County Bank

Trademark Trial and Appeal Board

Sep 26, 2003

No. 78033833 (T.T.A.B. Sep. 26, 2003)

Mailed:
September 26, 2003
Paper No. 19
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re County Bank
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Serial No. 78/033,833
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Kent Brian Bathurst of Dowling Aaron & Keeler for County Bank.
Tarah K. Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Cissel, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
County Bank seeks registration on the Principal Register
for the mark COUNTYBANK.COM for services recited as “banking
services via the Internet,” in International Class 36.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, if it is used in
connection with the recited services, so resembles the mark
THE COUNTY BANK, which is registered for “banking services,”
1 Application Serial No. 78/033,833 was filed on November 3, 2000
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78/033,833
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also in International Class 36,2 that it would be likely to
cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have fully
briefed this appeal, but applicant did not request an oral
hearing.
We affirm the refusal to register.
Applicant contends that applicant’s online banking
services can be differentiated from registrant’s banking
services; that the two marks are different in sound, meaning
and connotation; and that a review of the federal register
shows that the cited mark is weak as applied to banking
services.
By contrast, the Trademark Examining Attorney takes the
position that applicant’s services are closely related to
registrant’s services; that the respective marks are
confusingly similar; and that applicant has failed to
demonstrate the weakness of marks such as registrant’s in the
field of banking services.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
2 Registration No. 2,156,602, issued on the Principal Register on
May 12, 1998.
Serial No. 78/033,833
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563 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the relationship of the goods. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the respective
services, it is well settled that services need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the services are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they
originate from or are in some way associated with the same
entity or provider. See Monsanto Co. v. Enviro-Chem Corp., 199
USPQ 590, 595-96 (TTAB 1978) and In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Despite applicant’s arguments that these respective
services are easily differentiated, we concur with the
position of the Trademark Examining Attorney that applicant’s
“banking services via the Internet” and registrant’s services
recited as merely “banking services” are so closely related in
a commercial sense that, if rendered under similar marks,
confusion as to their origin or affiliation would be likely.
In defining registrant’s and applicant’s respective
customers, we note that both applicant and registrant provide,
Serial No. 78/033,833
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or will provide, retail banking services to the consumer
market. As to the way in which these services are, or will
be, offered, it is explicit in applicant’s recitation that its
services are to be provided online. While registrant’s
recitation of services is not similarly explicit, there is
certainly no restriction in the registration that precludes
registrant from offering its services online. In short, we
must consider the services set forth in the application as
being encompassed within the services recited in the
registration. In any case, even if registrant’s services were
limited to a bricks-and-mortar operation, this distinction is
without any meaningful significance because consumers in
search of banking services could still obtain essentially the
same services through either applicant’s online services or
registrant’s more traditional locations. Consider the
consumer who historically had only utilized registrant’s
banking services through her local, full-service branch bank.
That same consumer, when opting to access her banking services
in cyberspace, could well choose applicant’s online banking
services under the mistaken belief that it is the same company
that provides her traditional banking services.
We turn then to the respective marks. We find that the
first portion of applicant’s mark (COUNTYBANK) is virtually
identical to the registered mark in terms of appearance,
Serial No. 78/033,833
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pronunciation and connotation. The absence of the word “The”
in applicant’s mark does very little to distinguish
applicant’s mark from the registered mark in terms of
appearance, pronunciation or connotation. The absence of a
space between the words “County” and “Bank” in applicant’s
mark is insignificant in the context of a domain name, where
spaces are not permitted. The only other real point of
difference between the two marks is that applicant’s mark ends
with “.COM.” However, there is no serious dispute but that
the designation “.COM” refers to commercial sites on the
Internet. Thus, in relation to applicant’s online banking
services, the “.COM” portion of applicant’s mark is highly
descriptive in that it readily informs consumers that
applicant’s banking services are, indeed, available online.
Accordingly, this portion of the mark has little source-
identifying significance.
Based upon the similarities in sound, meaning and
connotation, we find that these two marks are quite similar as
to overall commercial impressions. A consumer familiar with
registrant’s mark THE COUNTY BANK for banking services, upon
seeing applicant’s mark COUNTYBANK.COM for online banking
services, would easily assume that registrant has now expanded
its banking services to offer said services online.
Accordingly, we find that the contemporaneous use of
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applicant’s mark COUNTYBANK.COM for its online banking
services would be likely to create confusion with the
registered mark THE COUNTY BANK for banking services.
Finally, applicant argues that the registered mark is
weak given third-party registrations of marks that contain
variations on COUNTY BANK. However, the only one applicant
specifically mentions is a relatively new registration for
FIRST COUNTY BANK.
In order to counter this argument, the Trademark
Examining Attorney produced a list of twenty registrations
owned by financial institutions where the marks incorporate
within these composites the terms COUNTY and BANK, noting that
nineteen of these registrations (i.e., all but the cited
registration) contain other distinguishing wording.3
These registrations are not of record, so we have not
considered them in reaching our decision. However, even if we
had considered them, except for the cited registration, all of
the other registered marks contain further modifiers.
3 Because the file does not appear to contain copies of these
twenty registrations, we note in passing that the Board does not
take judicial notice of third-party registrations. The mere
citation to such purported registrations “is insufficient to make
them of record.” In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
The proper procedure, instead, for making information concerning
third-party registrations of record is to submit either copies of
the actual registrations or the electronic equivalents thereof,
i.e., printouts of the registrations which have been taken from the
PTO’s own computerized database. See In re Consolidated Cigar
Corp., 35 USPQ2d 1290, 1292 n. 3 (TTAB 1995); In re Smith &
Serial No. 78/033,833
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In fact, most of these composite marks contain references
to particular county names. Hence, given the wide variety of
quite disparate county names appearing on this listing, when
each of these marks containing a named county is viewed in its
entirety, each one creates a unique commercial impression.
Furthermore, as to the listed composite marks without any
specific county names, we note that courts have held that
because consumers tend to exercise a relatively high degree of
care in selecting financial services, prospective customers
are more likely to notice what, in other retail contexts, may
be relatively minor differences in marks. For example, some
courts have determined there is no likelihood of confusion
even where the names of financial institutions share the same
dominant terms. See First Savings Bank, F.S.B. v. First Bank
System, Inc., 101 F.3d 645, 40 USPQ2d 1865 (10th Cir. 1996) [no
likelihood of confusion between “FirstBank” and “First Bank
System” service marks where bank logos were visually
distinct]; and Sun Banks of Fla., Inc. v. Sun Fed. Sav. &
Loan, 651 F.2d 311, 211 USPQ 844 (5th Cir. 1981) [no likelihood
of confusion between “Sun Federal Savings” and “SunBanks”
service marks]. In this vein, registered marks such as THE
COUNTY BANK, FIRST COUNTY BANK, COUNTY SAVINGS BANK and COUNTY
Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); and In re Melville
Corp., 18 USPQ2d 1386, 1388 n. 2 (TTAB 1991).
Serial No. 78/033,833
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NATIONAL BANK arguably contain relatively minor differences
that permit them to coexist.
By contrast, when comparing COUNTYBANK.COM with THE
COUNTY BANK, there are not even any minor differences to tip
off the most careful of consumers to a difference in source.
Rather, bank customers are likely to assume that when THE
COUNTY BANK goes online, its domain name would be
COUNTYBANK.COM. Hence, given the analysis above, we cannot
agree with applicant that the mere presence “.com” provides
the requisite dissimilarity from the cited mark.
Decision: The refusal to register pursuant to Section
2(d) of the Trademark Act is hereby affirmed.