IP Law Daily No likelihood of confusion between ‘CFA’ financial advisor and ‘CPFA’ pension advisor certifications
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Friday, November 6, 2020

No likelihood of confusion between ‘CFA’ financial advisor and ‘CPFA’ pension advisor certifications

By Brian Craig, J.D.

In dispute between competing providers of certification and other services for financial advisors, CFA Institute could not proceed with infringement claims over defendants’ CPFA (Certified Pension Fiduciary Adviser) designation.

In analyzing the relevant likelihood of confusion factors, the federal district court in Charlottesville, Virginia, has concluded that no reasonable jury could find in favor of the CFA Institute in its trademark infringement action against the American Society of Pension Professionals & Actuaries concerning the "CFA" and "CPPA" credentials. In granting summary judgment, the court found that the CFA Institute offered no evidence showing actual confusion between the "Chartered Financial Analyst" program, or the "CFA Program" and the Certified Pension Fiduciary Adviser program, operating under the acronym "CPFA." While the court noted that the absence of actual confusion is not dispositive, it explained that actual confusion is the most important of the relevant factors bearing on likelihood of confusion (CFA Institute v. American Society of Pension Professionals & Actuaries, November 5, 2020, Moon, N.).

Both parties to this dispute are organizations in the business of certifying, training, and providing a network for financial advisors, although Plaintiff CFA Institute caters to financial advisors generally and Defendant American Retirement Association ("ARA") and its subsidiaries focus on retirement industry-specific advisors.

The CFA Institute's training and certification program for financial advisors, the Chartered Financial Analyst program (CFA Program), was trademarked in 1972 for association services—namely, the promotion of interest and professional standards in the field of financial analysts. In 1977, The USPTO deemed this registration incontestable. It has since received incontestable trademark registrations for CFA for educational services, printed financial publications, and financial analysis services (collectively, "CFA Marks").

The ARA trains, educates, and offers membership services for those providing financial advice to employers on retirement plans offered to their employees. One of the ARA’s subsidiaries named in the complaint is the National Association of Plan Advisors ("NAPA"), which offered a "Plan Financial Consulting" or "Qualified Plan Financial Consultant" certification until 2016, when it was replaced by the "Certified Plan Fiduciary Advisor" or "CPFA" certification. Another of ARA’s subsidiaries, Defendant American Society of Pension Professionals & Actuaries ("ASPPA"), sought to register the CPFA mark with the USPTO. CFA opposed the registration, and the opposition proceeding was stayed pending resolution of the present litigation.

In the present suit against ARA, NAPA, and ASPPA (collectively, "Defendants"), CFA Institute asserted claims for trademark infringement, unfair competition, false designation of origin, and false representations under the Lanham Act and trademark infringement and unfair competition under Virginia common law. Defendants brought a counterclaim seeking Cancellation by Restriction under Section 18 of the Lanham Act, pursuant to Section 18 of the Lanham Act to restrict Plaintiff’s CFA Marks, to specifically exclude fiduciary advice to employers at the plan level regarding retirement planning, which the court denied on October 24, 2019. Presently before the court was Defendants’ motion for summary judgment.

Likelihood of confusion. The court first recognized that the Fourth Circuit has articulated nine factors for courts to consider in the likelihood-of-confusion analysis: (1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant’s intent; (7) actual confusion; (8) the quality of the defendant’s product; and (9) the sophistication of the consuming public. The Fourth Circuit has characterized these factors as only a guide of various considerations that may be relevant in determining the ultimate statutory question of likelihood of confusion.

Strength of plaintiff’s marks. The court began its analysis of likelihood of confusion by considering the strength of the CFA marks in the marketplace, concluding that the CFA marks have significant commercial strength. Notwithstanding the fact that the CFA Marks enjoy robust trademark protection, they lack the distinctiveness that would heighten the likelihood of confusion with a superficially similar acronym. Evidence of similar third-party registrations counters evidence supplied by the USPTO registrations of the CFA marks. It is notable, however, that just because third-party registrations exist does not necessarily mean that those abbreviations are unquestionably similar. Therefore, the court found that the marks have commercial strength.

Actual confusion. Next, the court concluded that the absence of actual confusion strongly weighs against a finding of likelihood of confusion. The Fourth Circuit has characterized that evidence of actual confusion in the marketplace as the most important of the factors bearing on likelihood of confusion. While no actual confusion is required to prove a case of trademark infringement, such a consideration is nevertheless often paramount to the likelihood-of-confusion analysis. A plaintiff may prove trademark infringement without offering evidence of actual confusion, but the absence of any confusion makes the plaintiff’s particular theory of trademark infringement difficult to accept at face value.

The court found that the CFA Institute failed to offer even a scintilla of evidence showing actual confusion in the marketplace. No survey, no anecdotal evidence, not even a single account from anyone who once called CFA Institute seeking a CPFA credential, or vice-versa. Even though the CPFA program did not experience a sizeable uptick of applicants until 2018, the credential indisputably dates back to 2016. Even two years without any identifiable instance of actual confusion is a damning fact undermining the claim. While the court recognized that the failure to offer evidence of actual confusion is non-dispositive, the absence of this significant factor further demonstrates there is no genuine dispute of material fact.

Other factors. Finally, the court concluded none of the other factors support a finding of likelihood of confusion. As to advertising, CFA provides a rigorous program for financial advisors generally, while the CPFA credential caters to those advising employers on their fiduciary duties in crafting the retirement programs for their employees. Regarding the sophistication of consuming parties, the court found there is no serious debate that those in the financial services industry are not likely to obtain the CPFA credential under the mistaken belief that it is affiliated with the CFA credential.

Therefore, no reasonable trier of fact could find in favor of CFA Institute because it failed to put forth evidence sufficient to create a genuine dispute of fact that Defendants’ use of their CPFA credential creates a likelihood of confusion in the marketplace. Accordingly, the court granted summary judgment on all claims.

Practitioner comments. In commenting on the court’s ruling, lead counsel for American Retirement Association (ARA), Finnegan partner Mark Sommers, remarked, "We are pleased with the court’s thoughtful, thorough, and well-reasoned decision finding no infringement from ARA’s use of its CPFA credential name and program, which is used by those accredited professionals to promote their expertise in advising employers of their fiduciary duties in managing employee 401(k) retirement plans that allow everyday Americans equal opportunities for retirement savings."

Sommers pointed out that this case illustrates the importance of viewing trademarks within the contextual framework of the real world. "The court’s ruling underscores that evaluating trademark infringement claims involves much more than a white-room examination of marks that may contain similar letters. Especially with acronyms, the underlying meaning of the acronyms must be taken into account." In this case, there was a complete lack of actual confusion despite the credentials’ co-existence in the marketplace for four years.

This case is No. 3:19-cv-00012-NKM-RSB.

Attorneys: Ann Katherine Ford (DLA Piper LLP) for CFA Institute. Mark S. Sommers and Benjamin Firestone Tookey (Finnegan, Henderson, Farabow, Garrett & Dunner LLP) for American Retirement Association, National Association of Plan Advisors, and American Society of Pension Professionals & Actuaries Inc.

Companies: CFA Institute; American Retirement Association; National Association of Plan Advisors; American Society of Pension Professionals & Actuaries Inc.

MainStory: TopStory Trademark GCNNews VirginiaNews

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