Cullen/Frost Bankers, Inc.

Trademark Trial and Appeal Board

Oct 10, 2000

No. 75199524 (T.T.A.B. Oct. 10, 2000)

Paper No. 31
EWH/krd
10/10/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Cullen/Frost Bankers, Inc.
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Serial No. 75/199,524
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Jeff A. McDaniel of Conley, Rose & Tayon, P.C. for
Cullen/Frost Bankers, Inc.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Cullen/Frost Bankers, Inc. (applicant) seeks to
register READYBANK in typed drawing form for “consumer,
commercial, and mortgage banking services; automated teller
machine services; and providing bank account information by
telephone.” The application was filed on November 18, 1996
with a claimed first use date of February 28, 1975. In its
application, applicant noted that it was the owner of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/199,524
2
Registration No. 1,376,687, which will be discussed at
greater length later in this opinion.
Citing Section 2(d) of the Trademark Act, the
examining attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark READY BANKER,
previously registered in typed drawing form for “automated
banking services.” This Registration No. 1,118,933 issued
on May 22, 1979 with a claimed first use date of February
1, 1978. The word BANKER is disclaimed.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant requested and then waived
an oral hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the mark.”).
Considering first the services, they are, in part,
essentially identical. Registrant’s services are
Ser. No. 75/199,524
3
“automated banking services.” This would encompass
applicant’s “automated teller machine services” and perhaps
applicant’s “providing banking account information by
telephone.” Thus, if we were to find that there exists no
likelihood of confusion, such a finding must be based upon
the dissimilarities of the marks.
Considering next the marks, we acknowledge that in
terms of pronunciation, the two marks are quite similar.
However, we find that the marks are only somewhat similar
in terms of visual appearance given the fact that
applicant’s mark is depicted as one word, whereas
registrant’s mark is depicted as two words and the second
word is clearly different. Finally, in terms of meaning,
we find that the marks are somewhat dissimilar in that
consumers would clearly distinguish between a BANK (an
institution) and a BANKER (an individual).
In case it may appear that we are emphasizing the
dissimilarities in the marks and minimizing their
similarities, it should be made clear that the services in
question are banking services. Our primary reviewing Court
has held that when consumers select banking services, they
exercise a very high level of care such that “it would be
strange for customers of banks to be confused about whom
Ser. No. 75/199,524
4
they were dealing with.” Amalgamated Bank v. Amalgamated
Trust, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988).
In sum, were it not for a mitigating circumstance to
be discussed below, we would find that the issue of
likelihood of confusion is a close one in this case. The
services are, in part, identical and the marks are,
obviously, somewhat similar. Of course, these factors are
offset by the fact that when selecting banking services,
consumers exercise a very high level of care.
We now turn to the mitigating circumstance in this
case. As previously noted, applicant is the owner of
Registration No. 1,376,687. This registration is for the
identical mark READYBANK depicted in typed drawing form.
Moreover, the services of this prior registration are
simply “banking services.” Obviously, the term “banking
services” is quite broad and encompasses all of the
services for which applicant currently seeks to register
the mark READYBANK.
However, applicant’s existing Registration No.
1,376,687 has a concurrent use limitation restricting
applicant’s use of the mark READYBANK to the State of
Texas. This concurrent use limitation arose by virtue of a
settlement in 1985 of Concurrent Use Action No. 586, which
involved applicant and American Data Transfer Co., Inc.
Ser. No. 75/199,524
5
(ADT). As a result of this settlement, ADT obtained
Registration No. 1,376,686 for the mark REDIBANK for
“banking services rendered by an automated teller machine.”
This registration, formerly owned by ADT, was also a
concurrent use registration which restricted ADT’s use of
the mark REDIBANK to the entire United States with the
exception of the State of Texas.
On August 24, 1992 Registration No. 1,376,686 owned by
ADT was canceled for failure to file a Section 8 affidavit.
When applicant’s attorney learned of this cancellation, he
filed the present trademark application for the identical
mark for a more limited set of banking services to, in
effect, eliminate the concurrent use restriction set forth
in applicant’s existing Registration No. 1,376,687.
Obviously, when applicant’s and ADT’s applications
were published for opposition in 1985, the owner of the
cited registration could have opposed either or both
applications. For that matter, for a number of years
thereafter the owner of the cited registration could have
moved to cancel Registration Nos. 1,376,686 or 1,376,687.
The cited registration is geographically unrestricted and
hence overlaps both applicant’s current Registration No.
1,376,687 restricted to Texas, and formerly the now
cancelled Registration No. 1,376,686 owned by ADT which
Ser. No. 75/199,524
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covered the rest of the United States with the exception of
Texas.
Our primary reviewing Court has forcefully argued for
“the encouragement of registrations” and for this Board to
take into account “the real life situation.” Amalgamated
Bank, 6 USPQ2d at 1307. While the issue of likelihood of
confusion in this case may be close, we find that there
exists no viable likelihood of confusion, taking into
account the real life situation that the owner of the cited
registration made a decision many years ago not to oppose
or seek to cancel applicant’s existing Registration No.
1,376,687 covering the State of Texas when the registrant’s
registration covered the entire United States including the
State of Texas.
Decision: The refusal to register is reversed.
E. W. Hanak
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board