94002845 (T.T.A.B. Jun. 24, 2020)

American National Bank of Texasv.Old National Bank

Trademark Trial and Appeal BoardJun 24, 2020

94002845 (T.T.A.B. Jun. 24, 2020)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 24, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ American National Bank of Texas v. Old National Bank _____ Concurrent Use Proceeding No. 94002845 _____ Before Kuczma, Adlin and Johnson, Administrative Trademark Judges. By Kuczma, Administrative Trademark Judge: American National Bank of Texas (“ANBT”), seeks a concurrent use registration on the Principal Register of the mark YOUR BANK. FOR LIFE. (in standard characters, “YOUR BANK” disclaimed) for “banking services” in Class 36.1 1 Application Serial No. 87315217, filed on January 26, 2017, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), alleging June 30, 2012 as the date of first use and first use in commerce. Applicant is also the owner of geographically unrestricted Registration No. 5694323 issued on March 12, 2019 for the mark . Concurrent Use No. 94002845 - 2 - In a Post-Publication Amendment dated February 11, 2018, ANBT included a Statement of Concurrent Use claiming the exclusive right to use the mark in the area comprising the states of: Texas, Louisiana, New Mexico, Oklahoma, Arkansas,2 California, Arizona, Colorado, Utah, Nevada, Oregon and Washington, identifying Old National Bank (“ONB”), owner of geographically unrestricted Application Serial No. 87606287, as an excepted user. Shortly thereafter on February 15, 2018, ONB filed a Notice of Opposition, Opposition No. 91239532, against ANBT’s Application No. 87315217 based on ONB’s prior common law rights in the mark YOUR BANK. FOR LIFE. for banking services since at least as early as 1979; and its ownership of geographically unrestricted Application Serial No. 87606287 for the mark YOUR BANK. FOR LIFE. for “banking services; investment management, namely, fiduciary representation services and financial planning services.”3 2 In the February 11, 2018 Post-Publication Amendment filed by ANBT in connection with its application Serial No. 87315217, ANBT claimed “the exclusive right to use the mark in the area comprising of Texas, Louisiana, New Mexico, Oklahoma, Arkansas, California, Arizona, Colorado, Utah, Nevada, Oregon and Washington.” (emphasis added). However, the February 22, 2019 Amended Consent Motion to Amend Application to One Seeking Concurrent Use Registration filed by ANBT with ONB’s consent in connection with Opposition No. 91239532, states that Applicant seeks concurrent use registration of the mark YOUR BANK. FOR LIFE. in the geographic area comprising the states of “Texas, Louisiana, New Mexico, Oklahoma, California, Arizona, Colorado, Utah, Nevada, Oregon and Washington.” (see Opposition No. 91239532, 19 TTABVUE 2, 3 and 20 TTABVUE 2). Thus, Arkansas is not included in the list of states where ANBT is seeking concurrent use of the mark. 3 ONB also filed a Notice of Opposition against Applicant’s mark , Serial No. 87372171, Opposition No. 91239533, which was subsequently dismissed without prejudice on February 1, 2019. Serial No. 87372171 eventually issued as Registration No. 5694323. Concurrent Use No. 94002845 - 3 - ANBT subsequently filed an Amended Consent Motion to Amend [Its] Application to One Seeking Concurrent Use Registration requesting termination of the Opposition in favor of a concurrent use proceeding.4 On April 25, 2019, the Opposition was dismissed in favor of this Concurrent Use proceeding. The parties engaged in settlement negotiations in connection with this proceeding and on October 16, 2019, submitted a Settlement Agreement (“Agreement”) executed by both ONB and ANBT, along with a Verified Statement Under 37 C.F.R. § 2.42 by ONB.5 The parties agree to the use and registration of their respective marks in accordance with the following terms set forth in the Agreement: 1. ANBT agreed to and has amended Serial No. 87315217 to limit the registration of its YOUR BANK. FOR LIFE. mark to: Texas, Louisiana, New Mexico, Oklahoma, California, Arizona, Colorado, Utah, Nevada, Oregon and Washington (its “Territory”) and will not use the YOUR BANK. FOR LIFE. mark as a stand-alone trademark outside of its Territory. (paragraph No. 1 of the Agreement); 2. ANBT agrees to use the YOUR BANK. FOR LIFE mark on its website in close association with its name AMERICAN NATIONAL BANK OF TEXAS and will not use the YOUR BANK. FOR LIFE. mark on any of its outward facing signage at any of its physical locations outside of its Territory. (paragraph No. 3); 4 See Opposition No. 91239532, Consented Motion to Amend Application to One Seeking Concurrent Use Registration (17 TTABVUE). 5 See 3 TTABVUE and October 16, 2019 Response to Office Action filed in connection with ONB’s trademark application Serial No. 87606287. ONB also disclaimed the exclusive right to use BANK apart from the mark as shown. Concurrent Use No. 94002845 - 4 - 3. ONB has amended Serial No. 87606287 “to exclude exclusive rights to” ANBT’s Territory (paragraph No. 2) and has amended its application accordingly in the April 27, 2019 Voluntary Amendment filed in connection with its application; 4. ONB agrees not to interfere with the use or registration of ANBT’s YOUR BANK. FOR LIFE. or marks for the services outlined in Serial Nos. 87315217 and 87372171,6 so long as ANBT complies with the terms of the Agreement. (paragraph No. 6); 5. ANBT agrees to ONB’s registration of the mark YOUR BANK. FOR LIFE set forth in Serial No. 87606287 as amended (see above), and not to interfere with the use or registration of ONB’s YOUR BANK. FOR LIFE. mark for its services as amended. (paragraph Nos. 7 and 8); and 6. The parties agree to continue to take reasonable action to prevent any confusion due to the concurrent use, coexistence and registration of their respective marks, to notify each other of any incidences of actual confusion of which they become aware, and to take reasonable action to correct such confusion. (paragraph No. 11). A concurrent use registration may issue only where it is determined “that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which 6 As indicated above, ANBT’s Application Serial No. 87372171 issued as Registration No. 5694323 on March 12, 2019. Concurrent Use No. 94002845 - 5 - such marks are used.” Trademark Act Section 2(d), 15 U.S.C. § 1052(d); see also Southwestern Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015). In reviewing the terms of the Agreement, it appears that confusion, mistake, or deception could result from the continued use by ANBT and ONB of the same mark under the conditions and limitations set forth in the Agreement. We address some of the language in the Agreement: First, the second “whereas” clause should be updated to state that Applicant has registered the mark . Additionally, the last “whereas” clause states that the parties’ marks are distinct. However, inasmuch as the marks are identical, the Agreement does not point out how the marks are distinct. Thus, the language should be amended to indicate other reasons why confusion is not likely. While ANBT agrees to amend its application and not use the YOUR BANK. FOR LIFE. mark as a stand-alone trademark outside of its Territory (paragraph 1), ONB only agrees to amend its application to exclude exclusive rights in ANBT’s Territory (paragraph 2). The Agreement is silent as to the geographical area where ONB can use the YOUR BANK. FOR LIFE. mark. Paragraph 3 of the Agreement indicates that ANBT has “physical locations outside of Applicant’s Territory.” If ANBT uses its involved mark YOUR BANK. FOR LIFE. in connection with these physical locations outside of its Territory, confusion could result because the parties would be using identical marks in overlapping territory. Concurrent Use No. 94002845 - 6 - Unlike the language in paragraph No. 6 which restricts ONB from taking any action provided that ANBT complies with the terms of the Agreement, paragraph No. 7 states that ANBT agrees not to take any action to interfere with ONB’s use or registration of its mark for the services set forth in the Agreement. However, ANBT should also be entitled to take action if ONB does not comply with the terms of the Agreement. The wording of paragraph No. 9 allows ONB the right to file a new application for the mark YOUR BANK. FOR LIFE., covering all of the United States, if ANBT ceases use of either the YOUR BANK. FOR LIFE. mark or the mark for more than 12 months. (emphasis added). This entitles ONB to file an unrestricted application to register the mark YOUR BANK. FOR LIFE. even if ANBT is still using either of its marks. However, confusion would result if both parties are using their marks in overlapping territory. Similarly, the Agreement does not address ANBT’s geographically unrestricted registration giving ANBT nationwide rights in despite ONB’s use of the YOUR BANK. FOR LIFE. mark. Additionally, paragraph Nos. 6 and 9 misidentify ANBT’s mark as YOUR. BANK. FOR LIFE. Paragraph No. 11 does not adequately address the steps the parties will take to avoid confusion. For example, in addition to the steps recited in the Agreement, the parties’ may also want to agree that in the event actual confusion arises the parties will negotiate and cooperate, in good faith, to determine what action must be taken Concurrent Use No. 94002845 - 7 - to eliminate or minimize any such confusion, mistake, or deception; and will work together to determine reasonable measures to prevent further confusion. Lastly, there is no statement recognizing the parties’ understanding and agreement that the use of their respective marks in their respective territories, if in fact they do have respective territories, in the manner provided in the Agreement is not likely to cause confusion. And, the Agreement also lacks a request for issuance of the concurrent registrations sought, along with specifications for the respective restrictions as to each such registration. Upon careful consideration of the Agreement between the parties, the Board is not persuaded that the parties’ concurrent use of their respective marks as set forth in the Agreement is not likely to cause confusion under 15 U.S.C. § 1052(d). Therefore, this concurrent use proceeding cannot be dissolved based on the parties’ Agreement. The parties are allowed 60 days from the date of this order to submit an amended concurrent use settlement agreement delineating the non-overlapping geographic areas of use and registration by the parties including terms evidencing how likelihood of confusion is to be avoided as discussed above. This proceeding shall otherwise remain suspended pending the filing of an amended agreement or the expiration of the foregoing 60 day period. In the event that the 60-day period passes without an acceptable concurrent use settlement agreement being presented, proceedings shall be resumed.