Decisions · 86709944
In re Guild Mortgage Company
Serial No. 86709944 · Decided 2020-03-31 · Section 2(d) Ex Parte Appeal
What happened
Refusal upheld — GUILD MORTGAGE COMPANY was found too similar to the registered GUILD INVESTMENT MANAGEMENT for related financial services, and more than forty years of side-by-side use without proven marketplace overlap was not enough to avoid likely confusion.
The marks
Applicant
GUILD MORTGAGE COMPANY and design (three lines above IL)
mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans
Cited registration
GUILD INVESTMENT MANAGEMENT
investment advisory services
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Similar | Both share dominant term GUILD |
| appearance | Dissimilar | Applicant has design element and different wording after GUILD |
| meaning | Similar | GUILD conveys same concept of membership/association in both |
| commercial impression | Similar | Substantially similar due to shared dominant term GUILD despite different descriptive wording |
Similar — marks share the dominant term GUILD; remaining terms MORTGAGE COMPANY and INVESTMENT MANAGEMENT are descriptive/disclaimed.
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Favored Refusal | Both marks share the dominant term GUILD, with descriptive wording (MORTGAGE COMPANY / INVESTMENT MANAGEMENT) doing little to distinguish them; overall commercial impressions substantially similar. |
| 2 | Relatedness of the goods or services | Favored Refusal | Mortgage banking and investment advisory services are related Class 36 financial services, with third-party registrations showing the same entities offering both. |
| 3 | Similarity of trade channels | Favored Refusal | Both identifications are unrestricted, so the services travel in overlapping channels and banks may offer both. |
| 4 | Conditions of sale and buyer sophistication | Favored Applicant | Consumers of financial services exercise some degree of care, weighing slightly against confusion. |
| 8 | Length of concurrent use without actual confusion | Neutral | More than forty years of concurrent use 126 miles apart was not backed by evidence of meaningful marketplace overlap, so the absence of reported confusion carried little weight in this ex parte posture. |
Why this decision is significant
Precedential decision on remand from the Federal Circuit’s Guild Mortgage opinion (912 F.3d 1376), which requires the Board to consider all argued DuPont factors; on remand the Board weighed factor 8 concurrent-use evidence and held 40+ years of coexistence insufficient without proof of meaningful marketplace overlap — a template for factor-8 arguments in ex parte appeals.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
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