Castle BancGroup, Inc.

Trademark Trial and Appeal Board

Feb 9, 2001

No. 75301730 (T.T.A.B. Feb. 9, 2001)

2/9/01
Paper No. 16
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Castle BancGroup, Inc.
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Serial Nos. 75/279,939, 75/301,727 and 75/301,730
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Stuart I. Graff, Chris L. Bollinger and Clay A. Tillack of
Schiff Hardin & Waite for Castle BancGroup, Inc.
Jennifer Stiver Chicoski, Trademark Examining Attorney,
Law Office 115 (Thomas Vlcek, Managing Attorney).
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Before Bucher, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant filed three applications seeking
registration of three different marks for services
described as follows:
CASTLE BANK
“Retail, commercial and trust
banking services, namely savings
account services, checking
account services, certificates of
deposit, electronic funds
transfer, electronic debit
transactions and automated teller
services,” in Int. Class 36,
with the word “Bank” disclaimed1
1 Serial No. 75/279,939 filed on April 23, 1997, in which
applicant asserts a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
2
CASTLE FINANCE
“Financial planning services;
consumer lending services in the
field of auto loans and unsecured
consumer loans; and financial
management services,” in
International Class 36,
with the word “Finance”
disclaimed2
and,
CASTLE BANCGROUP
“Retail, commercial and trust
banking services, namely savings
account services, checking
account services, certificates of
deposit, electronic funds
transfer, electronic debit
transactions and automated teller
services; financial planning
services; and financial
management services,” in
International Class 36,
with the word “BancGroup”
disclaimed3
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), citing Registration No. 1,758,732, which is for
the mark CASTLE MORTGAGE CORPORATION and design, as shown
below,
2 Serial No. 75/301,727 filed on June 2, 1997. The
application is based upon first use of the mark during October
1994 and first use in commerce during July 1995.
3 Serial No. 75/301,730 filed on June 2, 1997. The
application is based upon asserted dates of first use and first
use in commerce in November 1994.
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
3
for services recited as “mortgage brokerage services,” as
a bar to registration of applicant’s marks.4
When the refusals were each made final, applicant
filed separate appeals on each. At the request of the
Trademark Examining Attorney, these three appeals have
been consolidated for purposes of this decision.
Applicant and the Trademark Examining Attorney have filed
main briefs in each case, and applicant has filed a reply
brief in each application. Applicant did not request an
oral hearing. We affirm the refusals to register.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont
de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Upon careful consideration of the evidence of
record pertaining to these factors, we find as follows.
4 Reg. No. 1,758,732 issued March 16, 1993; §8 affidavit
accepted and §15 affidavit received.
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
4
Turning first to a consideration of the registrant’s
and applicant’s respective services, we find that
applicant’s banking services, financial services,
financial planning services and financial management
services, are closely related to the services recited in
the cited registration, “mortgage brokerage services.”
Applicant argues that consumers know the difference
between mortgage corporations and full-service banks, and
that these differences are sufficient to eliminate any
likelihood of source confusion.
The Board disagrees. Neither the mortgage services
in the cited registration nor the related banking and
financial services in these three applications contain any
limitations as to channels of trade or classes of
customers. Therefore, we must presume that they are
marketed in all normal trade channels and to all normal
classes of customers for such services. See In re Elbaum,
211 USPQ 639 (TTAB 1981). In fact, as noted by the
Trademark Examining Attorney, one of applicant’s own
federal trademark registrations claims use of its tower
ramparts design on this full array of services.5 This is
5 Reg. No. 2,141,144 covers retail, commercial and trust
banking services; mortgage banking services; mortgage lending
services; mortgage brokerage services; financial services,
namely, financial planning services, insurance brokerage
services, financial portfolio management services, financing
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
5
consistent with dozens of third-party registrations where
the same entity offers full-service banking and mortgage
services. Hence, while the respective services of
applicant and registrant as recited are distinct, they are
nonetheless closely related, and in many cases will be
offered by a single entity. Hence, this fact weighs
against applicant in our likelihood of confusion analysis.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, while we
agree with applicant that consumers may well exercise a
greater degree of care in selecting financial services
than is the case with routine consumer items, we also
agree with the Trademark Examining Attorney that
purchasers of financial and mortgage services are not
necessarily deemed to be “sophisticated.”
We turn next to the issue of whether applicant’s
marks, CASTLE BANK, CASTLE FINANCE and CASTLE BANCGROUP,
and the cited registered mark, CASTLE MORTGAGE CORPORATION
and design, when viewed in their entireties, are similar
in terms of appearance, sound, connotation and commercial
impression. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
services, financial management services, providing financial
information by electronic means (emphasis supplied).
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
6
but rather whether the marks are sufficiently similar in
terms of their overall commercial impressions that
confusion as to the source of the services offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
As applicant argues, the marks at issue must be
considered in their entireties. However, it is well
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight
to this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In this case, we find that the dominant feature of
all three of applicant’s marks as well as the registered
mark is the word CASTLE, an arbitrary term as applied to
registrant’s and applicant’s respective services. The
other wording in the marks, i.e., BANK, FINANCE, BANCGROUP
and MORTGAGE CORPORATION, comprises generic matter that
has been disclaimed by applicant and registrant,
respectively. These generic designations contribute very
little to the commercial impression created by each of
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
7
these marks. Accordingly, any dissimilarity in the marks
that might result from their use of different generic
wording is greatly outweighed by the marks’ basic
similarity, i.e., their shared use of the arbitrary term
CASTLE.
In short, when we consider the marks in their
entireties, we find them to be similar rather than
dissimilar. This similarity of the marks weighs in favor
of a finding of likelihood of confusion in this case.
Applicant argues that the word CASTLE is a weak and
diluted term in the financial services field, and that
consumers accordingly are accustomed to distinguishing
among CASTLE marks. Although “the number and nature of
similar marks in use on similar goods” is one of the
du Pont likelihood of confusion factors to be considered
when evidence pertaining thereto is of record, there is no
such evidence of record in this case, and hence we give no
weight to this factor in our likelihood of confusion
analysis in this case.6
6 In its responses to the initial Office actions refusing
registration in each of the three files, applicant recited a
list of third parties who allegedly provide financial services
in commerce under trade names containing the word CASTLE,
arguing that such registrations were evidence of the weakness of
the word CASTLE in this field. If applicant intended to assert
and rely on the existence of third party uses of CASTLE marks in
connection with financial services, it was incumbent upon
applicant to properly and timely make evidence of such third
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
8
As to the du Pont factor dealing with the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion,
applicant points to six years of coexistence without any
actual confusion. However, we have no evidence that the
marks CASTLE BANK, CASTLE FINANCE and CASTLE BANCGROUP, on
the one hand, and the cited registered mark, CASTLE
MORTGAGE CORPORATION and design, on the other hand, have
ever been used contemporaneously in the same geographical
area. As to whether there has been sufficient opportunity
for confusion to occur, in addition to the geographical
divide between Alabama and Illinois, the record contains
no indication of the level of sales or advertising by
applicant. Yet the absence of any instances of actual
confusion is a meaningful factor only where the record
indicates that, for a significant period of time, an
applicant's sales and advertising activities have been so
appreciable and continuous that, if confusion were likely
to happen, any actual incidents thereof would be expected
to have occurred and would have come to the attention of
party uses of record. However, as noted by the Trademark
Examining Attorney, the purported existence of these common law
and trade name uses of the word CASTLE in connection with
financial services has not been properly made of record, and we
therefore have given them no evidentiary consideration
whatsoever. See In re Duofold, Inc., 184 USPQ 638 (TTAB 1974).
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
9
one or both of these trademark owners. Similarly, we have
no information concerning the nature and extent of
registrant’s use, and thus we cannot tell whether there
has been sufficient opportunity for confusion to occur as
we have not had opportunity to hear from the registrant on
this point.7 All of these factors materially reduce the
probative value of applicant’s argument on the matter of
actual confusion. Therefore, applicant’s claim that no
instances of actual confusion have been brought to
applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In any
event, we are mindful of the fact that the test under
Section 2(d) of the Act is likelihood of confusion, not
actual confusion.
In summary, we find that applicant’s services are
closely related to the services identified in the cited
registration, and that they accordingly are presumed to be
7 Applicant notes that registrant has been aware of
applicant’s use of its CASTLE marks “and has expressed no
reservation or complaint.” (applicant’s reply brief, p. 3).
However, if applicant had obtained and submitted to the Office a
credible consent agreement between applicant and registrant – a
signed agreement consenting to applicant’s use and registration
of its marks and containing detailed reasons why no likelihood
of confusion exists and/or arrangements undertaken by the
parties to avoid confusion of the public, that certainly would
have been relevant to a balanced review of the du Pont factors
by the Trademark Examining Attorney and/or by this Board.
Serial Nos. 75/279,939, 75/301,727 and 75/301,730
10
marketed in the same trade channels and to the same
classes of customers. We further find that applicant’s
marks and the registered mark are sufficiently similar
that, when used in connection with the closely related
financial and mortgage services involved in this case,
source confusion is likely to result. Specifically,
customers and prospective customers are likely to
mistakenly assume the existence of a source connection
between banking services offered under the mark CASTLE
BANK, consumer lending services offered under the mark
CASTLE FINANCE, and an array of banking and financial
services offered under CASTLE BANCGROUP, on the one hand,
and mortgage brokerage services offered under the mark
CASTLE MORTGAGE CORPORATION and design, on the other hand.
We conclude that the Trademark Examining Attorney’s
Section 2(d) refusal was appropriate as to each of
applicant’s three marks.
Decision: The refusals to register are affirmed.