Cleveland Mack Sales, Inc.

Trademark Trial and Appeal Board

Jun 11, 2001

No. 75646397 (T.T.A.B. Jun. 11, 2001)

06/11/01
Paper No. 10
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cleveland Mack Sales, Inc.
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Serial No. 75/646,397
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Wendy Buskop of Buskop Law Group PC for Cleveland Mack
Sales, Inc.
Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Hanak, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Cleveland Mack Sales, Inc. has filed an application to
register the mark PERFORMANCE FINANCIAL and design, as
shown below, for “financing services, namely, providing
lease-purchase options in the financing of the lease or
purchase of trucks, trailers, and structural parts
therefor.”1
1 Serial No. 75/646,397, filed February 23, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
A disclaimer of the word FINANCIAL has been made.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/646,397
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark PERFORMANCE BANKING, which is
registered for “banking services.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
2 Registration No. 1,208,978, issued September 14, 1982, Section
8 affidavit accepted. A disclaimer has been made of the word
BANKING.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/646,397
3
Looking first to the respective marks, we are guided
by the well established principle that although the marks
must be considered in their entireties, there is nothing
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Although descriptive or disclaimed matter
cannot be ignored in comparing the marks, it is also a fact
that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, it is
the word portion of a mark, rather than the design
features, unless particularly distinctive, that is more
likely to be remembered and relied upon by purchasers in
referring to the goods or services and thus it is the word
portion of applicant’s mark that will be accorded more
weight in determining the similarity of the involved marks.
See Ceccato v. Manifattura Lane Gaetano Marzotto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994).
We are in agreement with the Examining Attorney that
the word portions are the most significant features of the
present marks. While applicant argues that the design of a
“freeway arrow” is prominent in its mark and is suggestive
Ser No. 75/646,397
4
of trucking and transportation, we do not find this design
so distinctive as to be accorded more or even equal weight
with the word portion of the mark. The words PERFORMANCE
FINANCIAL remain that by which purchasers would refer to
applicant’s services, not the design feature. Whether
purchasers would make the association between the arrow
design and the fact that applicant’s financing services
deal with the lease or purchase of trucks appears
questionable, and even if made, reliance upon the design as
the source indicator would be most unlikely.
As for the word portions, we agree with the Examining
Attorney that the word PERFORMANCE is the dominant or more
significant portion of each mark. While, as argued by
applicant, there is an obvious difference in sound of the
two marks as a whole, created by the different words
FINANCIAL and BANKING, these latter words are generic terms
referring to the services involved and would not be relied
upon by purchasers as the indication of a particular
source. The word PERFORMANCE, which appears to be
arbitrary with respect to these services, is the portion of
each mark which would serve this purpose. As a result, the
overall commercial impressions created by the marks are
highly similar.
Ser No. 75/646,397
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Turning to the services involved, we note that when
the marks are the same or very similar, it is not necessary
that the services of the applicant and registrant be
similar or even competitive to support a holding of
likelihood of confusion. It is sufficient if the
respective services are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from, or are associated with, the same source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993) and the cases cited therein.
The Examining Attorney maintains that lease-purchase
financing services and banking services are related
services and would be offered through the same channels of
trade. To support his position that there is such an
interrelationship between banking services and lease-
purchase financing services, the Examining Attorney relies
upon several article excerpts from the NEXIS database, of
which the following are representative:
The council also approved a lease-purchase agreement
for a dump truck with the Bank of Illinois of Mount
Vernon. The Pantagraph (Feb. 10, 1998);
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Aldermen agreed to pay an additional $10,200 on the
1994 truck’s lease-purchase agreement with the Royal
Banks of Missouri. St. Louis Post-Dispatch (Feb. 10,
1997);
[...] Approved an $85,000, five-year lease purchase
agreement with First Security bank for two police
cars, a recreation department truck and a water
utility truck. The Deseret News (Nov. 29, 1996);
[...] Entering into a $121,000 lease purchase
agreement with Wachovia Bank to lease three trucks ...
The Herald (Dec. 31, 1995); and
[...] Considered a lease/purchase agreement for police
cruisers and a waste truck with Fidelity Bank. The
Hartford Courant (Aug 16, 1995).
In addition, he has made of record copies of several third-
party registrations showing the registration of the same
mark by a single entity for both “banking services” and
lease or lease-purchase financing or, in some instances,
“banking services, namely, lease or lease-purchase
financing.”
Applicant, on the other hand, argues that applicant’s
services are not those of a commercial bank, that its
services have none of the accoutrements of a commercial
bank, but rather applicant simply underwrites the purchase
of trucks and truck parts.
We find the NEXIS evidence sufficient in itself to
establish that many banks provide lease-purchase financing
services. The third-party registrations made of record by
the Examining Attorney provide additional evidence of the
Ser No. 75/646,397
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interrelationship of the services involved herein. While
these registrations are admittedly not evidence of use of
the marks in commerce, they are sufficient to suggest that
these services are ones which may be provided by a single
entity and marketed under the same mark. See In re Albert
Trostel & Sons Co., supra; In re Mucky Duck Mustard Co., 6
USPQ2d 1467 (TTAB 1988). Thus, it would be entirely
plausible for persons encountering both banking and
financing services in the nature of the provision of lease-
purchase agreements being offered under similar marks to
assume a common source therefor. Even though applicant may
only provide lease-purchase financing in connection with
the sale of trucks and the like, the evidence shows that
this service is one which is also provided by many banking
institutions.
Although applicant also argues that it is in a
different channel of trade from banking institutions, no
such limitation is reflected in the recitation of services.
It is well settled that if there are no restrictions in the
application or registration as to channels of trade, the
goods or services must be assumed to travel in all the
normal channels of trade for goods or services of this
nature. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Ser No. 75/646,397
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Here, we have no reason not to assume that registrant’s
banking services and applicant’s financing services are
being offered through the same channels of trade.
Accordingly, in view of the similar overall commercial
impressions created by applicant’s mark PERFORMANCE
FINANCIAL and design and registrant’s mark PERFORMANCE
BANKING and the relationship shown to exist between lease-
purchase financing and banking services, we find a
likelihood of confusion.
Decision: The refusal to register under Section 2(d)
is affirmed.
Ser No. 75/646,397
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