BankAtlantic Bancorp, Inc.

Trademark Trial and Appeal Board

Sep 23, 2008

No. 75618643 (T.T.A.B. Sep. 23, 2008)

Mailed:
23 September 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BankAtlantic Bancorp, Inc.
________

Serial Nos. 75618643 and 75618644
_______

David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for BankAtlantic Bancorp, Inc.

(Serial No. 75618643) Ada P. Han, Trademark Examining
Attorney, Law Office 106 (Mary I. Sparrow, Managing
Attorney).
(Serial No. 75618644) Samuel E. Sharper, Jr., Trademark
Examining Attorney, Law Office 108 (Andrew Lawrence,
Managing Attorney).1

_______

Before Drost, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 7, 1999, applicant, BankAtlantic Bancorp,
Inc., filed two applications to register on the Principal

1 Despite a consolidation order, which applicant followed, the
examining attorneys filed separate briefs. They are for the most
part the same except for the discussion of the design feature in
the ‘644 application. Our references to the record will be to
that case because of the additional design feature discussion.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 75618643 and 75618644
2
Register the marks BANKATLANTIC (No. 75618643) and
BANKATLANTIC and design shown below (No. 75618644).

The services in both applications are identified as
“banking services” in Class 36. The dates of use first use
anywhere and in commerce are listed as August 14, 1987
(‘643 application) and May 12, 1998 (‘644 application).
The ‘644 application contains a disclaimer of the term
“Bank.”
The examining attorney2 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark ATLANTIC BANK, in typed or standard character
form, for “banking services” in Class 36. Registration No.
1533587 issued April 4, 1989 (affidavits under Sections 8
and 15 accepted and acknowledged). The registration
contains a disclaimer of the term “Bank” and the current
owner is identified as New York Community Bancorp, Inc.

2 Initially, the same examining attorney handled both
applications. Subsequently, the applications were transferred to
two different examining attorneys. We will use the singular when
referring to the “examining attorney.”
Ser Nos. 75618643 and 75618644
3
After extensive prosecution and several requests for
remand and reconsideration, applicant has now appealed to
this board.
Cases involving refusals under Section 2(d) require us
to consider the facts as they relate to the relevant
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). Oftentimes, in
likelihood of confusion cases, the “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).
We begin by looking at the services. In this case,
the applications and registration all identify the services
as “banking services,” therefore there are identical.
“When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
Ser Nos. 75618643 and 75618644
4
USPQ2d 1698, 1701 (Fed. Cir. 1992). Furthermore, 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).
Next, we examine “‘the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). Applicant’s marks are
BANKATLANTIC and . Registrant’s mark is
ATLANTIC BANK. The examining attorney argues that the “the
marks consist of the identical word components ‘ATLANTIC’
and ‘BANK.’ Applicant’s mark is merely and legally the
registrant’s mark transposed, with an addition of a design
portion.” Brief at unnumbered p. 5. The “transposition,
at bar, results in a term which has the same meaning and
commercial impression.” Brief at 6.
In response, applicant argues that the marks are
dissimilar.
Where, as here, both terms are suggestive and weak for
banking services, the cited mark should be entitled to
a very narrow scope of protection, limited to the
Ser Nos. 75618643 and 75618644
5
identical or virtually identical mark for identical or
very closely related products or services. Moreover,
where a mark consists of suggestive, widely-used
terms, as is the case here, reversing those terms
often avoids a likelihood of confusion.

Brief at 19.

In a somewhat similar case, the board held:
Comparing applicant's marks “AMERIBANC” and design and
“AN AMERIBANC BANK” and design to opposer's marks
“BANKAMERICA” and “BANK OF AMERICA”, it is readily
apparent that the most significant portion of
applicant's marks, i.e., the word “AMERIBANC”, is
essentially a transposition of the features of
opposer's marks. As noted by the Board in the case of
In re Sybron Corporation, 165 USPQ 410 (TTAB 1970),
the fact that two marks are composed of reverse
combinations of the same elements is not necessarily
conclusive on the issue of likelihood of confusion
since registration may be permitted if the transposed
marks create distinctly different commercial
impressions. See: Murphy, Brill and Sahner, Inc. v.
New Jersey Rubber Company, 102 USPQ 420 (Comr., 1954)
[FLITE TOP for hosiery -- TOPFLITE for shoe soles --
registration permitted]; Marriott-Hot Shoppes, Inc. v.
Hedwin Corporation, 161 USPQ 742 (TTAB, 1969) [TALK O’
THE TABLE for coasters, trays, napkin rings, and lazy
susans -- TABLE TALK for a periodical publication --
registration permitted]; In re Mavest, Inc., 130 USPQ
40 (TTAB 1961) [SQUIRETOWN for men's sport coats --
TOWN SQUIRES for men's shoes -- registration
permitted]; Ex parte Loft Candy Corp., 92 USPQ 279
(Comr., 1952) [JOYPOPS for candy -- POPJOY and design
for popped and unpopped corn -- registration refused];
The Hardware Company v. Bush, 119 USPQ 271 (TTAB 1958)
[DORWINDO for doors, windows and jalousies -- WIN-DOR
for similar goods -- registration refused]; McNamee
Coach Corporation v. Kamp-A-While Industries, Inc.,
148 USPQ 765 (TTAB, 1965) [KING KAMPER for camping
trailers -- KAMP KING KOACHES for campers --
registration refused]; Royal Crown Cola Co. v. Bakers
Franchise Corporation, 150 USPQ 698 (TTAB 1966) [RITE
DIET for low fat fluid milk -- DIET-RITE for dietetic
soft drinks -- registration refused]; In re Inco, 154
USPQ 629 (TTAB 1967) [GUARDIAN OF POSTURE for
Ser Nos. 75618643 and 75618644
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mattresses -- POSTURGUARD for mattresses --
registration refused]; In re Sybron Corporation, supra
[VACUUM AIRE for dental equipment and accessories --
AIRVAC for similar goods -- registration refused];
Carlisle Chemical Works, Inc. v. Hardman & Holden
Limited, 168 USPQ 110 (CCPA, 1970) [COZIRC for driers
for paints and varnishes -- ZIRCO for catalytic agents
used in the manufacture of drier compositions --
registration refused]; In re Atlantic Gulf Service,
184 USPQ 828 (TTAB 1974) [ATLANTIC GULF SERVICE for
cargo transportation by ship -- GULF ATLANTIC for
distribution services, namely, public commercial
warehousing, shipside terminal operations, and common
carrier and contract trucking services -- registration
refused]; and In re Wm. E. Wright Co., 185 USPQ 445
(TTAB 1975) [FLEXI-LACE for garment findings, seam
bindings, and hem tapes -- LACE-FLEX for laces in the
piece -- registration refused]. In the present case,
the words “BANKAMERICA” and “BANK OF AMERICA”, on the
one hand, and “AMERIBANC”, on the other, convey the
same meaning and create substantially similar
commercial impressions. In view thereof, and
considering that this is not a case where the marks of
the parties are likely to be encountered by purchasers
on a side-by-side basis, and that the average person
is not infallible in his recollection of trade
designations and may well transpose the elements of a
mark in his mind, we do not believe that the
differences between the marks of opposer and
applicant, considered in their entireties, are
sufficient to preclude the likelihood that the
contemporaneous use of these marks in connection with
the similar services here involved will result in
confusion or mistake or deception. In arriving at
this conclusion, we have not overlooked the fact that
the words “AMERICAN” and “BANK” commonly appear in the
names of banks.

Bank of America National Trust and Savings Association v.
American National Bank of St. Joseph, 201 USPQ 842, 845
(TTAB 1978).
Subsequently, the board faced the issue of whether the
term KEY was weak when applied to banking services. In re
Ser Nos. 75618643 and 75618644
7
Hamilton Bank, 222 USPQ 174 (TTAB 1984). In that case, the
board held:
What this case boils down to is the fact that the term
“KEY” is part of at least twenty registered service
marks adopted in the banking field. The term has weak
trademark significance in this field because of its
suggestiveness, which is evidenced by its widespread
adoption and registration. In the case at hand the
applicant’s mark is no more likely to cause confusion
with the five cited registered marks than the five
cited marks are likely to cause confusion with the
fifteen other registered marks which contain the term
“KEY.” Applicant’s mark is distinguishable because of
its design element and because it has no other
elements in combination with the term “KEY.” Each
cited registered mark uses other matter in combination
with the term which distinguishes that mark from
applicant's mark and from the other registered marks.

Id. at 179.
We conclude that the marks BANKATLANTIC and ATLANTIC
BANK are more similar than they are different because they
consist of the same words “Bank” and “Atlantic.” Both
marks would have the same meaning, a bank near the Atlantic
Ocean. Examining Attorney’s Brief at 6-7 (“[P]urchasing
public will perceive that those services, sold under the
marks, originate from banks located near the Atlantic Ocean
or along the Eastern seaboard of the United States”).
Thus, both marks are suggestive of banks located near the
Atlantic Ocean. Since they have the same words in
different order (applicant’s without a space), they are
somewhat similar in appearance. Also, their commercial
Ser Nos. 75618643 and 75618644
8
impressions have some similarity because they consist of
the same words although, as we will discuss subsequently,
these words are not very distinctive.
We add that the ‘644 application has a design element.
This simple element would not normally lead potential
consumers to believe that the services come from different
sources. The simple rectangular box with three lines is
not very distinctive. See In re Dixie Restaurants, Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(Federal Circuit held that, despite the addition of the
words “The” and “Cafe” and a diamond-shaped design to
registrant’s DELTA mark, there still was a likelihood of
confusion). See also In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S
(stylized) for grocery and general merchandise store
services found likely to be confused with BIGGS and design
for furniture); Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products). However, when marks are
very suggestive, the presence of a design may be a more
significant factor. See Hamilton Bank, 222 USPQ at 179.
While we conclude that the marks are similar, we must also
Ser Nos. 75618643 and 75618644
9
consider the strength of the marks, which we will do
subsequently.
Normally, with the services, channels of trade, and
prospective purchasers being identical and the marks being
a simple transposition of the identical words, we would
conclude that there is a likelihood of confusion. However,
applicant has submitted a substantial amount of evidence
that requires that we look at the likelihood of confusion
issue from additional angles.
We must first dispose of an erroneous argument that
applicant has raised. Applicant submitted a copy of a non-
precedential decision of the board. In re First Citizen’s
Bancshares, Inc., Serial No. 75165513 (TTAB July 28, 1999)
(Examining attorney’s refusal to register ATLANTIC STATES
BANK because of the mark ATLANTIC BANK registered for the
same services reversed). Applicant maintained that “the
Board’s unpublished decision … is binding on and must be
considered by the Examining Attorney in this case.”
Applicant’s Request for Reconsideration dated January 16,
2007 at 3. Applicant also argues that “the most relevant
and controlling DuPont factors in this cases are: (1) the
Board’s prior decision in First Citizen’s holding the cited
Atlantic Bank mark ‘weak’ and ‘not entitled to a broad
scope of protection….’” Brief at 4. Despite a recent
Ser Nos. 75618643 and 75618644
10
change in board policy permitting citation of all board
decisions, it is still true that a “decision designated as
not precedential is not binding upon the TTAB.” OG Notice
dated January 23, 2007. As such, it is not binding on the
examining attorneys either, and it cannot be a controlling
factor in a case. While it “may be cited for whatever
persuasive value it might have,” neither the board nor the
examining attorney can err by failing to follow a non-
precedential decision, except under circumstances not
relevant here. See TBMP § 101.03 (2d ed. rev. 2004).
Next, we consider the other evidence that applicant
has made of record. Applicant asserts that it previously
obtained registrations for the marks BANKATLANTIC (typed)
(No. 1554045 issued August 29, 1989) and BANKATLANTIC and
ship design (No. 1557206 issued September 19, 1989) for
“providing savings and loan services” in Class 36. Both
registrations were cancelled in 1996 under Section 8 of the
Trademark Act. Applicant has also submitted a declaration
that indicates that it is located in Florida where it has
“70 branches, and is one of the largest and oldest
financial institutions based in Florida” and that it
provides “a full range of commercial and individual banking
products.” White October 8, 2004 dec. at 2. It also has a
website, www.bankatlantic.com, and approximately 58,000
Ser Nos. 75618643 and 75618644
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online customers. Id. In addition, applicant has “more
than 601,000 accounts spanning approximately 266,000
households. Although most account holders have Florida
addresses, many have addresses in a number of states,
including approximately 2000 customers who receive
statements at New York addresses.” Id. at 3. The
declarant also maintains that it is aware of no instance of
confusion between its mark and the Atlantic Bank mark. Id.
at 4.
Furthermore, applicant has submitted significant
evidence of the registration and use of various marks
involving the term “Atlantic” for identical and related
services. Applicant summarizes its evidence as follows:
Applicant has submitted evidence of 300+ uses of
ATLANTIC for banking and financial services relied on
by the Board in First Citizen’s; evidence of 270+
additional entities providing banking and financial
services under ATLANTIC-formative trade names and
marks from Dun and Bradstreet and Nexis; and evidence
of approximately 360 financial institutions and banks
operating under ATLANTIC-formative names and marks in
the United States Federal Reserve System.

Reply Brief at 6-7.

Some of the most relevant examples are set out below:
No. 1533587 – ATLANTIC BANK (“Bank” disclaimed) for
banking services” in Class 36. Cited registration.
Hieber Ex. 1 (evidence of use).

No. 1341446 - BANCO ATLANTICO (“Banco” disclaimed)
for “banking services” in Class 36. The mark is
translated as “Bank of the Atlantic.” This mark was
Ser Nos. 75618643 and 75618644
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originally cited as a bar to registration but
applicant entered into a consent agreement with the
registrant (Request for Reconsideration dated January
16, 2007, Ex. A). Hieber Ex. 1.

No. 2449373 – ATLANTIC STATES BANK (“States Bank”
disclaimed) for “Banking Services” in Class 36.
Issued after refusal reversed in In re First Citizens
BancShare, Inc. case. Hieber Ex. 1 (Evidence that
“Atlantic States Bank will change its name to
IronStone Bank on March 15” 2004).

Nos. 2748299 and 2835006 – ATLANTIC TRUST (“Trust”
disclaimed) and ATLANTIC TRUST COMPANY (“Trust
Company” disclaimed) for, inter alia, “private
banking services” in Class 36. Same registrants.
Hieber Ex. 1 (evidence of use).

No. 1419434 – ATLANTIC MORTGAGE & INVESTMENT CO.
(“Mortgage & Investment Co.” disclaimed) for
“mortgage banking services” in Class 36.

Nos. 1401560 and 2769817 – FIRST ATLANTIC and FIRST
ATLANTIC FEDERAL CREDIT UNION and design (“Federal
Credit Union” disclaimed) for banking and banking-
related services in Class 36. Hieber Ex. 1 (evidence
of use)

No. 3041042 – MID-ATLANTIC FINANCIAL SERVICES, INC.
and design (all wording disclaimed) for “mortgage
banking and lending” in Class 36.

No. 2514180 – UNION ATLANTIC LC (“LC” disclaimed) for
“investment banking services” in Class 36.

In addition to these registrations, applicant also
included several others for services such as financial and
investment services and mortgage brokerage services that
are less directly relevant to banking services. See, e.g.,
Registration No. 3045247 (ATLANTIC CREDIT & FINANCE
INCORPORATED and design); No. 2364549 (ATLANTIC-PACIFIC);
Ser Nos. 75618643 and 75618644
13
and No. 2343200 (ATLANTIC COVERAGE CORP. and design). We
also find applicant’s evidence (Hieber Exhibits 2-7) that
involves other terms, such as “North,” “West,” “East,”
“United,” “Bay,” and “Pacific,” not very relevant.
See Jaquet-Girard S.A. v. Girard Perregaux & Cie., S.A.,
423 F.2d 1395, 165 USPQ 265, 266 (CCPA 1970) (“Appellant
relies primarily on four prior rulings in this court on
other marks but, as we have often said, prior decisions on
different marks used under different circumstances are of
little value in deciding a specific issue of likelihood of
confusion”). Moreover, we have given the copies of the
pending applications that applicant has submitted no
weight. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1049 n.4 (TTAB 2002) (“While applicant also submitted a
copy of a third-party application …, such has no probative
value other than as evidence that the application was
filed”) and Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65
n.5 (TTAB 1981) (“Introduction of the record of a pending
application is competent to prove only the filing
thereof”).
Furthermore, applicant submitted internet evidence to
show that there are other banks with the term “Atlantic” in
their name that are offering or advertising services on the
internet:
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Greater Atlantic Bank (www.gab.com)
Atlantic Stewardship Bank (www.asbnow.com)
Atlantic Central Bankers Bank
www.atlanticcentral.com)

Bank of the Atlantic (www.bankoftheatlantic.com)

Atlantic National Bank (www.atlanticnationalbank.com)

Atlantic Coast Federal (www.acfederal.com)
Gulf Atlantic Capital (www.gulfatlanticcapital.com –
(“a private investment bank located in Tampa,
Florida”)

Applicant also submitted a report from Dun and
Bradstreet that identified numerous entities that are using
the term “Atlantic” in association with banking services.
Some of these entries include:
ATLANTIC STATES BANK – state commercial bank
(Georgia)

ATLANTIC FINANCIAL SAVINGS INC – Federal savings
institution (Pennsylvania)

ATLANTIC FINANCIAL CORP – national commercial bank
(Virginia)

ATLANTIC NATIONAL BANK NORTH – national commercial
bank (Virginia)

ATLANTIC PERMANENT SAVINGS BANK – Federal savings
institution (Virginia)

ATLANTIC INTERNATIONAL INVESTMENTS, INC – commercial
bank (Maryland)

ATLANTIC BANK – state commercial bank (New York)

ATLANTIC LIBERTY SAVINGS & LOAN ASSOCIATION – loan
brokers (New York)
Ser Nos. 75618643 and 75618644
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ATLANTIC BANK NA – national commercial bank (Maine)

ATLANTIC AVIATION EMPLOYEE CREDIT UNION – Federal
credit union (Delaware)

ATLANTIC HUMAN RES STAFF CREDIT UNION – state credit
union (New Jersey)

ATLANTIC FEDERAL CREDIT UNION – Federal credit union
(New Jersey)

ATLANTIC BANK OF NEW YORK – state commercial bank
(New York)

ATLANTIC CENTRAL BANKERS’ BANK – commercial bank, not
chartered (Arkansas)

ATLANTIC SAVINGS BANK – Federal savings institution
(Florida)

ATLANTIC STEWARDSHIP BANK – state commercial bank
(New Jersey)

ATLANTIC NATIONAL BANK OF FLORIDA INC – national
commercial bank (Florida)

Furthermore, applicant provided a printout from the
United States Federal Reserve System that “disclosed
approximately 360 financial institutions and banks
operating under ATLANTIC-formative names.” Request for
Reconsideration dated January 16, 2007 at 5. Only about
140 of these listings are for institutions identified as
banks, credit unions, or savings and loan associations.
The remaining entries, normally identified as “Domestic
Entity Other” (e.g., Atlantic Appraisal Company and
Atlantic Builders Inc.) or “Finance Company,” are not
Ser Nos. 75618643 and 75618644
16
relevant to the issue in this case. The entries simply
list the name of the institution, an RSSD ID, the city,
state, Institution Type, and the “As of Date.” The search
included entity status information as “Current” or “Non-
current.” Furthermore, there are numerous entries for
“Atlantic Bank of ----.” Many of these are for cities in
Florida (St. Augustine, Tampa, Broward, Davie, Hollywood,
Jacksonville, Miami, etc.). Other entries are for entities
in Atlantic City, New Jersey. Since it is not clear
whether there is a relationship between the entities and
whether they are currently in existence, we cannot give
this list much weight.
Nonetheless, applicant has submitted evidence of the
use of other Atlantic marks that have been used and in some
cases registered for identical or very similar services.
Indeed, the third-party use evidence in this case is
stronger than that offered in Lloyd's, because here
we have not only the telephone directory listings
themselves, but also evidence from a search of the
American Business Directory (a compilation of U.S.
telephone directory listings supplemented by primary
research in the form of telephone interviews to
capture further data and update the directory
information), as well as evidence from a search of a
Dun & Bradstreet database of 9 million
company/business names. Although there is, of
course, a hearsay element to this evidence, there is
no bias in the databases, which were not prepared for
purposes of this case, but rather are maintained on
an ongoing basis for general business use.

Ser Nos. 75618643 and 75618644
17
In re Broadway Chicken Inc., 38 USPQ2d 1559, 1564-65 (TTAB
1996) (footnote omitted).
From this evidence, we conclude that the term
“Atlantic” for banking services is a very weak term. It is
widely used in the names of various financial institutions.
The Eighth Circuit noted that: “The district court held,
and FNB Sioux Falls does not dispute, that consumers tend
to exercise a relatively high degree of care in selecting
banking services. As a result, customers are more likely
to notice what, in other contexts, may be relatively minor
differences in names.” First National Bank in Sioux Falls
v. First National Bank South Dakota, 153 F.3d 885, 47
USPQ2d 1847, 1851 (8th Cir. 1998). The evidence convinces
us that the same is true with financial institutions that
include the term “Atlantic.” The question then becomes
whether the differences in this case are sufficient to
prevent confusion.
One factor that we must consider is the
sophistication of the purchasers and the care they exercise
in using the services. Applicant argues that consumers of
“banking services like those offered by Applicant and the
owner of the cited mark exercise a high degree of care and
deliberation when choosing such services because their
choice directly affects their financial well-being.” Brief
Ser Nos. 75618643 and 75618644
18
at 20. The examining attorney does not dispute this point
but instead argues that “sophisticated purchasers are not
immune to source confusion.” Brief at 11. Applicant cites
First National Bank in Sioux Falls, 47 USPQ2d at 1851
(Consumers “tend to exercise a relatively high degree of
care in selecting banking services”) and Amalgamated Bank
of New York v. Amalgamated Trust & Savings Bank, 842 F.2d
1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (“It would be
strange for the customers of the banks to be confused about
whom they were dealing with, and their bankers not know
it”) as support for its position. We agree with applicant
to the extent that the factor concerning the sophistication
of consumers of banking services favors applicant.
Finally, applicant argues that despite “20 years of
coexistence” (Reply Brief at 12), applicant’s executive
vice president has declared that applicant is not aware “of
any instances of customer confusion occurring between
BankAtlantic on one hand and Atlantic Bank or Banco
Atlantico on the other.” White October 8, 2004 dec. at 4.
The lack of actual confusion is often not entitled to much
weight. Majestic Distilling, 65 USPQ2d at 1205 (“With
regard to the seventh DuPont factor, we agree with the
Board that Majestic's uncorroborated statements of no known
instances of actual confusion are of little evidentiary
Ser Nos. 75618643 and 75618644
19
value”). However, in appropriate circumstances, this
factor may have some weight. In re General Motors Corp.,
23 USPQ2d 1465, 1470-71 (TTAB 1992):
In the present case, however, we have a confluence of
facts which persuasively point to confusion as being
unlikely. Specifically during a nearly thirty-year
interval of sustained success in the marketing of
what, for the average consumer, is typically a major
and expensive purchase, applicant has experienced no
reported instances of actual confusion between its use
of “GRAND PRIX” in connection with almost 2.7 million
automobiles and registrant’s use of its “GRAND PRIX”
marks for related automotive replacement parts. The
absence of any known incident of actual confusion in
an extensive period of contemporaneous use of the
marks is strong evidence that confusion is not likely
to occur in the future.

See also King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (“In the absence
of evidence to the contrary, such lack of actual confusion
over so many years must be considered in this case as
supportive of a finding that confusion is not likely in the
future”). Here, applicant and the registrant have co-
existed for more than twenty years. Applicant has
submitted evidence that it has been using the mark
extensively in Florida and it has customers outside the
state of Florida, including several thousand in New York
State. During this time, applicant can report that there
have been no instances of confusion despite the use of
BANKATLANTIC, ATLANTIC BANK, and BANCO ATLANTICO by three
Ser Nos. 75618643 and 75618644
20
different entities. Therefore, applicant’s evidence of no
actual confusion is entitled to some weight.
Ultimately, we must weigh the evidence in this case
against the du Pont factors. Certainly, the facts that the
services are identical and the marks are similar to the
extent that they are composed of the same words are factors
that support a determination that there is confusion.
However, it is also clear that the term “Atlantic” is a
very weak, highly suggestive term for banking services. In
addition, the marks here are different to the extent that
the order of the words are reversed, BANKATLANTIC and
ATLANTIC BANK, which changes their commercial impression.
Numerous entities have used and registered the term as part
of their trademarks or trade names. Furthermore, applicant
and registrant have co-existed for more than twenty years
without any instances of actual confusion known to
applicant. We keep in mind that the question is whether
confusion is likely, not simply possible. Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1393 (Fed. Cir. 1992).
Under these circumstances, we conclude that this is a
circumstance where consumers would rely on what would
otherwise be slight differences between applicant’s
Ser Nos. 75618643 and 75618644
21
BANKATLANTIC and marks and registrant’s
ATLANTIC BANK to distinguish the marks. See, e.g., In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir.
1992) (“The Board analyzing the marks for confusing
similarity, found that ‘varga’ was the dominant element of
the VARGA GIRL mark, and that ‘girl’ was merely descriptive
and thus could not be afforded substantial weight in
comparing VARGA GIRL with VARGAS. The Board erred in its
analytic approach”); and In re Electrolyte Laboratories
Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
(“We conclude that the TTAB erred in its dominant focus on
the K+ in both marks, to the substantial exclusion of the
other elements of both marks”). Therefore, we conclude
that in this case, confusion is unlikely.

Decision: The examining attorney’s refusals to
register applicant’s marks for “banking services” in Serial
Nos. 75618643 and 75618644 on the ground that they are
likely to cause confusion with the cited registered mark
used in connection for the same services under Section 2(d)
of the Trademark Act are reversed.