Florida Capital Group, Inc.

Trademark Trial and Appeal Board

Feb 17, 2021

88134205 (T.T.A.B. Feb. 17, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: February 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Florida Capital Group, Inc.
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Serial No. 88134205
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Mark D. Passler and Rachel B. Rudensky of Akerman LLP,
for Florida Capital Group, Inc.
Kimberly C. Arriola, Trademark Examining Attorney, Law Office 128,
Travis Wheatley, Managing Attorney.
_____

Before Bergsman, Goodman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Florida Capital Group, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark for “banking services; financial
services, namely, mortgage lending and credit card services; all of the foregoing
offered at trademark owner’s branch offices, web site, and downloadable mobile
software application” in International Class 36.1

1 Application Serial No. 88134205 was filed on September 27, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark FLC CAPITAL ADVISORS (in
standard characters, CAPITAL ADVISORS disclaimed) for
Financial analysis and consultation; financial planning
and management; investment advice; financial investment
in the field of securities; investment services, namely asset
acquisition, consultation, development and management
services; debt management consultation; estate planning;
insurance consultation; investment management of and
distribution of variable annuities in International Class
36.2
The Examining Attorney also refused registration based on the following mark
owned by a different entity for “Insurance financing
services” in International Class 36. 3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for

Trademark Act. The application includes a description of the mark which reads as follows:
“The mark consists of the wording ‘FLCBANK’ to the right of a design element.” Color is not
claimed as a feature of the mark.

2 Registration No. 3180788, renewed.
3 Registration No. 5670227. The application includes a description of the mark which reads
as follows: “The mark consists of two equally-sized zig-zag lines stacked horizontally. There
is a diamond shape located at the bottom left side of the lower zig-zag line and a diamond
shape located at the top right side of the upper zig-zag line.” Color is not claimed as a feature
of the mark.
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reconsideration, the appeal was resumed. We affirm in part and reverse in part the
refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d).
Our determination of likelihood of confusion under Section 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and 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
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
A. Similarity of the Marks
We initially turn to the first DuPont factor, which requires us to determine the
similarity or dissimilarity of the marks in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Serial No. 88134205
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Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The
test, under the first DuPont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the goods or services offered under the respective marks is likely to
result. Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
(Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264, 1268 (TTAB
2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because
the services at issue include banking services, investment advice, debt management
consultation, estate planning, insurance consultation, and insurance financing
services without any restrictions or limitations as to channels of trade or classes of
consumers, the services could be offered to all classes of purchasers, including
ordinary consumers. See the discussion below regarding the conditions under which
and customers to whom sales are made.
In comparing the marks, we consider them in their entireties, including any
disclaimed matter and designs. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). It is nevertheless appropriate, for rational reasons, to regard
certain features of the marks as being more dominant or otherwise significant, and
therefore to give those features greater weight. Stone Lion Capital Partners, LP v.
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Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat’l
Data Corp., 224 USPQ at 751.
In the case of marks which consist of words and a design, the words are normally
accorded greater weight because they would be used by purchasers to request the
goods or services. See In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (“In the case of a composite mark containing both words and a design, ‘the
verbal portion of the mark is the one most likely to indicate the origin of the goods to
which it is affixed.”’) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 2001)
(“words are normally accorded greater weight because they would be used by
purchasers to request the goods”)). Also, disclaimed or otherwise descriptive matter
is generally viewed as a less dominant or significant feature of a mark. See In re Nat'l
Data Corp., 224 USPQ at 751-52.
Registration No. 3180788
Applicant’s mark is and Registrant’s mark is FLC
CAPITAL ADVISORS.
The Examining Attorney argues that the dominant term in each of the marks is
FLC and that the additional terms, CAPITAL ADVISORS in Registrant’s mark and
BANK in Applicant’s mark, are entitled to less weight as they are descriptive or
generic terms. Examining Attorney’s brief, 20 TTABVUE 8-10. The Examining
Attorney also argues that the design element in Applicant’s mark is entitled to less
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weight, and that the marks convey the same overall commercial impression due to
the “primary term” FLC. Id.
Applicant argues that the marks in their entireties are different in appearance,
meaning, sound and commercial impression. Applicant’s brief, 18 TTABVUE 16.
Applicant acknowledges that Applicant’s and Registrant’s marks do have a similarity
in that they share the first three letters FLC and that the additional terms in each
mark, BANK and CAPITAL ADVISOR, are at least descriptive. Id. However,
Applicant contends that the Examining Attorney has failed to take into account the
context in which each of the marks is being used and the different meanings that
must be accorded to the additional words CAPITAL ADVISORS in Registrant’s mark
and BANK in Applicant’s mark. Applicant asserts that CAPITAL ADVISORS in
Registrant’s mark is a term of art that means “the consumer is encountering a firm
of personal investment advisors and wealth managers” while BANK in Applicant’s
mark signals to consumers that Applicant “offers checking accounts, savings
accounts, credit cards, etc.” Id. Applicant submits that Applicant’s mark does not
connote “advice or guidance of any sort.”4 Id. at 17.

4 In its reply brief, Applicant raises a new argument, that the dominant portion of its mark
is FLCB because of the “use of four capital letters in succession” contrasted with three lower
case letters and because “the public associates the full acronym [FLCB] with Applicant’s
services and does not parse out only the ‘FLC.’” Applicant’s reply brief, 21 TTABVUE 5-6. We
note that new arguments in a reply brief are not normally considered because the Examining
Attorney does not have an opportunity to respond. In any event, while some consumers may
consider Applicant’s mark as a telescoped version of FLCB Bank, it is also just as likely
consumers will view the mark as FLC Bank.

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First, we find that here, as with most composite word and design marks, the literal
element of Applicant’s mark is dominant and the design is subordinate to the literal
element. We also find that although there are specific differences between the marks,
the common features in the marks are far more significant. Both Applicant’s and
Registrant’s marks share the identical letter combination FLC, which also is the
dominant element of both Applicant’s and Registrant’s marks. The dominance of FLC
is further reinforced by its location as the first part of Registrant’s mark and the first
literal term in Applicant’s mark. Presto Products, Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“... it is often the first part of a mark which is likely
to be impressed upon the mind of a purchaser and remembered”).
Applicant submits that “it is an overbroad reading of the case law to uphold a
principle that adding descriptive words to a trademark has no discernable effect on
the meaning of the mark or consumers’ impression of it.” Applicant’s brief, 18
TTABVUE 17. Applicant argues that the case law cited by the Examining Attorney
does not support her contention that BANK and CAPITAL ADVISORS carry little
weight because none of the cases involve similar relevant facts or “a comparison
between trademarks whose descriptive terms have entirely different meanings
clearly denoting different goods or services.” Id.
Applicant cites a number of precedential Board cases in support of its argument
that the presence of the words CAPITAL ADVISORS in Registrant’s mark and BANK
in Applicant’s mark overcomes a likelihood of confusion. Id at 18. All are
distinguishable on their facts.
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In In re Farmfresh Catfish Co., 231 USPQ 495 (TTAB 1986), the Board reversed
a refusal to register CATFISH BOBBERS for “fish” over the mark BOBBER for
“restaurant services.” The Board did not base its reversal on the presence of the
additional disclaimed word “catfish” in that mark but rather on the fact that “catfish
bobber” was suggestive of the nugget in the shape of a “bob,” a type of fishing float,
while “bobber” was arbitrary with respect to restaurant services.
Applicant also relies on cases where the common portions of the marks were
considered weak, and the relevant public would look to other parts of the marks to
distinguish them, including descriptive terms.
In In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018), the Board found I’M
SMOKING HOT for, among other things, cosmetics and makeup, and SMOKIN’ HOT
SHOW TIME for cosmetics and mascara, were not confusingly similar due to
dictionary and third-party use evidence that suggested consumers would look to other
parts of the marks to distinguish them. In Terry Nazon, d/b/a Terry Nazon Inc. v.
Charlotte Ghiorse, 119 USPQ2d 1178 (TTAB 2016), the Board found that
SEXSTROLOGY, registered on the Supplemental Register for astrology horoscopes,
was highly suggestive and entitled to a narrow scope of protection and was not
confusingly similar to SEXY ASTROLOGY for astrology consultation.
In Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC,
122 USPQ2d 1030 (TTAB 2016), the Board found that PRIMROSE and ROSE
SENIOR LIVING were not confusingly similar in the context of many third-party
uses of ROSE and ROSE formative marks, demonstrating that consumers had
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become alert to minute distinctions among the various marks. In Citigroup Inc. v.
Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010), aff’d, 637 F.3d 1344
(Fed. Cir. 2011), the Board found that there was widespread third-party use of “city
bank” with the addition of a geographic term, and although Opposer’s and Applicant’s
marks shared a common term “city bank”/citibank, the commercial impression of
Applicant’s mark was different because the addition of “capital” meant that
consumers would perceive the mark as “Capital City” Bank and not Capital “City
Bank” by consumers.
In the present case, the shared portion of the mark is not descriptive. There is no
evidence that FLC is a weak term in the marketplace as used in connection with the
relevant services.5 Therefore, in contrast to the cases cited by Applicant, consumers
will look to FLC, and not the descriptive terms CAPITAL ADVISORS and BANK, as
the source of the services.
Applicant also relies on In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) as
supportive of its position. However that case relied on a word mark merged together
with a design, where the first letter “R” in each term
was the most prominent and some of the other letters incorporated into each letter

5 Applicant submitted evidence showing uses or third-party registrations of marks with three
letter combinations containing the letters “F” and “C” but which differ from Applicant’s and
Registrant’s marks by the middle letter. November 4, 2019 Response to Office Action at TSDR
152-181. We do not find this evidence probative as to whether the letter combination FLC is
weak in relation to Registrant’s services.
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“R” were so small that they were nearly illegible. In contrast, the design in the
mark is separate from the letters, and the display of the upper
case letters does not draw the viewer’s attention away from the lower case letters; the
mark would be read as a whole.
We do not find that the additional descriptive, if not generic, term present in each
of these marks is sufficient to overcome the similarity of commercial impression
created by the common presence of the letter combination FLC. Although we accept
Applicant’s arguments that the additional descriptive or disclaimed terms in each of
the marks convey significant information to the consumer as to the nature of
Applicant’s and Registrant’s services, the information conveyed relates to the nature
of the identified services, not the source of the services. It is the source identifying
elements that are dominant and most important in determining likelihood of
confusion. See In re Integrity Mutual Insurance Co., Inc., 216 USPQ 895 (TTAB 1982)
(OMNI is the dominant feature of the marks OMNI LIFE and OMNI BUSINESS
PLAN, and the remaining words are descriptive of the nature of the insurance
services).
Here, the terms BANK and CAPITAL ADVISORS are descriptive, if not generic,
when used in connection with the services and do little to distinguish the marks.6
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive

6 By disclaiming the wording CAPITAL ADVISORS, Registrant has conceded the wording is,
at a minimum, descriptive of Registrant’s services. In re Pollio Dairy Prods. Corp., 8 USPQ2d
2012, 2014 n.4 (TTAB 1988).
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component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 752). Thus,
we are unpersuaded that BANK and CAPITAL ADVISORS are distinguishing terms
that outweigh the similarity of the marks.
Registration No. 5670227
Applicant’s mark is and Registrant’s mark is
.7 The design portion of Applicant’s mark (stacked zig zag lines with
diamond shapes) is for all practical purposes substantially identical to Registrant’s
design mark. Thus, the question of similarity turns on whether the addition by
Applicant of FLCBank to the design mark is sufficient to preclude likelihood of
confusion.
Applicant contends that in the marketplace, Registrant uses the name of its
business in combination with the design mark. However, in considering the
similarities between the marks, “we must compare the marks as they appear in the
drawings,” and not based on any actual use that may show use of the design with
additional wording. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB

7 Although not argued on appeal, Applicant also submitted during prosecution third-party
registrations with zig zag designs to show that zig zag designs coexist on the register and
that customers are accustomed to encountering zig zag design marks. However, while a
review of these third-party registrations shows various zig zag designs, they are quite
different from the designs in Applicant’s and Registrant’s marks. Additionally, the third-
party registrations do not involve the same services as Registrant. Therefore, we do not find
this evidence probative of weakness of the cited design mark. November 4, 2019 Response to
Office Action at TSDR 134-151.
Serial No. 88134205
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2018). Applicant submits that because the word portion of the mark is the dominant
portion, it is the word portion that will be called to mind by consumers, not the design.
As previously noted, we must base our determination regarding the similarity of
the marks on the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751.
Clearly, Applicant’s mark and the cited design mark are not identical because the
FLCBank literal portion of Applicant’s mark is absent from the cited mark. However,
even if we were to assume FLCBank constitutes the dominant portion of Applicant’s
mark, the stacked zigzag diamond design is nonetheless a relatively prominent
feature of Applicant’s mark that must be given due consideration. See In re Info.
Builders Inc., 2020 USPQ2d 10444 at *6 (TTAB 2020).
We find that the FLCBank portion of the mark may be perceived by those familiar
with it as a house mark or trade name. Therefore, the facts of this case are akin to
the likelihood of confusion cases involving an applicant seeking to register a mark
that merely adds their house mark or trade name to another party’s mark.
Accordingly, we rely on those decisions, discussed below, in resolving the issue of
similarity of the marks.
It is a general rule that the addition of a trade name, or house mark, surname or
other matter to one of two otherwise confusingly similar marks will not serve to avoid
a likelihood of confusion between them. See First International Services Corp. v.
Chuckles Inc., 5 USPQ2d 1628, 1632 (TTAB 1988); and In re Apparel Ventures, Inc.,
229 USPQ 225, 226 (TTAB 1986). The addition may actually exacerbate the likelihood
of confusion because purchasers familiar with the Registrant’s mark are likely to
Serial No. 88134205
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assume that the house mark or trade name serves to identify what had previously
been an anonymous source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB
2007); In re Hill-Behan Lumber Co., 201 USPQ 246, 249 (TTAB 1978).
Exceptions to this general rule are made (1) when there are recognizable
differences between the assertedly conflicting product marks, or (2) when the alleged
product marks are highly suggestive or merely descriptive or play upon commonly
used or registered terms. See In re C. F. Hathaway Company, 190 USPQ 343, 344
(TTAB 1976).
We find that the addition of FLCBank is not sufficient to distinguish the marks
as a whole and to avoid confusion. Registrant’s mark has no literal portion of its own
that consumers could rely on to contrast with Applicant’s mark. Consumers familiar
with Registrant’s design mark are likely to view Applicant’s mark as a mere variation
or modification that merely identifies the previously anonymous source of the
services. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA
1972) (stating that the addition of a trade name will make consumers think that the
products have a common origin or that the companies merged).’
In view of the foregoing, we find that the first DuPont factor supports a finding of
likelihood of confusion as to both cited registrations.
B. Similarity of the Services, Channels of Trade and Classes of Purchasers
We next consider the second and third DuPont factors.
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,”’ while the third
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DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these
factors are based on the identifications of services in the application and the cited
registrations. Id.; Stone Lion, 110 USPQ2d at 1161-63.
It is “not necessary that the goods [or services] be identical or even competitive to
support a finding of a likelihood of confusion.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“[L]ikelihood of confusion can be found ‘if the respective goods [or services] are related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.”’ Id. (quoting 7-Eleven, 83 USPQ2d at 1724). In addition, “it is sufficient for
finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods [or services] within a particular class in
the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015)
(citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981)).
Registration No. 3180788
Applicant’s services are
banking services; financial services, namely, mortgage
lending and credit card services; all of the foregoing offered
at trademark owner’s branch offices, web site, and
downloadable mobile software application.
Registrant’s services are
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Financial analysis and consultation; financial planning
and management; investment advice; financial investment
in the field of securities; investment services, namely asset
acquisition, consultation, development and management
services; debt management consultation; estate planning;
insurance consultation; investment management of and
distribution of variable annuities.
To support relatedness, the Examining Attorney submitted web pages showing
that banks such as Applicant offer banking, mortgage lending, and credit card
services as well as investment and financial advisor services similar to Registrant.
May 3, 2019 Office Action at TSDR 2-67; June 16, 2020 Denial of Reconsideration at
TSDR 2-171. In addition, the Examining Attorney submitted use-based third-party
registrations to show that registrants that offer banking services, credit card services
or mortgage lending services also offer, among other things, investment advisory or
financial planning or financial consultation services.8 Third-party registrations that
individually cover a number of different services and that are based on use in
commerce serve to suggest that the listed services are of a type that may emanate
from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993). Examples include:
HAWAIIUSA (Reg. No. 4532533) for services that include “financial services,
namely banking,” “credit cards” and “mortgages,” “financial planning,” and
“investment advice services,” November 26, 2019 Office Action at TSDR 2-4;

8 During prosecution, Applicant submitted lists of Trademark Electronic Search System
(TESS) search results and representative examples of third-party registrations from these
searches to show that banking services and investment services or banking services and
insurance financing services are not offered under the same mark. However, the mere fact
that other third parties do not offer both types of services does not undercut the probative
value of third-party registrations or the website evidence that shows some parties do offer
both services under the same mark. “There is no requirement for [services] to be found related
that all or even a majority of the sources of one [service] must also be sources of the other
[service].” In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009).
Serial No. 88134205
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BB&T (Reg. No. 4583618) for services that include “banking services”; “credit card
services,” “mortgage lending” and “financial services, namely, investment advice,
consultation and brokerage in the fields of stocks, bonds, mutual funds and other
securities” and “financial planning,” Id. at TSDR 8-10;

NORTHWEST BANK (Reg. No. 5223498) for services that include “savings bank
services,” “ATM banking services,” “mortgage lending” and “investment advice,”
Id. at TSDR 15-17;

BANC OF CALIFORNIA FINANCIAL INSTITUTIONS BANK and design (Reg.
No. 4819108) for services that include “banking services,” “credit card services,”
“mortgage lending” and “financial planning and investment advisory services,
namely, wealth management, retirement planning, trust management account
services, financial valuations, and providing information on financial
investments,” Id. at TSDR 27-29;

HOMESTREET BANK and design (Reg. No. 4793414) for services that include
“banking services,” “credit card services,” “mortgage services,” and “financial
planning and investment advisory services, Id. at TSDR 33-35;

M&T and design (Reg. No. 4865685) for services that include “ATM banking
services,” “credit card and debit card services,” “financial management,” “financial
planning,” and “financial investment services, namely, providing investment
analysis, consultation, planning and advisory services,” Id. at TSDR 39-41;

PROGRESSBANK and design (Reg. No. 5027994) for services that include
“banking services,” “mortgage lending” and “financial services, namely
investment management and investment advisory services,” Id. at TSDR 48-50.

FIRST WESTERN TRUST (Reg. No. 5837481) for services that include “banking
services,” “mortgage lending,” and “financial planning and investment advisory
services,” Id. at TSDR 124-126;

BANK OF NEW MEXICO (Reg. No. 5791953) for services that include “banking
services,” “mortgage lending,” “credit card and debit card services,” “financial
planning and advisory services,” and “financial services, namely, … investment
counseling and advisory services,” Id. at TSDR 127-130;

IT’S WHAT WE DO AT RBFCU (Reg. No. 5916241) for services that include “ATM
banking services,” “credit card services,” “mortgage banking services, namely,
origination, servicing and refinancing of residential mortgage loans and
commercial real estate loans,” “investment management and investment advisory
services,” Id. at TSDR 139-141.
Serial No. 88134205
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Applicant acknowledges that some of the Examining Attorney’s web page evidence
shows banks offer services such as those listed by both the Applicant and the
Registrant. But Applicant argues that just because “five major national banks” “offer
an unusually wide array of different financial services does not mean that consumers
naturally associate all the different financial services that these commercial giants
offer,” suggesting these offerings are analogous to a supermarket offering a variety of
unrelated goods. Applicant’s brief, 18 TTABVUE 22-23. Applicant also contends that
the services are marketed differently, “with different links, to different web pages,
with a different color scheme, art work, etc. – and even in some cases with different
marks.” Id. at 22.
Although Applicant argues otherwise, we conclude from the evidence of record
that it is not unusual for banks—small, medium, and large—to offer Applicant’s and
Registrant’s services in close proximity as part of full service banking9, and that
consumers are likely to assume that such services offered under a similar mark
emanate from the same or related sources. The Internet evidence submitted by the
Examining Attorney shows that smaller local or regional banks and credit unions also
offer a full complement of services including banking services, credit card services,
mortgage lending services, investment advisory, and financial management services,
with some specifically identifying the offered services as “full service banking.” The
website evidence shows that the services are often provided under one name and

9 “Full service banking” is defined as “banking that offers a whole range of services.”
investorworlds.com, June 16, 2020 Denial of Reconsideration at TSDR 126.
Serial No. 88134205
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offered in bank branch offices. June 16, 2020 Denial of Reconsideration at TSDR 2-
170.
For example, Comerica bank at comerica.com explains that “[i]n modern full-
service banking programs, many banks are offering easier access to financial advisors
to help customers identify the right services for their needs” and that “full service
banking for specialized services” includes lines of credit, personal loans, financial
planning and money market accounts” with “the emphasis is on personalized support
through a diverse array of services.”10 June 16, 2020 Denial of Reconsideration at
TSDR at 128-129.
As to the marketing of these services on the banking websites, the services are not
necessarily displayed on the same web pages, but they can be found by clicking on
identified descriptive links on the home page to other sections of the same website.
Even if the services are offered on different web pages, the record evidence shows that
the services are complimentary and are commonly offered by small, medium-sized,
and large banks as part of full service banking.11 This website evidence represents a

10 Applicant argues that “the in-person nature and relationship business model of
Registrant’s services” would result in little connection by consumers as to Applicant’s services
which are often offered by mobile application and online. Applicant’s brief, 18 TTABVUE 21.
But as the Comerica.com website illustrates, banks also offer, for example, in-person personal
lending and investment services and physical branches are available for in-person access.
11 Applicant argues that the Internet evidence is “insufficient to prove that the services may
be encountered in overlapping channels of trade by the same classes of consumers” due to the
ubiquity of the Internet for marketing all types of goods and services. Applicant’s brief 18
TTABVUE 23. However, we find that the Internet evidence showing full service banks
offering banking and investment services is probative of the marketing channels and
consumers targeted by these services.
Serial No. 88134205
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relationship stronger than Applicant posits as being akin to the relationship of any
two random items that one might find within a large grocery store.
As to the similarity or dissimilarity of the trade channels and classes of
purchasers, Applicant’s amended identification limits its trade channels to its
“branch offices, web site, and downloadable mobile software application.” Consistent
with this limitation, Applicant argues that there is no likelihood of confusion because
its “unique services” are only offered “in Applicant’s own branch offices with clearly-
marked signage, or through its ATM cards, or through its secure, proprietary, online
portal or mobile application.”12 Applicant’s brief, 18 TTABVUE 20. See also
Declaration of Anita Speck, Marketing Director of Applicant, May 26, 2020 Request
for Reconsideration at TSDR 12-15 (stating that consumers have not experienced
trademark confusion at its branches, its online banking platform or mobile
application).
As to the cited registration, there is no limitation as to trade channels or classes
of purchasers in the registration. Therefore, we must presume that Registrant’s
services are marketed in all normal trade channels for such services and to all normal
classes of purchasers for such services. See In Re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Both Applicant’s and Registrant’s services are offered to the general public, and
the potential purchasers are those individuals interested in banking, credit card,

12 The Examining Attorney points out that the evidence reflects that other banks also offer
their services in the same manner, at their branches and websites, or through mobile
applications. Examining Attorney’s brief, 20 TTABVUE 11-12.
Serial No. 88134205
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mortgage lending, and financial and investment services. The Examining Attorney’s
website evidence shows that banks also market investment services to its potential
customers, and therefore, there is an overlap of potential purchasers. June 16, 2020
Denial of Reconsideration at TSDR 2-170; May 3, 2019 Office Action at TSDR 2-63.
Although Registrant’s services may not be offered in Applicant’s branches,
website, or mobile application, prospective consumers who are familiar with
Applicant’s services may, upon encountering Registrant’s services, mistakenly
believe that they are affiliated or related with Applicant. Thus, even with the
limitation of Applicant’s trade channels, Applicant’s and Registrant’s goods are likely
to be encountered by the same purchasers. Accordingly, the second and third DuPont
factors do support of a finding of likelihood of confusion with regard to cited
Registration No. 3180788.
Registration No. 5670227
Applicant’s services are
banking services; financial services, namely, mortgage
lending and credit card services; all of the foregoing offered
at trademark owner’s branch offices, web site, and
downloadable mobile software application.
Registrant’s services are
Insurance financing services.
Applicant argues that “the record is devoid of any evidence
concerning the relatedness of “banking services,” “mortgage lending” and “credit card
services” to “insurance financing services.”
Serial No. 88134205
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The Examining Attorney’s relies on the previously mentioned website evidence
and third-party registrations as evidence of relatedness.
The Examining Attorney submitted web pages from HSBC bank showing that it
offers life insurance. May 3, 2019 Office Action at TSDR 53, 61, 62. The remainder of
the website evidence is not clear. Although some of the website evidence shows that
some banks offer “insurance” as evidenced by a link on the home page, the specific
nature of the insurance services offered cannot be determined.
For example, First Third Bank’s web page link is “insure”; Bell Bank’s web page
link is “insuring”; Canandaigua National Bank’s web page link is
“planning/insurance”; Pinnacle National Partners’ web page link is “insurance,” and
on this same page references “personal and business insurance”; and C Central
Bank’s web page link is “Central Insurance Services.”13 June 16, 2020 Denial of
Reconsideration, at 2, 48, 99, 112-113, 114, 117.
As to the third-party registrations, only some list insurance services as well as
banking services, credit card or mortgage lending services. We observe that none of
the third-party registrations list “insurance financing services,” the services recited
in the cited registration. Of those third-party registrations that do list either banking
services, or credit card services or mortgage lending services and insurance services,
they identify services such as “insurance agency,” “insurance brokerage,” “insurance

13 The Examining Attorney’s evidence also includes a completely separate website for Chase
Insurance Company that offers term life insurance. Although the web page shows the name
Chase and the same design mark as Chase bank, the affiliation with Chase bank is unclear.
May 3, 2019 Office Action at TSDR 64-67.
Serial No. 88134205
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administration,” “insurance consultation,” “insurance underwriting,” or “insurance
claims processing.”14 In particular, Reg. No. 5308021 identifies insurance
consultation; Reg. No. 5599940 identifies insurance agency, insurance claims
administration, insurance risk management services, insurance claims processing;
Reg. No. 5791953 identifies financial evaluation for insurance purposes,
administration of employee benefits plans concerning insurance, insurance agency,
insurance administration, and insurance consultation; Reg. No. 5860754 identifies
insurance agency, insurance claims administration, insurance claims processing,
insurance risk management, insurance consultation; and Reg. No. 5856124 identifies
insurance underwiting, issuing and administration. November 26, 2019 Office Action
at TSDR 81-83, 120-123, 127-130, 144-147, 154-156.

14 We take judicial notice of the definitions for insurance agent, insurance brokerage, and
insurance underwriter:
Insurance agent is defined as “a person or company who gives advice about and sells
insurance for an insurance company or number of insurance companies.”
Insurance brokerage is defined as “the business of giving people independent advice about
what insurance is available from different companies and of arranging insurance for them,
or a company that provides this service.”
Insurance underwriting is defined as “underwriter a person whose job is to calculate the risk
that is involved in an activity or in providing insurance for a particular customer, and to
decide how much should be paid for insurance.”
Cambridge Dictionary https://dictionary.cambridge.org/us/dictionary/english/insurance-
agent; https://dictionary.cambridge.org/us/dictionary/english/insurance-brokerage;
https://dictionary.cambridge.org/us/dictionary/english/insurance-underwriter (all accessed
February 10, 2021).
The Board may take judicial notice of dictionary definitions retrieved from online sources
when the definitions themselves are derived from dictionaries that exist in printed form. In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 88134205
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There is no evidence in the record that banks that offer banking services or credit
card services or mortgage lending services offer insurance financing, and none of the
insurance services listed in the third-party registrations are legally identical or
encompass “insurance financing services.”15 As to the marketing of the insurance
financing services, the evidence in the record shows that the services are marketed
to insurance agents, and they make arrangements for any financing for their clients
who are high net worth individuals of at least $5 million dollars.16 November 4, 2019
Office Action at TSDR 102-109; 72-74.
We find that the Examining Attorney has not established that the services are
related or that the normal trade channels for Applicant’s and Registrant’s services
overlap for Registration No. 5670227. Thus, the second and third DuPont factors do
not support of a finding of likelihood of confusion with regard to cited Registration
No. 5670227.
C. Conditions of Sale
We next consider “the conditions under which and the buyers to whom sales are
made.” DuPont at 567.
Registration No. 3180788

15 Insurance financing is third-party financing of insurance premiums, allowing individuals
and businesses to leverage current assets. April 11, 2019 Response to Office Action at TSDR
72.
16 “Premium financing is often transparent to the individual or company insured. Brokers
transmit the completed premium finance agreement to the premium finance company, and
the policy holder is billed as they would be for any other typical insurance policy.” November
4, 2019 Response to Office Action at TSDR 112.
Serial No. 88134205
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Applicant argues that both personal wealth management and banking services
require customer sophistication and that customers use due care in their selection of
the provider of these services. Applicant’s brief 18 TTABVUE 24.
However, there is no evidence in the record establishing that general-public
consumers of banking, credit card, mortgage lending and financial and investment
services identified in the application and registration are sophisticated or would
exercise a high degree of care. See, e.g., Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d
1271, 1283 n.18 (TTAB 2014) (where relevant consumers of banking, financial
planning, and investment services consisted of both ordinary and knowledgeable and
sophisticated consumers, “this factor certainly would not weigh significantly in
applicant’s favor”). See also Amalgamated Bank of New York v. Amalgamated Trust
& Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988 (while some
consumers choose their banks with care, others consumers do not); In re 1st USA
Realty Professionals, Inc., 84 USPQ2d 1581, 1587 (TTAB 2007) (“As for credit card
services, the care that is taken in such transactions is on the part of the company
offering the service, in terms of the credit-worthiness of the consumer, rather than on
the part of the consumer who uses the service.”).
We find that the normal classes of purchasers of Applicant’s services and
Registrant’s services would include both ordinary consumers who likely would
exercise only a normal degree of care, as well as more knowledgeable and
sophisticated consumers. In this regard, the applicable standard of care for a
likelihood-of-confusion analysis is that of the least sophisticated consumer. See Stone
Serial No. 88134205
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Lion, 110 USPQ2d at 1163 (precedent requires consumer care for likelihood-of-
confusion decision to be based “on the least sophisticated potential purchasers”).
Thus, we find that the relevant customers would not necessarily exercise great
care in purchasing Applicant’s and Registrant’s services. This DuPont factor is
neutral as to Registration No. 3180788.
Registration No. 5670227
Applicant argues that the insurance agents who choose Registrant’s insurance
financing are extremely discerning consumers:
And not surprisingly, with regard to National Partners’
services, considering that insurance agents are handling
massive insurance policies for customers whose net worth
is between $5 million and over $25 million, and considering
the loss the agent faces if such customers default on their
premiums or their premium financing deal, the agents are
extremely discerning when choosing their providers of
premium financing services. Applicant’s brief 18
TTABVUE 24.
As Applicant indicates, the evidence reflects that insurance financing is reserved
for qualified clients with a high net worth. April 11, 2019 Response to Office Action
at 73. The process for obtaining insurance premium financing requires a
determination of insurance coverage needs and financial suitability, design of a
preliminary case discussed by all parties, iterations of the design of the preliminary
case to optimize the plan selected, formal underwriting, and issuance of the insurance
policy. Id. at 73. Insurance premium financing is “complex in nature” and requires
consultation with qualified financial, tax, and legal experts. Id. at 74.
We find that a great deal of purchaser care is involved in obtaining these services.
This DuPont factor weighs in Applicant’s favor for cited Registration No. 5670227.
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II. Conclusion
Considering all of the arguments and all of the evidence of record as it pertains to
the relevant DuPont factors, we conclude that when considered in their entireties,
Applicant’s mark is substantially similar to FLC CAPITAL
ADVISORS, the mark in Registration No. 3180788, and that the services are related
and directed to some of the same or overlapping consumers. Accordingly, we find a
likelihood of confusion exists between Applicant’s mark and this cited registered
mark.
As to the mark subject to Registration No. 5670227, however, while we also find
the marks are similar, we find that the services are unrelated, the channels of trade
do not overlap, and that the conditions of sale show purchasers are discriminating.
Therefore we find no likelihood of confusion exists with this cited registered mark.
Decision: The refusal to register Applicant’s mark
under Section 2(d) of the Trademark Act is affirmed with respect to Registration No.
3180788 but reversed with respect to Registration No. 5670227.