Michael Stomberg

This Opinion is Not a
Precedent of the TTAB
Mailed: September 18, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Michael Stomberg
_____
Serial No. 98578517
_____
Joseph M. Kuo of Saul Ewing LLP,
for Michael Stomberg,
Charles Jenkins, Trademark Examining Attorney, Law Office 112,
Matthew Cuccias, Managing Attorney.
_____
Before Pologeorgis, Allard and O’Connor,
Administrative Trademark Judges.
Opinion by O’Connor, Administrative Trademark Judge:
Michael Stomberg (“Applicant”) seeks registration on the Principal Register of the
standard-character mark THE PARADISE GROUP (GROUP disclaimed) for
“financial and investment services, except those provided by traditional consumer
banking institutions, namely providing private equity and venture capital
investment funds,” in International Class 36.1
1 Application Serial No. 98578517 was filed on May 31, 2024 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s averment of a bona fide intent to
use the mark in commerce.

Serial No. 98578517
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that the mark, when used in connection with
the identified services, is likely to cause confusion, mistake or deception with the
following registered marks:
(INC. disclaimed), for “banking and
financial services, namely, provision of certificate of deposit accounts,
checking accounts, savings accounts, money market accounts,
commercial loans, residential loans and consumer loans,” in
International Class 36;2
(BANK disclaimed), for “banking
and financial services, namely provision of certificate of deposit
accounts, checking accounts, savings accounts, money market accounts,
commercial loans and consumer loans,” in International Class 36;3 and
PARADISE BANK in standard characters (BANK disclaimed), for
“banking and financial services, namely provision of deposit accounts,
2 Registration No. 5267502 issued August 15, 2017, on the Principal Register; maintained.
The description of the mark is as follows: “The mark consists of the colors yellow and orange
appearing in the sun, changing from top to bottom, the colors blue and orange appear in the
water design, changing from top to bottom, the color blue appears in the wording ‘PARADISE
BANCORP, INC.’ and in the bird design, the color white appears in a few spots in the design
of the palm tree, the color green and white appears in the palm tree leaves, and the color
brown and white appear in the palm tree trunk.” The colors yellow, orange, blue, white, green
and brown are claimed as a feature of the mark.
3 Registration No. 3129228 issued August 15, 2006, on the Principal Register; renewed. The
colors yellow, orange, blue, black, white, green and brown are claimed as a feature of the
mark.

Serial No. 98578517
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checking accounts, savings accounts, money market accounts,
commercial loans and consumer loans,” in International Class 36.4
When the refusal was made final, Applicant requested reconsideration and filed
this appeal, which was suspended. The application was remanded to the Examining
Attorney to consider the request for reconsideration, which was denied. The appeal
was resumed, and Applicant and the Examining Attorney have filed briefs. For the
reasons that follow, we affirm the refusal to register.
I. Examining Attorney’s Objection
At the outset, the Examining Attorney objects to references in Applicant’s brief to
“non-existent record evidence” and “characterizations unsupported by any evidence
in the record.”5 The Examining Attorney refers to statements by Applicant that it
filed a Request for Reconsideration with “additional” evidence, “including third-party
registrations and online materials demonstrating how specialized private equity and
venture capital investment funds are offered and to whom.”6 This objection is well-
taken, because neither Applicant’s reconsideration request nor earlier response to
Office Action attached any evidence.7 The Examining Attorney also takes issue with
factual assertions Applicant makes in its brief without citing record evidence,
including several asserted to be supported by the record but without any citation to
4 Registration No. 3107384 issued on June 20, 2006 on the Principal Register; renewed. All
three cited registrations are owned by Paradise Bank of Boca Raton, Florida (“Registrant”).
5 8 TTABVUE 2-4.
6 Id. at 3 (citing 6 TTABVUE 4).
7 See April 14, 2025 Response to Office Action; November 20, 2025 Request for
Reconsideration (both containing argument but no exhibits).

Serial No. 98578517
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it.8 Upon review of Applicant’s brief, we are obliged to agree. Despite including a
section titled “Description of the Record” and references to “the record” or the
“evidence of record,” Applicant’s brief does not include any citations to record evidence
to support factual statements Applicant makes about the nature of the involved
services, consumers and purchase conditions.9 “It is not the function of the Board to
scour the record in search of facts or evidence to support a party’s position.” Cf. DC
Comics v. Cellular Nerd LLC, No. 91246950, 2022 TTAB LEXIS 453, at *46 n.81.
We therefore disregard factual statements in Applicant’s brief to the extent they
purport to rely on evidence for which Applicant provides no citation to the record. In
rendering this decision, we have considered all of the arguments in Applicant’s brief,
noting, as appropriate, where the arguments contain unsupported factual assertions.
II. Likelihood of Confusion
“The Trademark Act prohibits registration of a mark that so resembles a
registered mark as to be likely, when used on or in connection with the goods or
services of the applicant, to cause confusion, mistake, or to deceive.” In re Charger
Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination
of the issue of likelihood of confusion is based on analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 1361 (CCPA 1973) (the “DuPont factors”). We consider each
8 8 TTABVUE 3-4.
9 See, e.g., 6 TTABVUE 6, 9, 15.

Serial No. 98578517
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DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg.
Co., 912 F.3d 1376, 1379-80 (Fed. Cir. 2019).
Varying weight may be assigned to each DuPont factor depending on the evidence.
See Charger Ventures, 64 F.4th at 1381 (“In any given case, different DuPont factors
may play a dominant role and some factors may not be relevant to the analysis.”)
(citation omitted). In determining likelihood of confusion, two key considerations are
the similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 1341-42 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (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.”).
A. Similarity or Dissimilarity of the Services
We first consider the “[t]he similarity or dissimilarity and nature of the goods or
services as described in an application or registration.” DuPont, 476 F.2d at 1361.
Our determination of similarity is based not on evidence of use, but on the
identification of services in the Application and cited registrations. See, e.g., In re
Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018). The goods or services “need
not be identical or even competitive to find a likelihood of confusion.” In re Country
Oven, Inc., No. 87354443, 2019 TTAB LEXIS 381, at *4 (citations omitted). “They
need only be ‘related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that [the goods

Serial No. 98578517
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and services] emanate from the same source.’” Id. at *4-5 (quoting Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012)).
The relatedness of goods or services may be established based on (1) the language
of the involved identifications, which may show, on their face, that the goods or
services are literally or legally identical, or otherwise intrinsically related, and (2)
evidence of third-party uses or registrations, which may show that the identified
goods or services are commonly offered by the same entity under the same mark.
Country Oven, 2019 TTAB LEXIS 381, at *5-6 (evidence of relatedness may include
advertisements showing that the goods and/or services are advertised together or sold
by the same manufacturer or dealer or copies of use-based registrations of the same
mark for both the goods and/or services of the application and cited registration). The
issue is not whether purchasers would confuse the goods or services, but whether
there is a likelihood of confusion as to the source of the goods or services. L’Oreal S.A.
v. Marcon, No. 91184456, 2012 TTAB LEXIS 77, at *20 (citing In re Rexel Inc., No.
73241423, 1984 TTAB LEXIS 57, at *2).
The Examining Attorney argues that the services are related because record
evidence shows that they may be offered by the same entity under the same mark.10
The Examining Attorney made of record printouts from the websites of third parties
that offer the services identified in the Application and the cited registrations and
copies of third-party trademark registrations that cover such services.
10 8 TTABVUE 8-9.

Serial No. 98578517
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Before we discuss this evidence, we consider the nature of the respective services.
The services of the PARADISE BANK standard character registration, “banking and
financial services, namely provision of deposit accounts, checking accounts, savings
accounts, money market accounts, commercial loans and consumer loans,” are clear
on their face. Applicant’s services are “financial and investment services, except those
provided by traditional consumer banking institutions, namely providing private
equity and venture capital investment funds.” When terms in an identification are
technical or unclear, such as “private equity” or “venture capital,” we may consider
extrinsic evidence to understand them. In re Thor Tech, Inc., No. 78634024, 2009
TTAB LEXIS 253, at *12 n.10 (although extrinsic evidence may not be used to limit
or restrict the identification, extrinsic evidence such as dictionary entries may be
considered to define the terminology used in the identification). We take judicial
notice that private equity is defined as “[o]f or relating to equity investments in
companies whose stock is held by a relatively small number of owners and is not
publicly traded: a private equity fund.”11 “Venture capital” is defined as “[m]oney
available for investment in startup companies and small businesses with a high
potential for growth. Also called risk capital.”12 “Private equity and venture capital
11 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://ahdictionary.com/word/search.html?q=private+equity (accessed September 18, 2026).
“The Board may take judicial notice of information from dictionaries, encyclopedias and other
standard reference works.” In re Info Builders Inc., No. 87753964, 2020 TTAB LEXIS 20, at
*10 n.6 (citing inter alia B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728
(Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”)).
12 www.ahdictionary.com/word/search.html?q=venture+capital (accessed September 18,
2026).

Serial No. 98578517
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provide companies with capital in exchange for an ownership stake. Private equity
firms invest in existing businesses and may take a larger role in them. Venture
capital firms usually back newer companies with strong growth potential and higher
risk.”13 Thus, for purposes of our analysis, Applicant’s “financial and investment
services, except those provided by traditional consumer banking institutions, namely
providing private equity and venture capital investment funds” are broad enough to
serve as both a type of investment and a source of capital for businesses. This is
consistent with Applicant’s statement that its “services are institutional‑level private
equity and venture capital fund services forming, managing, and investing pooled
capital into portfolio companies.”14
With this in mind, we consider the evidence made of record in support of
relatedness, which includes website printouts from the following entities:
• Wells Fargo: pages from wellsfargo.com for Wells Fargo Strategic Capital,
which provides venture capital and growth equity to early-stage
businesses,15 and Wells Fargo banking services, which include checking,
savings and home and personal loans.16
• Capital One: Capital One Ventures invests in startup companies relating
to the business of Capital One,17 and, as seen in pages from capitalone.com,
its Capital Markets & Investment Banking offers capital raising services
and support for companies at various growth phases within the
13 www.investopedia.com/ask/answers/020415/what-difference-between-private-equity-and-
venture-capital.asp (accessed September 18, 2026).
14 6 TTABVUE 15.
15 January 13, 2025 Nonfinal Office Action, TSDR 12.
16 Id. at 14.
17 Id. at 21-22 (printout from growthventures.capitalone.com using the tagline “We’re more
than just a bank”).

Serial No. 98578517
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private/public markets18 and Capital One offers checking and savings
accounts and business accounts.19
• Truist: pages from truist.com state that Truist Ventures invests in growing
businesses and Truist offers services including checking, savings, loans,
and premier banking.20
• Bank of America: offering checking account21 as well as Bank of America
Private Bank alternative investments including private equity and venture
capital investing.22
• Chase Private Client: offering a checking account promotion for certain
J.P. Morgan Private Wealth Management accounts;23 J.P. Morgan Private
Bank offers Morgan Private Ventures providing investors with access to
direct investment opportunities including through venture capital.24
This evidence shows that these entities offer the respective services under the
same mark, supporting a finding that consumers are accustomed to seeing the
services of Applicant and Registrant provided by the same source under a common
trademark. See Detroit Athletic, 903 F.3d at 1306 (crediting relatedness evidence that
several third-party apparel retailers use the same mark to offer 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.
18 Id. at 25-26 (offering “strategic, tailored investment banking products and advisory services
backed by the resources and experience of a Top 10 Commercial Bank”).
19 Id. at 30-31.
20 January 12, 2026 Denial of Request for Reconsideration, TSDR 31-32 (Truist Ventures
offers partners support at every stage including “the confidence that comes with knowing
they have the strength and stability of one of America’s largest banks at their backs.”); 43.
21 Id. at 54.
22 January 13, 2025 Nonfinal Office Action, TSDR 39-41.
23 May 20, 2025 Final Office Action, TSDR 77-78. “Deposit products and related services are
offered by JPMorgan Chase Bank, N.A.” Id. at 81.
24 Id. at 83.

Serial No. 98578517
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v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002) (evidence that “a single
company sells the goods and services of both parties, if presented, is relevant to a
relatedness analysis”); see also, e.g., In re Davey Prods. Pty Ltd., No. 77029776, 2009
TTAB LEXIS 524, at *15 (two third-party webpages showing that the involved goods
were offered under the same house marks supported a finding of relatedness).25
The Examining Attorney also provided copies of a number of marks registered
based on use in commerce for the services of both Applicant and Registrant or legally
equivalent services.26 These include the following (registrations owned by the same
entity grouped together):
Mark/Reg. No. Relevant Services
H POINT INVESTORS
Reg. No. 706908727
Private equity fund investment services;
providing personal loans and lines of credit;
providing venture capital, development capital,
private equity and investment funding
PATAMAR
Reg. No. 552095328
Financing and loan services; providing venture
capital, development capital, private equity and
investment funding
PAGAYA & design Banking services featuring the provision of
certificates of deposit; private equity fund
25 The Examining Attorney provided website evidence for two other entities, E*TRADE and
Treeview Capital, but the pages provided do not show that these entities offer the services of
both Applicant and Registrant. The website printout for us.etrade.com shows a savings
account offered by Morgan Stanley under the E*TRADE mark, id. at 65, but the
pitchbook.com entry for E*TRADE Venture Capital reflects an inactive status. See id. at 71-
73. The website for Treeview Capital offers investment in private equity funds, but we do not
find the services of the cited registrations on the pages provided. See January 12, 2026 Denial
of Request for Reconsideration, TSDR 59-63. These websites are not probative of relatedness.
26 See Country Oven, 2019 TTAB LEXIS 381, at *10-11 (“Just as we must consider the full
scope of the goods and services as set forth in the application and registration under
consideration, we must consider the full scope of the goods and services described in a third-
party registration.”).
27 May 20, 2025 Final Office Action, TSDR 14-15.
28 Id. at 16-17.

Serial No. 98578517
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Mark/Reg. No. Relevant Services
Reg. No. 723632229
Reg. No. 723632130
investment services; providing personal loans
and lines of credit; providing venture capital,
development capital, private equity and
investment funding
CHRISTOPHER HENRY RABORG
Reg. No. 571462231
Financial services, namely, savings programs
for youths; financing and loan services; private
equity fund investment services; providing
venture capital, development capital, private
equity and investment funding
BITCOINPEDIA
Reg. No. 689328332
Banking and financing services; credit and loan
services; financial services, namely, savings
programs for youths; private equity fund
investment services; providing venture capital,
development capital, private equity and
investment funding
KLHO
Reg. No. 715723133
Administration of savings accounts; arranging
of loans; banking and financing services;
venture capital fund management
INNOCEAUTM
Reg. No. 719606334
Administration of savings accounts; arranging
of loans; banking and financing services;
venture capital fund management
F.N.B. CAPITAL MARKETS & design
Reg. No. 448881135
FNB FINANCIAL CENTER
Reg. No. 742958136
FIRST NATIONAL BANK & design
Reg. Nos. 8023707 and 802370837
Administration of savings accounts; banking
services; checking account services; providing
money market lines and project finance,
namely, working capital, venture capital
funding services for emerging and start-up
companies
29 Id. at 21-23.
30 Id. at 25-27.
31 Id. at 29-33.
32 Id. at 34-40.
33 Id. at 54-55.
34 Id. at 56-57.
35 Id. at 58-60.
36 Id. at 61-64.
37 January 12, 2026 Denial of Request for Reconsideration, TSDR 9-12, 27-30.

Serial No. 98578517
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Mark/Reg. No. Relevant Services
F.N.B. CAPITAL MARKETS
Reg. No. 448881238
Mortgage lending; automobile loans; providing
term loans; providing money market lines and
project finance, namely, providing working
capital, venture capital funding services for
emerging and start-up companies
NODAWAY VALLEY BANK
Reg. No. 559146139
Banking and related financial services, namely,
checking, savings, money market, individual
retirement, certificate of deposit account and
automated teller machine services; providing
personal loans and lines of credit; private
banking services; private equity fund
investment services
COMMERCE BANK & design
Reg. No. 546170640
Banking and related financial services, namely,
checking, savings, money market, individual
retirement, certificate of deposit account and
automated teller machine services; private
equity fund investment services
RBC
Reg. No. 300905041
Financial services, namely, banking services;
mutual fund investment services and venture
capital services; venture capital investment
consultation, venture capital investment
funding, and venture capital investment
management; loans, namely, loan financing and
home equity loans
38 Id. at 25-26.
39 Id. at 7-8.
40 Id. at 16-19.
41 Id. at 22-24.
Several other registrations provided by the Examining Attorney are not probative of
relatedness because they either exclude the involved services or cover only the services of
Applicant or Registrant but not both. See, e.g., May 20, 2025 Final Office Action, TSDR 12,
18, 44-52; January 12, 2026 Denial of Request for Reconsideration, TSDR 3. Nor is
Registration No. 3243615 probative because the relevant services identified in that
registration were not based on use in commerce. See May 20, 2025 Final Office Action, TSDR
41-42. See, e.g., In re Albert Trostel & Sons Co., No. 74186695, 1993 TTAB LEXIS 36, at *7
(third-party registrations issued under Trademark Act Section 44(e) have little persuasive
value for relatedness).

Serial No. 98578517
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“As a general proposition, third-party registrations that cover goods and services
from both the cited registration and an Applicant’s application are relevant to show
that the goods and services are of a type that may emanate from a single source under
one mark.” Country Oven, 2019 TTAB LEXIS 381, at *9-10. See also In re Guild
Mortg. Co., No. 86709944, 2020 TTAB LEXIS 17, at *12 (crediting evidence of “about
a dozen use-based, third-party registrations that include mortgage banking services,
as identified in the application on the one hand, and investment advisory services, as
identified in the cited registration, on the other hand” as helping to establish that the
services are of a type that may emanate from a single source under a single mark).
Applicant counters that “[e]ven if some large financial conglomerates may house
both kinds of business under a single corporate umbrella, there is no evidence in this
record that consumers encounter community banks branded PARADISE BANK also
operating as private equity and venture capital sponsors.”42 There are at least two
problems with this argument. First, because there is no such restriction in the cited
registrations, we may not limit Registrant’s services to those of a “community bank.”
See, e.g., In re Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *37-38 (Board may
not import restrictions into identification based on real-world conditions). Moreover,
for services to be related it is not necessary that they always emanate from the same
source. See Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB
LEXIS 251, at *56-57 (“For Applicant’s and Registrant’s identified goods to be related,
it is not necessary that they always emanate from the same source under the same
42 6 TTABVUE 15.

Serial No. 98578517
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mark.”); In re G.B.I. Tile & Stone, Inc., No. 77369073, 2009 TTAB LEXIS 647, at *15
(“There is no requirement for goods to be found related that all or even a majority of
the sources of one product must also be sources of the other product.”). The evidence
made of record by the Examining Attorney supports a finding that it is not uncommon
for the services to be offered by the same entities, under the same mark. This is
probative of relatedness.
Applicant also argues that its identification expressly carves out services
“provided by traditional consumer banking institutions,” removing “the core of what
a ‘BANK’ or ‘BANCORP,’ such as Registrant, does.”43 Applicant continues,
Properly construed, Applicant’s services are not retail or
consumer banking, but specialized private equity and
venture capital (“PE/VC”) fund services that occupy a
different segment of the financial markets.
Under Calypso [Tech., Inc. v. Calypso Cap. Mgmt., LP, No.
91184576, 2011 TTAB LEXIS 259] and [In re] Bridger
[Mgmt, LLC, No. 78516349, 2007 TTAB LEXIS 353] and
consistent with DuPont, the Board should not elide these
distinctions simply because both parties are in the broad
“financial services” arena. On this record, the nature and
purpose of the services differ in kind.44
43 Id.
44 Id. Applicant cites Bridger for the proposition that the Board has found “hedge fund
services” to be a “distinct type of investment vehicle.” Id. at 14. This is not persuasive because
the services and record of this case differ from that case. See In re Nett Designs, Inc., 236 F.3d
1339, 1342 (Fed. Cir. 2001) (“The Board must decide each case on its own merits.”).
In addition, Bridger is not a precedent of the Board. Citation of non-precedential decisions is
not encouraged because such decisions are not binding on the Board and, when cited, they
“must be clearly identified as nonprecedential.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE §§ 101.03, 101.03(a)(2) (2026).

Serial No. 98578517
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We agree “that the mere fact that two parties operate in the ‘financial field’ does
not automatically render their goods or services related for § 2(d) purposes.”45 As
conceded by Applicant, though,46 those cases lacked evidence of third parties offering
the services of both the applicant and registrant under the same mark. See Calypso
Tech., 2011 TTAB LEXIS 259, at *28 (there was “simply no evidence of record that
shows that ‘computer software for use by financial institutions for core processing
and control’ and ‘equity investment management and fund services’ are ever offered
by a single company”); Bridger, 2007 TTAB LEXIS 353, at *9 (record lacked “even one
example of a single entity providing both hedge fund and commercial lending
services”).
Although the Application excludes services “provided by traditional consumer
banking institutions,” identity of services is not necessary. See Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (“[E]ven if the [services] in question are
different from, and thus not related to, one another in kind, the same [services] can
be related in the mind of the consuming public as to the origin of the [services].”).
Despite the exclusion, the evidence detailed above supports a finding that consumers
(who may be unaware of the exclusion) could mistakenly believe the services emanate
from the same source because it is not uncommon for entities to provide the services
of Applicant and Registrant under the same mark. We find that the services are
related and the second DuPont factor favors a likelihood of confusion.
45 6 TTABVUE 14 (citing Calypso Tech., 2011 TTAB LEXIS 259, at *27).
46 6 TTABVUE 14.

Serial No. 98578517
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B. Similarity or Dissimilarity of Established, Likely to Continue
Trade Channels
We next consider the third DuPont factor, “[t]he similarity or dissimilarity of
established, likely-to-continue trade channels.” DuPont, 476 F.2d at 1361. As with
the second factor, our determination of this factor is based on the identification of
services in the Application and cited registrations. See, e.g., Detroit Athletic, 903 F.3d
at 1307. Applicant argues that its services are offered through “trade channels typical
of private equity and venture capital funds,” namely, “private placements and
offering memoranda directed to qualified investors; direct outreach by sponsor
principals and placement agents; investment bank and advisor networks; and
conferences and industry events aimed at institutional investors and founders.”47
Applicant states that its purchasers are “institutional limited partners, family offices,
ultra‑high‑net‑worth individuals, and portfolio company management teams.”48 In
contrast, according to Applicant, Registrant’s services are provided through channels
“typical of retail and community banking,” namely, “local bank branches; ATM
networks; consumer‑facing web and mobile banking platforms; and advertising
directed to individual depositors and small‑business borrowers within the bank’s
geographic footprint.”49 “The customers include individual consumers and small and
medium‑sized businesses seeking checking and savings accounts, consumer or
47 6 TTABVUE 15.
48 Id. at 16.
49 Id.

Serial No. 98578517
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commercial loans, and other standard banking products.”50 Applicant cites no
evidence in support of these arguments, and “argument is no substitute for evidence.”
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (quoting Enzo
Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)).
We acknowledge that Applicant’s services exclude those “provided by traditional
consumer banking institutions.” The extent of this exclusion is unclear, because no
definition is provided for “traditional consumer banking institutions.” The Examining
Attorney provided evidence of several entities that offer the services of both Applicant
and Registrant, in some cases on the same websites. Some of these entities are what
might be considered “traditional consumer banking institutions,” such as Wells Fargo
and Bank of America. This evidence indicates that, at least among larger companies
for which evidence was provided, there does not appear to be a clear concept of a
“traditional consumer banking institution” to the exclusion of an institution that
provides Applicant’s services.51 Registrant’s services can be provided to Applicant’s
consumers, including high‑net‑worth individuals and portfolio companies.52 And the
registrations made of record covering both Applicant’s and Registrant’s services also
50 Id.
51 See, e.g., January 13, 2025 Nonfinal Office Action, TSDR 12-17 (Wells Fargo offering
personal, investing & wealth management, small business, commercial banking, corporate &
investment banking services on the same website); 25-26 (Capital One offering commercial
services, including capital markets & investment banking, on main website along with credit
cards, checking & savings, auto and business services); January 12, 2026 Denial of Request
for Reconsideration, TSDR 31 (Truist offering personal, small business, wealth management
and commercial, corporate & institutional services on the same website).
52 See May 20, 2025 Final Office Action, TSDR 77-78 (JPMorgan Chase offering Chase Private
Client Checking account to J.P. Morgan Wealth Management customers); 83-84 (J.P. Morgan
Private Bank offering venture capital investment opportunities to private bank clients).

Serial No. 98578517
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fail to reflect such a divide. We might reach a different result if the exclusion clearly
limited the services by channel of trade or class of consumers. But it does not. On this
record, the evidence supports a finding of at least some overlap in the channels of
trade and classes of consumers. See Embiid, 2021 TTAB LEXIS 168, at *42-43 (Board
found channels of trade and classes of customers overlap where record demonstrated
relevant goods sold together on third-party websites and offered and registered under
a single mark by numerous businesses). The exclusion here does not obviate
likelihood of confusion.
The third DuPont factor favors a likelihood of confusion.
C. Similarity or Dissimilarity of the Marks
When considering the first DuPont factor, the similarity or dissimilarity of the
marks, we compare the marks “in their entireties as to appearance, sound,
connotation, and commercial impression.” Detroit Athletic, 903 F.3d at 1302-03
(quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No.
87075988, 2018 TTAB LEXIS 170, at *13 (citation omitted), aff’d mem., 777 F. App’x
516 (Fed. Cir. 2019). “The proper test is not a side-by-side comparison of the marks,
but instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Fuente Mktg. v. Vaporous Techs., LLC, 172 F.4th
1337, 1341-42 (Fed. Cir. 2026) (quoting Coach Servs., 668 F.3d at 1368 (cleaned up)).

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Because similarity is determined based on the marks in their entireties, our
analysis cannot be predicated on dissecting the marks into their various
components. See, e.g., In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985).
“No element of a mark is ignored simply because it is less dominant, or would not
have trademark significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645,
647 (Fed. Cir. 1990). Nonetheless, “in articulating reasons for reaching a conclusion
on the issue of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties.”
Detroit Athletic, 903 F.3d at 1305 (quoting Nat’l Data, 753 F.2d at 1058).
“[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (citation omitted). Marks must be considered
in light of the fallibility of memory, id. at 751, and “[t]he focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks.” In re St. Julian Wine Co., No. 87834973, 2020 TTAB
LEXIS 196, at *13 (citations omitted).
With these principles in mind, we compare Applicant’s mark, THE PARADISE
GROUP, and the cited marks, focusing on PARADISE BANK in standard characters,
which is the closest to Applicant’s mark. See In re Max Capital Group Ltd., No.
77186166, 2010 TTAB LEXIS 1, at *5 (if confusion is likely with mark in typed form,
there would be no need to consider likelihood of confusion with word and design mark,

Serial No. 98578517
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whereas if there is no likelihood of confusion with the cited mark in typed form, then
there would be no likelihood of confusion with that mark in word and design form).
The Examining Attorney argues that the marks create a similar overall
commercial impression because they share the term PARADISE, which is dominant
in the marks because the other terms are non-source-indicating entity designations.53
We agree that the term PARADISE is dominant in both THE PARADISE GROUP
and PARADISE BANK. In Applicant’s mark, the definite article THE plays a
subordinate role and merely modifies PARADISE GROUP. See, e.g., Thor Tech, 2009
TTAB LEXIS 253, at *3 (WAVE and THE WAVE are virtually identical because “[t]he
addition of the word ‘The’ at the beginning of the registered mark does not have any
trademark significance.”). The other words in the respective marks (GROUP, BANK)
have been disclaimed. Although disclaimed matter is not entirely removed from
consideration when comparing the marks, certain elements of marks may play a less
important role in distinguishing them from others and disclaimers of merely
descriptive terms “constitute rational reasons for giving those terms less weight in
the analysis.” Detroit Athletic, 903 F.3d at 1305 (citing In re Dixie Rests., 105 F.3d
1405, 1407 (Fed. Cir. 1997) (finding DELTA the dominant part of the mark THE
DELTA CAFE, in part because the generic word CAFE was disclaimed)). The marks
are similar in appearance, sound and connotation to the extent they share the word
PARADISE.
53 8 TTABVUE 5.

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Applicant argues that the marks nonetheless differ in their commercial
impressions due to the different entity designations in each mark. Applicant argues
that the term BANK in PARADISE BANK immediately signals to consumers a
regulated depository institution that offers traditional banking products while the
term GROUP in THE PARADISE GROUP “suggests a group of affiliated entities or
an investment group, which aligns with Applicant’s role as a PE/VC sponsor rather
than a bank.”54
We are not persuaded that the words BANK and GROUP in the marks create such
different commercial impressions or prevent the marks from being confusingly
similar. The record evidence reflects that it is not uncommon for a bank to be
affiliated with entities that do not have the word BANK in their names and that
provide investment-related services. As noted by the Examining Attorney, a
consumer encountering marks with the identical dominant word PARADISE with an
entity designator such as BANK or GROUP, for the respective services involved here,
would likely believe the marks refer to the same source, such as an overarching
holding or financial company.55 Moreover, given the propensity of consumers to
shorten marks when speaking, see In re Ye Mystic Krewe of Gasparilla, No. 90522364,
2025 TTAB LEXIS 412, at *11, some consumers may drop the words “BANK,” “THE,”
and “GROUP,” and instead simply refer to the respective businesses of both Applicant
54 6 TTABVUE 12.
55 8 TTABVUE 5.

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and Registrant as “PARADISE” in conversation or written communications,
contributing to likely confusion as to source.
Comparing the marks in their entireties in view of the applicable legal principles,
we agree that the marks are similar in appearance, sound, connotation and overall
commercial impression. The first DuPont factor favors a likelihood of confusion.
D. Sophistication of Consumers and Care in Purchasing
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 476 F.2d at 1361. “Purchaser sophistication may tend to minimize likelihood
of confusion. Conversely, impulse purchases of inexpensive items may tend to have
the opposite effect.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
en 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005) (citation omitted); see also In re N.A.D.,
Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985) (concluding that, because only
sophisticated purchasers exercising great care would purchase the relevant goods,
there was no likelihood of confusion merely because of the similarity between the
marks NARCO and NARKOMED). Applicant argues that
Applicant’s PE/VC fund investors and portfolio companies
make decisions only after extensive due diligence, review
of offering documents, consultation with counsel and
financial advisors, and assessment by investment
committees. These are not impulse purchases; they involve
large capital commitments and long‑term relationships.56
56 6 TTABVUE 17.

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Although Applicant cited no supporting evidence, we can infer from the nature of
its services and evidence provided by the Examining Attorney57 that the consumers
of Applicant’s services, even those who are individual investors, are sophisticated and
likely to exercise care in purchasing. Registrant’s consumers, on the other hand,
include ordinary banking consumers who may or may not be sophisticated or exercise
particular care in purchasing the services. See In re First USA Realty Prof’ls Inc., No.
78553715, 2007 TTAB LEXIS 73, at *21 (“[W]hile some consumers choose their banks
with care, others do not. Thus, for purposes of determining likelihood of confusion,
we cannot treat bank customers as exercising more than ordinary care.”) (discussing
Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d
1270, 1274 (Fed. Cir. 1988)). To the extent the consumers overlap, such as high-net-
worth individuals or portfolio companies who use Registrant’s services and also seek
Applicant’s services, they are likely to be sophisticated and somewhat careful given
the nature of Applicant’s services. But the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or that they are immune
from source confusion. Charger Ventures, 64 F.4th at 1383; Stone Lion Cap. Partners,
LP v. Lion Cap. LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014).
On the record of this case, we find that the fourth DuPont factor weighs slightly
against a likelihood of confusion.
57 See, e.g., May 20, 2025 Final Office Action, TSDR 83-84 (Morgan Private Ventures offers
services to “sophisticated investors” and “is available only to Private Bank clients who meet
institutional suitability standards”).

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III. Balancing the DuPont Factors
The final step in analyzing likelihood of confusion is to weigh the DuPont factors
for which there is evidence and argument and “explain the results of that weighing”
and “the weight [we] assigned to the relevant factors.” Charger Ventures, 64 F.4th at
1384. We find that Applicant’s “financial and investment services, except those
provided by traditional consumer banking institutions, namely providing private
equity and venture capital investment funds” are related to Registrant’s “banking
and financial services, namely provision of deposit accounts, checking accounts,
savings accounts, money market accounts, commercial loans and consumer loans.”
The evidence also supports a finding that the channels of trade and classes of
consumers overlap. The second and third DuPont factors thus weigh in favor of a
likelihood of confusion. Comparing the marks THE PARADISE GROUP and
PARADISE BANK in their entireties, we find that the marks are similar, due to the
shared dominant term PARADISE, with the first DuPont factor weighing in favor of
a likelihood of confusion. The fourth DuPont factor weighs slightly against a
likelihood of confusion. No other DuPont factor weighs against a likelihood of
confusion.
Balancing the factors, and giving proper weight to the factors of relatedness of the
services and similarity of the marks, we conclude that confusion is likely between
Applicant’s mark THE PARADISE GROUP and Registrant’s mark PARADISE
BANK for their respective identified services.

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Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed.