (2) Applicant’s mark so resembles several commonly-

owned MUDDY WATERS marks previously registered for financial and investment-

related services2 that use of Applicant’s mark in connection with Applicant’s services

is likely to cause confusion in violation of Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d). After the refusal became final on both grounds, Applicant appealed and

Applicant and the Examining Attorney filed briefs.

I. Identification of Services

This ground for refusal is based on the alleged indefiniteness of the following

portion of Applicant’s identification of services, with the crux of the indefiniteness

issue set forth in bold:

media buying and planning, namely, creating marketing

strategies, selecting commercial inventory for sale, and

purchasing advertising space for others across a mix of

media and advertising platforms in order to effectively and

efficiently achieve an advertiser’s campaign goals through

audience marketing research and analysis, media platform

analysis, advertising campaign duration

recommendations, advertisement placement

recommendations, commercial sales inventory selection,

pricing negotiations in the nature of negotiation of business

contracts for others with media platforms and companies,

and purchasing of advertising inventory on media

platforms, specifically, on broadcast TV, cable TV,

connected TV, outdoor advertising and billboards, transit

advertising, print advertising, direct mail, magazines,

1 Application Serial No. 88363722, filed March 29, 2019 under Section 1(a) of the Trademark

Act, 15 U.S.C. § 1051(a), based on first use dates of May 15, 2017.

2 Registration Nos. 4691762, 4682227, 4692533, 5035727 and 5035791.

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newspapers, sponsorships, and digital advertising,

consumer insights, namely, providing clients with

marketing insights in the nature of market research and

business analyses regarding consumer interests,

demographics, geographic location, device usage,

engagement metrics, purchasing and shopping behaviors,

conversion tracking and campaign performance metrics.

According to the Examining Attorney, “an omitted semicolon, or some other phrasing,

has rendered the two identifications into a single run-on statement” that is indefinite.

8 TTABVUE 17. More specifically, the Examining Attorney contends that “[t]he term

‘AND’ preceding ‘digital advertising’ insinuates that this is the final item” in the list

of media buying and planning services. Id.3

Applicant essentially ignored this ground for refusal throughout prosecution and

in its Appeal Brief. It thus does not argue that its identification of services is

sufficiently definite, or propose an alternative.

“An applicant must identify the goods and services specifically to provide public

notice and to enable the USPTO to classify the goods and services properly and to

reach informed judgments concerning likelihood of confusion under 15 U.S.C.

§ 1052(d).” In re Fiat Grp. Mktg. & Corp. Commc’ns. S.p.A., 109 USPQ2d 1593, 1597

(TTAB 2014); In re Faucher Indus. Inc., 107 USPQ2d 1355, 1358-59 (TTAB 2013);

Trademark Rule 2.32(a)(6) (application must include a “list of the particular goods

3 The Examining Attorney also appears to have ignored the comma which follows “digital

advertising,” as she contends that “digital advertising consumer insights” is “not a recognized

service.” 8 TTABVUE 17. Because there is a comma between “digital advertising” and

“consumer insights,” we do not agree that “digital advertising consumer insights” is part of

the identification, and the identification is not indefinite based on the allegedly missing

comma which in fact appears between “digital advertising” and “consumer insights.”

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or services on or in connection with which the applicant uses … the mark”) (emphasis

added). Thus, “[i]t is within the discretion of the PTO to require that one’s goods be

identified with particularity.” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544

(Fed. Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91

(CCPA 1980)).

For example, in In re Omega, the applicant sought to register its mark for “jewelry,

precious stones; watches, watch straps, watch bracelets and parts thereof;

chronometers, chronographs, watches made of precious metals, watches partly or

entirely set with precious stones” in International Class 14. The examining attorney

required that “chronographs” be identified more specifically, because that term could

refer to watches, which fall within Class 14, or to time recording instruments, which

fall within Class 9. The Federal Circuit upheld the Board’s decision affirming the

examining attorney’s requirement, agreeing that “the scope of the term

‘chronographs’ is ambiguous for registration purposes,” because it includes both

watches and time recording devices. Id.

Here, we agree with the Examining Attorney that the identification of services is

indefinite. Indeed, the term “digital advertising” comes at the end of a list of different

“media platforms” on which “advertising inventory” is purchased, such as TV,

billboards, etc. Even if “digital advertising” at the end of the list was considered

another type of “media platform” on which advertising is purchased, the term which

immediately follows, and is also presented as part of the list of media platforms

(“consumer insights”) is not a “media platform.” To the contrary, “consumer insights”

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seems to be a separate service, especially when it is followed immediately by “namely”

and a list of “consumer insight” services. In short, the lack of a semicolon or, as the

Examining Attorney puts it, “some other phrasing,” renders the identification of

services indefinite and the refusal is therefore affirmed on this ground.

II. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about

which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129

USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two

key considerations are the similarities between the marks and the similarities

between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)

goes to the cumulative effect of differences in the essential characteristics of the goods

and differences in the marks.”).

We focus here on the cited Registration No. 4682227 for the mark MUDDY

WATERS, in standard characters, for:

Advice relating to investments; Commodity investment

advice; Financial investment analysis and stock research;

Financial services, namely, investment advice, investment

management, investment consultation and investment of

funds for others, including private and public equity and

debt investment services; Global investment research

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services; Investment advice; Providing information and

research in the field of finance and financial investments;

Providing information, commentary and advice in the field

of finance, financial investments and financial valuations,

in International Class 36 (the “’227 Registration”).4

If we find confusion likely between Applicant’s involved mark and this cited mark,

we need not consider the likelihood of confusion between Applicant’s mark and the

other cited marks. On the other hand, if we find no likelihood of confusion between

Applicant’s mark and the mark in the ’227 Registration, we would not find confusion

likely between Applicant’s mark and the other cited marks. In re Max Capital Grp.

93 USPQ2d 1243, 1245 (TTAB 2010).

A. The Marks

The marks are identical in every way (appearance, sound, meaning and

commercial impression). This factor not only weighs heavily in favor of finding a

likelihood of confusion, but also reduces the degree of similarity between the services

required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d

1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent. Co. v. Jones, 65

USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815

(TTAB 2001).

B. The Services, Channels of Trade and Classes of Consumers

The Examining Attorney relies on evidence that financial and investment services

such as those identified in the ’227 Registration are offered under the same marks as

advertising and marketing services such as those identified in the involved

4 Issued February 3, 2015.

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application. For example, Ameriprise Financial uses its AMERIPRISE mark in

connection with financial and investment services provided to its clients:

as well as marketing services provided to its “experienced advisors,” which are

intended to help them “attract and acquire clients” and “manage a marketing plan”:

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June 12, 2019 Office Action TSDR 23, 26, 30-33. Similarly, Nationwide Planning

Associates uses its NATIONWIDE design mark for “investment & advisory services”

targeted to individual clients, and “marketing solutions” targeted to its financial

advisors who serve individual clients:

‘

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Id. at 34-35. Raymond James uses its RAYMOND JAMES mark for both financial

and investment services for clients, and marketing services for its advisors:

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Id. at 36, 39. Skoda Minotti (which has apparently changed its name to Marcum) uses

its SKODA MINOTTI mark the same way for both financial and investment services

for clients, and marketing services for its advisors. Id. at 42-51.

A press release from LPL Financial Holdings, Inc. provides some background

concerning why it is common for financial and investment firms to offer marketing

support for their advisors. May 8, 2020 Denial of Request for Reconsideration TSDR

10. The press release announces that a group of financial advisors “have launched

Ashworth Financial Group with support from LPL Strategic Wealth Services, a new

affiliation model designed to support the unique needs of established wirehouse or

employee channel-based advisors seeking independence.” The press release goes on

to explain that LPL will provide Ashland with “business management support,”

including “brand management” and “marketing strategy.” Id. at 11. See also id. at 17-

21 (printout from LPL Strategic Wealth Services website making the same essential

point). A Cetera Financial Group press release about its new Chief Marketing Officer

makes essentially the same point: that financial and investment advisors may seek

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marketing help from companies which also provide financial and investment services

such as those identified in the cited ’227 Registration. Id. at 13-16. FiComm Partners

and IN Research authored a report entitled “Drivers of Growth: How Greater

Marketing Focus is Distinguishing Financial Advisory Firms” which also makes the

same point. Id. at 22-31. According to the report, “[a]dvisors who invest in marketing

and business development efforts are poised to come out ahead of those who choose

to maintain the status quo.” Id. at 30.

This evidence establishes that the services in the involved application and cited

’227 Registration are related. See In re Detroit Athletic Co., 903 F.3d 1297, 128

USPQ2d 1047, 1050 (Fed. Cir. 2018) (crediting relatedness evidence showing that

third parties use the same mark for the goods and services at issue because “[t]his

evidence suggests that consumers are accustomed to seeing a single mark associated

with a source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d

1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells

the goods and services of both parties, if presented, is relevant to a relatedness

analysis”).

Applicant’s argument that the “marketing services that are provided by these

companies are provided to their own financial advisors who offer their financial

services under the company trademarks,” 4 TTABVUE 11, is not well taken.

Applicant seems to suggest that the companies’ “own financial advisors” are

employees, such that the third-party financial/investment firms about which the

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Examining Attorney introduced evidence do not provide marketing services “for

others,” who are “unrelated to their own businesses.” Id.

The record makes clear, however, that at least some of the financial advisors being

offered or receiving marketing services are merely affiliated with the brokerages.

That is, they operate separate businesses to which the third-party

financial/investment firms offer a suite of products and services from which the

advisors may choose. For example, the Raymond James website’s section on “Advisor

Marketing” states: “Raymond James understands the importance of managing and

building your brand as an advisor. This goes beyond simply extending the brand of

the firm you’ve chosen to partner with … That’s why we have a full-service, in-house

creative agency … dedicated to serving their clients – financial advisors like

you.” June 12, 2019 Office Action TSDR 39 (emphasis added). Similarly, the

Ameriprise website directed to “Experienced Advisors” uses the domain name

“joinameriprise.com” whereas Ameriprise’s core financial and investment services

are offered via the domain name “ameriprise.com.” And in promoting its marketing

services to “Experienced Advisors,” Ameriprise states “You’ve built a successful

practice, but you’re always looking ahead to what’s next … How can I manage a

marketing plan when I have a practice to run? At Ameriprise, we provide our

advisors with the tools they need to deliver an integrated − yet personalized

– approach to communicating with clients.” Id. at 30 (emphasis added). In other

words, the “practices” and “clients” are the advisors’, not Ameriprise’s. Furthermore,

much of this third-party evidence reflects recruiting/sales efforts. In other words, the

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third-party financial/investment firms are offering marketing services to recruit

prospective new affiliated advisors, as opposed to serving their own employees.

As for channels of trade and classes of consumers, the evidence is perhaps

somewhat less persuasive in one way, because brokerages and others that offer

financial and investment products and services seem to offer them either directly, or

indirectly through affiliated advisors, to individual investors, while targeting their

marketing services specifically to the advisors who work with individual investors.

Nevertheless, affiliated advisors are effectively also customers for the financial and

investment products and services offered by brokerages, as they must choose which,

if any, of them to offer to their individual investor clients. Thus, the channels of trade

and classes of consumers overlap in part.

C. Actual Confusion

Applicant’s reliance on the absence of actual confusion is misplaced, because there

is no evidence regarding the extent of Applicant’s use of its mark, or the extent of

Registrant’s use of the cited mark. Therefore, we cannot gauge whether or the extent

to which there has been an opportunity for confusion to occur if it were likely to occur.

See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903

(Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if

any, probative value here because (1) no evidence was presented as to the extent of

ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior

years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any

event, a lack of evidence of actual confusion carries little weight in an ex parte case

such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show

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actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s

Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is

neutral.

D. Purchaser Care and Sophistication

Applicant’s argument that purchasers of the types of services identified in the

involved application and cited Registration tend to be “sophisticated” and to exercise

care in purchasing is unsupported by any evidence. Even if we accepted the

argument, any purchaser care and sophistication would be outweighed by the use of

identical marks for related services which travel in some of the same channels of

trade. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.

1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168

USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss Assocs., Inc., 12

USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)

(similarities of goods and marks outweighed sophisticated purchasers, careful

purchasing decision, and expensive goods).

III. Conclusion

Applicant’s mark is identical to the cited mark, and its services are related to and

travel in some of the same channels of trade as Registrant’s services. Confusion is

therefore likely, notwithstanding any purchaser sophistication.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the

Trademark Act is affirmed. The requirement for a more definite identification of

services is also affirmed.