Checque-point Franchise Corp.

Trademark Trial and Appeal Board

Aug 8, 2000

No. 75281588 (T.T.A.B. Aug. 8, 2000)

Paper No. 10
ejs
8/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Checquepoint Franchise Corporation
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Serial No. 75/281,588
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Monica L. Thompson and Linda Urbanik Johnson of Rudnick &
Wolfe for Checquepoint Franchise Corporation
Judy Grundy, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney)
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Checquepoint Franchise Corporation has appealed from
the final refusal of the Trademark Examining Attorney to
register WORLDCASH as a mark for “banking and financial
services; namely, currency exchange and advise [sic]
services; issuing and redemption of travellers cheques;
electronic funds transfer; cashing of personal cheques;
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/281,588
2
[and] credit card services” in Class 36.1 Registration has
been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark WORLDCASH and design, shown below,

1 Application Serial No. 75/281,588, filed April 25, 1997,
asserting first use in 1990 and first use in interstate commerce
in 1990. It is noted that the drawing page of the application
states that “applicant has a bona fide intention to use the mark
in commerce” This statement was apparently included because
applicant, which is a Belgium company, asserted a Section 44(d)
claim of priority based on a UK application. The Examining
Attorney did consider the reference to a bona fide intention to
use the mark as being inconsistent with the statement in the
application, and treated the application, which was accompanied
by specimens, as being based on use in commerce.
It appears that applicant has used the British spelling for its
identification of services. We therefore read the word “advise”
as used in the identification to mean “advice” as that word is
spelled in American English, and to read “cheque” as “check.” It
is suggested that, should applicant prevail in its appeal, it
submit an amendment of its identification to reflect the common
U.S. spellings. Further, applicant must submit the serial number
of the UK application on which its claim of priority is based.
The original application also included goods in Class 16, and
registration was refused on a number of grounds in connection
with this class. Applicant filed its notice of appeal solely
with respect to the Class 36 services, stating that it was
deleting Class 16 from the application.
Ser. No. 75/281,588
3
and registered2 for, inter alia,
banking services, not offered to the
general consuming public, related to
international cash management for
clients with accounts in several
countries, namely, sales credit
financing and credit risk insurance,
factoring, issuing of credit cards and
credit card services, billing and debt
collection services, recovery of debts,
financial management services,
brokerage and underwriting of stocks
and bonds services, electronic banking,
real estate management, real estate and
mortgage agencies services, insurance
brokerage, investment management and
consulting services (Class 36)3
that, as used in connection with applicant’s identified
services, it is likely to cause confusion or mistake or to
deceive.4
Both applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.

2 Registration No. 1,531,688, issued March 28, 1989; Section 8
affidavit accepted; Section 15 affidavit received.
3 The cited registration also includes goods and services in
Classes 9, 16 and 35 for computer programs, computer program
manuals and accounting, bookkeeping, management consultation and
data processing services, all of which are “related to
international cash management for clients with accounts in
several countries.” Because the Examining Attorney has discussed
only the Class 36 services in the section of her brief dealing
with the factor of the similarity of the goods/services, we have
focused our discussion on those services as well.
4 The final Office action also required a declaration pursuant
to Trademark Rule 2.71(b)(1). Applicant submitted such a
declaration with its appeal brief, and the Examining Attorney, in
her brief, accepted the declaration. Accordingly, this issue in
not before us.
Ser. No. 75/281,588
4
With its brief applicant has submitted a printout from
its website, and promotional literature. Trademark Rule
2.142(d) provides that the record in the application should
be complete prior to the filing of an appeal. Applicant’s
submissions are manifestly untimely and, because the
Examining Attorney did not discuss them in her brief or
otherwise indicate that she consented to their being made
of record, we have not considered them.
We affirm the refusal of registration.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See, Federated Food, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Turning first to the marks, they convey the same
commercial impression. Applicant’s mark is WORLDCASH; the
cited mark is WORLDCASH with the design of a globe.
Although the globe is a noticeable part of the registrant’s
mark, it does not serve to distinguish the marks because it
reinforces the connotation of the word portion. Further,
Ser. No. 75/281,588
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although, as both applicant and the Examining Attorney have
acknowledged, marks must be compared in their entireties,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, the
word portion of the cited mark is the dominant part because
it would be used by purchasers to call for the registrant’s
services. Thus, it would make a greater impression on
purchasers, and is the portion which is more likely to be
remembered. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
Applicant also argues that its mark differs from the
registrant’s mark because its mark is depicted in block
letters, while the term WORLDCASH in the cited mark is
shown in stylized lettering. However, applicant has
applied for its mark in a typed drawing form, which means
that a registration would not be limited to a particular
style of lettering. If a registration were to issue for
applicant’s mark, the protection to be accorded it would
include stylization similar to that in the cited
registration.
With respect to the services, both applicant’s
identification of services and that of the registrant
Ser. No. 75/281,588
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include credit card services and electronic banking.
Applicant’s identification uses the phrase “electronic
funds transfer,” but this is clearly encompassed within the
more general “electronic banking.” It is true that the
registrant’s services are specifically limited to “banking
services not offered to the general consuming public which
are related to international cash management for clients
with accounts in several countries.” However, because
applicant’s services are not restricted as to customers and
channels of trade, we must assume that, at least for some
of the services, they would include the clients described
in the cited registration. For example, the “electronic
funds transfer” (i.e., electronic banking) identified in
applicant’s application could be used in connection with
international cash management for clients with accounts in
several countries.
Applicant has asserted that its mark is used in
connection with currency exchange services which are
directed toward individual consumers, such as travelers who
need to obtain foreign currency for travel abroad, or who
need to transfer funds in their personal banking accounts.
However, its identification is not so limited, and it is a
well established principle that the question of likelihood
of confusion in an ex parte proceeding must be determined
Ser. No. 75/281,588
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on the basis of the identification of goods set forth in
the subject application and cited registration. In re
William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
Therefore, whatever actual differences there may be between
applicant’s services, channels of trade, and classes of
customers and those of the registrant, to the extent that
these differences are not reflected in the respective
identifications, they cannot be considered.
Applicant has also asserted that the consumers for
applicant’s and registrant’s services are sophisticated.
We agree that banking services are not impulse purchases
and that clients for international cash management banking
services are discriminating and sophisticated purchasers.
However, because of the similarities of the marks and the
services, even careful and sophisticated purchasers are
likely to believe that these marks are variants of each
other, and that both WORLDCASH per se and WORLDCASH with a
globe design identify services emanating from a single
source.
Finally, applicant asserts that it and the registrant
have used their marks concurrently without any evidence of
actual confusion, and that this shows that confusion is not
likely to occur. We are not persuaded by this argument.
Applicant has not provided any evidence as to the extent of
Ser. No. 75/281,588
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its use, nor is there any evidence as to the registrant’s
use, such that we can determine whether there has been an
opportunity for confusion to occur. Nor have we any
information as to whether the registrant has encountered
any confusion. Most importantly, it appears from
applicant’s assertions and evidence that it is primarily
engaged in “retail-type currency exchange.” However,
because we must determine the question of likelihood of
confusion based on the identification of services set forth
in the application, applicant’s experience regarding
confusion with respect to its more limited activities does
not indicate whether confusion is likely with respect to
the broader services identified in its application.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board