IP Law Daily, TRADEMARK—TTAB: FICO cannot take a bite out of FIDO when it comes to fraud prevention services, (Dec 4, 2023)

By Matthew Hersh, J.D.

The FICO mark was famous—but not for fraud protection services.

The developer of the nearly universally known FICO credit scoring system could not rely on the fame of its mark when seeking to protect its trademark in connection with its lesser-known fraud protection service, the Trademark Trial and Appeal Board has held. The Board, in finding that a competitor’s fraud protection system was not likely to be confused with the FICO fraud protection service, also emphasized that the marks were dissimilar, the two companies offered different types of fraud protection services, the products were sold to sophisticated purchasers, and the owners of the FICO mark had failed to come up with any evidence of actual consumer confusion—even though the two products had been on the market for nearly a decade (Fair Isaac Corp. v. FIDO Alliance, Inc., December 1, 2023, Casagrande, T.).

The dispute arose when FIDO Alliance, an open industry association that specializes in authentication standards, filed several applications seeking registration on the Principal Register of character and design marks with the word FIDO. The application sought registration of these marks in Classes 9, 36, and 45 for a variety of uses relating to authentication of personal identity. The Class 9 filing covered use of the mark in connection with biometric sensors, “fob-like” devices, near field communication and wireless low energy technology, and factor authentication devices, among others. The Class 45 filing covered user authentication services in online and e-commerce transactions and “a secure binding process from a user device to a server backend for assured user authentication.” The Class 36 filing covered “secure commercial transactions in the nature of authentication of user identification and device attestation services for authorizing financial transactions.”

The proposed registrations brought the opposition of Fair Isaac Corporation, the owner of the well-known FICO credit rating system. But Fair Isaac did not claim a likely of confusion with its ubiquitous scoring system. Rather, it claimed a likelihood of confusion with its lesser-known fraud detection services. These services are registered in Class 42 in connection with the use of online software “for use in monitoring, tracking, detecting, preventing and managing fraud in credit transactions” and in Class 45 for the use of “data warehousing, data mining and predictive modeling software” in monitoring, tracking, detecting, preventing, and managing fraud and identity theft.

The Board consolidated the various applications and oppositions (and also a cancellation petition by Fair Isaac over an already-existing registration covering similar ground) and then issued this decision.

Likelihood of confusion. The Board found that there was no likelihood of confusion between the two marks and therefore denied the opposition.

The Board first found that the similarity in the marks did not weigh in favor of a likelihood of confusion. To be sure, the Board noted, each was a four-letter word that looked similar except for one letter. But there were two ways to pronounce “FICO” in contemporary English (“fee-koh or fī-koh,” the Board noted) while “FIDO” has only one recognized pronunciation. Moreover, while FICO has no meaning outside of the credit scoring system it represents, the Board noted, FIDO is of course a well-recognized “common cliché name for a dog.” On the evidence here, the Board reasoned, “we think the differences between FICO and FIDO are significant enough to outweigh the similarities.”

The goods and services offered by the two companies were also not similar enough to cause a likelihood of confusion, the Board found. To be sure, the Board noted, the goods and services were “related in the general sense in that they both play a role in combatting fraud.” But there were key differences between the two. For one thing, the two services authenticated different things: the FIDO service was aimed at authenticating users who wanted to access a system—regardless of what those users intended to do once they accessed the system—while the FICO service was aimed only at authenticating particular transactions made by those users. Moreover, the Board noted, the timing also differed: the FIDO service worked to prevent users from accessing a system before they could engage in any transactions, while the FICO service tagged suspicious and potentially fraudulent transactions only after they were made.

The respective channels of trade factor also did not help Fair Isaac, the Board found. To be sure, the Board noted, the parties’ channels of trade did appear to be similar, “in the sense that the sales of their complex, business-oriented products and services would require intense interaction with their targeted companies, primarily medium-to-large sized, before sales were consummated.” But the individuals these sales targeted, the Board reasoned, were “people with enormous responsibilities within their organizations”—and moreover, were “sophisticated purchasers who know their companies’ business and technology needs.” Thus, while the evidence pulled in somewhat opposing directions, the Board noted, “this factor, on balance, supports a finding that confusion is not likely.”

Fair Isaac was also not helped, the Board found, by the fame of its mark. Nobody disputed that FICO is a well-known mark in connection with credit scoring products and services, the Board noted. But all of Fair Isaac’s evidence went to bolstering that very point. There was “no evidence in the record,” the Board observed, “directed to the fame or strength of the FICO mark in connection with its fraud related products and services, which are the basis of its likelihood of confusion claims.”

Finally, the Board found, Fair Isaac had not come forward with any evidence of actual confusion of consumers—even though the two products had been on the market for nearly a decade. “We deem it significant that two such sophisticated, large, national companies have been out in the marketplace dealing with the same types of corporate customers and, in some instances, the same companies,” the Board noted, “and yet neither is aware of any evidence that, at any time over the last nine years, any of their actual or potential customers has been confused as to the source of the parties’ respective goods and services.”

With other factors neutral, the Board noted, “on balance, we conclude that confusion is unlikely.”

The Case is Opposition Nos. 91225634 and 91249276; Cancellation No. 92071706.

Attorneys: Timothy M. Kenny (Norton Rose Fulbright US LLP) for Fair Isaac Corp. John C. Cain (Munck Wilson Mandala, LLP) for Fido Alliance, Inc.

Companies: Fair Isaac Corp.; Fido Alliance, Inc. GCNNews

Cases: Trademark USPTO GCNNews