CoBiz, Inc.

Trademark Trial and Appeal Board

Jun 4, 2009

No. 77238142 (T.T.A.B. Jun. 4, 2009)

Mailed:
4 June 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CoBiz, Inc.
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Serial No. 77238142
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Leigh L. Augustine of Sherman & Howard, LLC for CoBiz, Inc.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
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Before Quinn, Drost, and Ritchie, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 25, 2007, CoBiz, Inc. (applicant) applied to
register the mark PATHWAYS, in standard character form, on
the Principal Register for services ultimately identified
as “on-line banking services; providing bank account
information by telephone” in Class 36.1
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 77238142. The application contains an allegation of
a date of first use anywhere and in commerce of February 1, 2003.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77238142
2
§ 1052(d), because of registration for the mark PATHWAYS,
in standard character form, for “real estate mortgage
banking and lending services; loan origination and
financing via a global communications network” in Class 36.2
After the examining attorney made the refusal final,3
this appeal followed.
The examining attorney’s position is that the marks
are identical and “[b]oth the applicant and the
registrant’s services include banking services, although
the registrant’s banking services are more narrowly
defined… [I]t is presumed that the applicant’s on-line
banking services [include] real estate mortgage banking and
lending services and loan origination and financial
services.” Brief at unnumbered pp. 6-7. Applicant argues
that: “(1) through Applicant’s Final Office Action
Response, Applicant amended its recitation of services to
further limit and distinguish the use of its mark from

2 Registration No. 2910065, issued December 14, 2004.
3 The examining attorney’s final Office action also refused
registration because of two additional registrations for:
PATHWAYS for “providing student loan repayment information via
the print media and a global computer network; consultation
services in the field of student loan repayments” (No. 2980616)
and PATHWAY for “investment services, namely, investment advisory
services, investment management, investment advice, investment
consultation, investment of funds for others, alternative
investments for others” (No. 3208939). The refusals based on
these registrations were withdrawn in the examining attorney’s
Denial of Request for Reconsideration (p. 1).
Ser No. 77238142
3
other third parties with similar marks; (2) there are
fourteen other marks owned by third parties, all in
financial services and registered at the USPTO, that
incorporate the terms ‘PATHWAY’ or ‘PATHWAYS,’ which deems
all fourteen marks as extremely weak and each entitled only
to a very narrow and limited scope of protection; (3) the
nature of the services and trade channels between
Applicant’s mark and the Cited Marks4 are dissimilar, and
are easily distinguishable by the public; and finally (4)
there are dozens of currently and peacefully co-existing
common law ‘PATHWAY’ and ‘PATHWAYS’ marks in the financial
industry, which deem the mark as inherently weak.” Brief
at 1-2.
A refusal based on a likelihood of confusion requires
that we consider the evidence as it relates to the factors
set out by the Court of Customs and Patent Appeals in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003);
and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1896 (Fed. Cir. 2000). In considering the evidence of
record on these factors, we must keep in mind that “[t]he

4 Applicant’s brief addresses all three registrations originally
cited by the examining attorney.
Ser No. 77238142
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fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Regarding the marks, it is clear that they are for the
identical term PATHWAYS in standard character form.
Therefore, there are no differences in the marks and that
“even when goods or services are not competitive or
intrinsically related, the use of identical marks can lead
to an assumption that there is a common source.” In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993). See also Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981) (When both parties are
using the identical designation, “the relationship between
the goods on which the parties use their marks need not be
as great or as close as in the situation where the marks
are not identical or strikingly similar”).
Despite being identical, applicant argues that there
“are fourteen (14) other USPTO-registered marks which
incorporate the term ‘PATHWAY’ or ‘PATHWAYS;’ this fact
deems all fourteen marks as extremely weak and entitled
only to a very narrow and limited scope of protection.”
Brief at 2. We note that applicant’s list of fourteen
Ser No. 77238142
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registrations includes the cited registration as well as
the two cited and withdrawn registrations discussed in
footnote 3. Regarding the other eleven registrations, the
examining attorney argues that “applicant never provided
copies of registrations from USPTO records… Accordingly,
the third-party registrations should not be considered.”
Brief at 5. We agree. Applicant has not properly made
these registrations of record by referencing them in its
request for reconsideration. In re Duofold, Inc., 184 USPQ
638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”) and
In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB
1998) (“The Board does not take judicial notice of third-
party registrations, and the mere listing of them is
insufficient to make them of record”).
Furthermore, as the examining attorney points out,
from the limited information the applicant has made of
record in the list of registrations, “none of the
identified services are identical to the applicant’s
services.” Brief at 5. Indeed, despite applicant’s
description of these registrations as “all in financial
services” (Brief at 2), the services of most of these
registrations are very different from the cited
registration’s services, e.g., health insurance
Ser No. 77238142
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underwriting services, employee benefit retirement plan
consulting, providing information services for insurance
companies, and charitable services. The cited registration
for real estate mortgage banking and lending services is
also much narrower than applicant’s broadly identified on-
line banking services and loan origination and financing
via a global communications network.
With its request for reconsideration, applicant also
submitted 24 internet printouts. Applicant’s argument is
that “[t]here are dozens of currently and peacefully co-
existing common law ‘PATHWAY’ and ‘PATHWAYS’ marks in the
financial industry, which deem the mark inherently weak,
and, as such, reduce any likelihood of confusion.” Brief
at 8. “Evidence of this fact is demonstrated through an
Internet search utilizing Google.com for pathways and
‘financial services’ which returned 449,000 results.”
Brief at 9. Applicant’s printout also includes the first
ten results. However, truncated Google search results are
entitled to little weight. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007)
(“Search engine results — which provide little context to
discern how a term is actually used on the webpage that can
be accessed through the search result link — may be
insufficient to determine the nature of the use of a term
Ser No. 77238142
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or the relevance of the search results to registration
considerations”). See also In re Remacle, 66 USPQ2d 1222,
1223 n.2 (TTAB 2002)(“The examining attorney's print-out of
the results of an Internet search by the Yahoo search
engine are of little probative value, largely because
insufficient text is available to determine the nature of
the information and, thus, its relevance”). Here, we do
not know how many search results were references to
registrant or entities associated with it and the limited
information included with these results does not permit us
to give this evidence much weight.
We add that when we study the 23 longer excerpts that
applicant has made of record, at least nine are foreign
sources. Whatever common-law rights or registrations
entities may have in a mark in foreign countries would not
affect the strength of a mark in the United States. Accord
Bayer, 82 USPQ2d at 1835 (“Evidence of registration in
other countries is not legally or factually relevant to
potential consumer perception of Bayer’s analgesic goods in
the United States”).
Several other examples are simply titles of
publications or names for conferences that include the term
“Pathway” in the name. See Request for Reconsideration,
Exhibits D, L, M, R, and U. Some are for different
Ser No. 77238142
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services. Id., Ex. K (“The financial services pathway
focuses on preparing students for careers in Financial
Services”) and N (“a full service public relations firm”).
Many of the other references are little more than the names
and addresses of various “Pathway” businesses. See Id.,
Exhibits E and F (Indiana), G (Tennessee), Q
(Massachusetts), T (Idaho), and X (Michigan). This lack of
evidence impacts the weight to which these third-party uses
are entitled. Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995)
(“[A]pplicant has not furnished any evidence regarding the
extent of use of the marks by these third parties. The
geographic locations of these restaurants, in many
instances, are relatively obscure. Moreover, the pictures
of these restaurants tend to indicate that the operations
are small and local in nature”). Even when we consider the
evidence of record, we cannot conclude that the term
“Pathways” is such a weak mark that it is entitled to only
a very narrow scope of protection.
Next, we turn to the services of applicant and
registrant to determine if they are related. We must
consider the services as they are identified in the
application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
Ser No. 77238142
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1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”) and In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(punctuation in original), quoting, Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1816 (Fed. Cir. 1987) (“‘Likelihood of confusion must
be determined based on an analysis of the mark applied to
the … services recited in applicant’s application vis-à-vis
the … services recited in [a] … registration, rather than
what the evidence shows the … services to be’”). See also
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
Inasmuch as the examining attorney argues that the
services are overlapping or identical in part, it is
imperative that we determine whether this is correct
because, if it is, the use of the identical mark PATHWAYS
Ser No. 77238142
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on identically overlapping services would be confusing.
See Denial of Request for Reconsideration at 1
(“[A]pplicant’s services could encompass the registrant’s
services”).
Applicant’s services include “on-line banking
services.” Registrant’s services include “real estate
mortgage banking and lending services.” There are no
limitations to applicant’s banking services except that
they are performed online. Applicant’s banking services
are broadly defined and they would include mortgage banking
and lending. There is no evidence that registrant’s
services could not be available online. Therefore,
applicant’s online banking services overlap with
registrant’s real estate mortgage banking and lending
services.
Finally, because the services “are legally identical,
they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers.” In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See
also Hewlett-Packard Co. v. Packard Press, Inc., 281 F.2d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“[A]bsent
restrictions in the application and registration, goods and
services are presumed to travel in the same channels of
trade to the same class of purchasers”) and Genesco Inc. v.
Ser No. 77238142
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Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”).
As a result, inasmuch as the services are overlapping
and the marks are identical, we conclude that confusion is
likely.
Decision: The refusal to register applicant’s mark
PATHWAYS under Section 2(d) of the Trademark Act is
affirmed.