Florida Capital Group, Inc.

Trademark Trial and Appeal Board

Aug 27, 2020

88134190 (T.T.A.B. Aug. 27, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: August 27, 2020

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. 88134190
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Mark D. Passler and Rachel B. Rudensky of Akerman LLP,
for Florida Capital Group, Inc.
Megan Aurand, 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 FLCBANK (in standard characters) for “banking services;
financial services, namely, mortgage lending and credit card services” in
International Class 36.1

1 Application Serial No. 88134190 was filed on September 27, 2018, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

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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 the following
International Class 36 services:
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.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We affirm 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

Page references to the application record refer to the online database pages of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system.

2 Registration No. 3180788, renewed.
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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 and Strength of the Marks
We turn to the first DuPont factor, which requires us to determine the similarity
or dissimilarity of the marks when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin 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.
Applicant’s mark is FLCBANK and Registrant’s mark is FLC CAPITAL
ADVISORS.
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Each mark is constructed similarly, composed of the letter combination FLC,
followed by a descriptive, if not generic, term(s). BANK, in Applicant’s mark,
although combined with the letters FLC, is a descriptive or generic term for a
financial institution that offers banking services;3 the term undoubtedly would be
disclaimed if it were not displayed in a combined manner with the letters FLC.
CAPITAL ADVISORS in Registrant’s mark has been disclaimed and is descriptive or
generic wording when used in connection with financial consultation and investment
advice services.4 The inclusion of a space between the terms in Registrant’s mark, or
lack thereof in Applicant’s mark, is not a distinguishing feature of the marks. See,
e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he
marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical
(internal citation omitted).”).
In considering the marks in their entireties, we find the marks are similar in
appearance, meaning and sound, in that they share the identical FLC letter
combination as the first part of each mark. The different words in the marks that
follow the letter combination FLC namely, BANK and CAPITAL ADVISORS, do not
distinguish the marks because those terms are at least descriptive, if not generic.

3 We take judicial notice of the dictionary definition of bank as “an organization that holds
money belonging to others, investing and lending it to get more money, or the building in
which the organization is situated.” CAMBRIDGE DICTIONARY,
https://dictionary.cambridge.org/us/dictionary/english/bank (accessed August 26, 2020). The
Board may take judicial notice of dictionary definitions in online dictionaries that exist in
printed format. In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
4 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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Applicant argues that its customers know that FLC in its mark stands for Florida
Capital Bank and points out that FLC in Registrant’s mark means Franklin Loan
Corporation. Applicant’s brief, 8 TTABVUE 11-12, 15. However, there is nothing in
the marks that alerts consumers to this information. The letters FLC, on their face,
have no particular meaning, and there is no additional wording that would inform
the consumer what the letters FLC stand for in either mark.
As indicated, in analyzing the similarity of the marks, we must consider them in
their entireties. However, 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. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Descriptive or
generic terms in a mark are often less significant in creating the mark’s commercial
impression and generally given less weight. See In re Nat’l Data Corp., 224 USPQ at
751 (“a descriptive component of a mark may be given little weight in reaching a
conclusion on likelihood of confusion”); In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001).
Applicant acknowledges that Applicant’s and Registrant’s marks do have a
similarity in that they share the letter combination FLC and that the terms BANK
and CAPITAL ADVISOR in each mark are at least descriptive. Applicant’s brief, 8
TTABVUE 14-15. However, Applicant contends that the different descriptive terms
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that follow the letter combination FLC can serve to distinguish the marks as a whole.
Applicant’s brief, 8 TTABVUE 14-18.
In particular, Applicant submits that the marks have entirely different
connotations and commercial impressions due to the addition of descriptive words
BANK and CAPITAL ADVISORS to the letter combination FLC. Applicant’s brief, 8
TTABVUE 14-15. Applicant also asserts that CAPITAL ADVISORS is a term of art
and “signals to consumers the precise nature of the [Registrant’s] services” which is
personal investment advisors and wealth managers. Applicant’s brief, 8 TTABVUE
12, (referencing April 11, 2019 Response to Office Action, at TSDR 19-20; November
15, 2019 Request for Reconsideration at TSDR 49-99). Applicant submits that BANK,
on the other hand, signals to consumers that Applicant is a bank that “holds money,
offers credit card services, business loans, mortgages, and financial products of that
nature” and that the term BANK does not provide the connotation “of advice or
guidance of any sort.” Applicant’s brief, 8 TTABVUE 15.
While we accept Applicant’s arguments that the additional 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
element or elements that are dominant and most important in determining likelihood
of confusion. Thus, we are unpersuaded that BANK and CAPITAL ADVISORS are
distinguishing terms that outweigh the similarity of the marks.
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Applicant also points to cases where the Board found that the addition of a
descriptive term was sufficient to distinguish the marks because the shared term was
weak. Applicant’s brief, 8 TTABVUE 16-18. However there is no evidence in the
record to show that FLC is weak in relation to Registrant’s services such that the
presence of the descriptive, if not generic, wording BANK in Applicant’s mark or the
descriptive, if not generic wording, CAPITAL ADVISORS in Registrant’s mark would
be sufficient to distinguish these marks as a whole.5
We conclude that the first element in each mark, FLC, is the dominant term, and
which, in each instance, identifies the source of the services and contributes to the
overall commercial impression of the marks. See, e.g., Presto Prods. Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
Thus, the terms BANK and CAPITAL ADVISORS in Applicant’s and Registrant’s
marks are each entitled to less weight in analyzing the overall commercial impression
of the marks.
When we compare FLCBANK and FLC CAPITAL ADVISORS in their entireties,
and give greater weight to the dominant elements, we conclude that the marks in
their entireties are more similar than dissimilar. While admittedly there are

5 In its November 4, 2019 Request for Reconsideration at TSDR 100-129, Applicant submitted
third-party registrations for the marks (FBC Home Loans, FSC Federal Benefits
Consultants, FSC, FDC Financial, FGC, FHC, and FMC) and third-party uses (FBC
Mortgage, FSB Farmer State Bank, FCB Banks, FDC Financial, and FGC/FGC Securities)
showing marks or uses with three letter combinations containing the letters “F” and “C” but
which differ from Applicant’s and Registrant’s marks by the middle letter. Accordingly, this
evidence is not probative as to whether the letter combination FLC is weak in relation to
Registrant’s services.
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differences in the marks, as discussed above, the letter combination FLC in both
marks contributes to their overall similarity and outweighs any differences. See In re
Denisi, 225 USPQ 624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is
the same, then confusion may be likely notwithstanding peripheral differences.”).
This DuPont factor weighs in favor of finding a likelihood of confusion.
B. Relatedness of the Services
We next consider the second DuPont factor. This factor “considers ‘[t]he similarity
or dissimilarity and nature of the goods or services as described in an application or
registration.’” 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 this factor is based
on the identifications of services in the application and the cited registration. Id.;
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161-63 (Fed. Cir. 2014).
In analyzing the second DuPont factor, it is not necessary that the services of
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. Coach Servs. Inc. v. Triumph
Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). In addition, “it is
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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)).
Applicant’s services are “banking services; financial services, namely, mortgage
lending and credit card services.” Registrant’s services are “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.”
Applicant argues that the Examining Attorney has failed to demonstrate that the
services are related, because although both services could be considered to be in the
financial industry, the services are distinct and highly regulated making the barrier
to entry difficult. Applicant’s brief, 8 TTABVUE 8-10, 19. Applicant also distinguishes
its banking services as impersonal, electronic, and automated while Registrant’s
services are personalized. Applicant’s brief, 8 TTABVUE 10-12.
To support the assertion that the services are related, the Examining Attorney
submitted third-party registrations based on use in commerce for services that cover
both banking and, among other things, financial planning and financial investment
services. November 25, 2019 Denial of Reconsideration at TSDR 2-172. Third-party
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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 which may
emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
1786 (TTAB 1993). Examples include:
HAWAIIUSA (Reg. No. 4532533) for services that include “banking” and “investment
advice services,” November 25, 2019 Denial of Reconsideration at TSDR 2-4;

BB&T (Reg. No. 4583618) for services that include “providing interactive and non-
interactive banking,” “financial and investment consultation and information via
global computer networks”; and “financial services, namely, investment advice,
consultation and brokerage in the fields of stocks, bonds, mutual funds and other
securities; and financial planning, financial forecasting, personal financial situation
assessment and evaluation,” Id. at TSDR 8-10;

SUNCOAST CREDIT UNION and design (Reg. No. 4730305) for services that include
“banking services” and “investment services, namely asset acquisition, consultation,
development and management services,” Id. at TSDR 18-20;

HUNTINGTON PRIVATE CLIENT GROUP (Reg. No. 5105395) for services that
include “banking services,” and “financial investment and planning services, namely,
wealth management services and providing investment advice,” Id. at TSDR 21-23;

BANC OF CALIFORNIA FINANCIAL INSTITUTIONS BANK and design (Reg. No.
4819108) for services that include “banking services” 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” and “financial planning and investment advisory services;
investment of funds for others,” Id. at TSDR 33-35;

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

BETHPAGE FEDERAL CREDIT UNION B and design (Reg. No. 5048309) for
services that include “banking services,” and “financial planning and investment
advisory services,” Id. at TSDR 65-67;
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BANK OF THE JAMES and design (Reg. No. 5425912) for services that include
“banking services,” “financial management,” “financial consultation,” and “financial
planning and investment services, namely, wealth management,” Id. at TSDR 90-92;

NORTHERN TRUST (Reg. No. 5380734) for services that include “banking services,”
and “investment advice and financial services, namely, financial planning for
retirement,” Id. at TSDR 98-100.

The Examining Attorney also submitted Internet website evidence to show that
banking services and investment services may be offered under a common mark.6
May 3, 2019 Office Action at TSDR 2-72, hsbc.com, bankofamerica.com,
wellsfargo.com, citigroup.com, sandyspringbank.com.
Applicant argues that the Examining Attorney’s third-party registrations do not
establish relatedness because there are over 30,000 registrations that cover
investment services but not banking services which shows that banking services have
not expanded into investment services. Applicant’s brief, 8 TTABVUE 20. Applicant
also argues that capital advisors who offer investment services do not advertise or
offer banking services. Id.
In support of its argument, Applicant submitted lists of third-party registrations
generated from two7 TESS (Trademark Electronic Search System) searches as well

6 Some banks offer the services under a common house mark while others use entirely
different marks. Bank of America offers investment services under Merrill Edge and Merrill
Lynch Wealth Management, Wells Fargo offer investment services under Wells Trade and
Wells Fargo Advisors, Sandy Spring Bank offers investment services under Sandy Spring
Private Investment Group, HSBC offers investment services under HSBC Securities (USA)
Inc., Chase offers investment services under J.P. Morgan, and Citibank/Citi offers wealth
management under Citigold, Citigold Private Client, and Citi Priority. May 3, 2019 Office
Action at 2, 7, 21, 32, 43, 69.
7 The other TESS search results showed 11,000 registrations for banking services that do not
cover investment services. November 4, 2019 Request for Reconsideration at TSDR 8-11.
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as a few representative samples of third-party registrations from these searches.8
November 4, 2019 Request for Reconsideration at TSDR 8-48. Applicant also
submitted website evidence to show that “capital advisors” offering investment advice
and investment services do not offer the banking services, mortgage lending, or credit
card services offered by Applicant. November 4, 2019 Request for Reconsideration at
TSDR 49-99. Applicant argues that in view of the many registrations that do not cover
both banking and investment services, the amount of registrations submitted by the
Examining Attorney are not sufficient to demonstrate a connection between
Applicant’s and Registrant’s respective services. Applicant’s brief, 8 TTABVUE 20;
Applicant’s Reply brief, 11 TTABVUE 5.
Under certain circumstances, a low number of third-party registrations may
suggest that the services are, in fact, not related. However, in this case, the
Examining Attorney has submitted over 50 third-party registrations for both banking
services and financial and investment services. This is more than a sufficient number
to demonstrate the relatedness of the services.
In addition, 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. “There is no requirement for
[services] to be found related that all or even a majority of the sources of one [service]

8 To make a registration properly of record, a copy of the registration, and not just a list of
registrations must be filed. See In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB
1998). The Examining Attorney did not object to the TESS lists of search results and treated
them as being of record. Therefore, we have considered the lists for whatever probative value
they may have. Id.
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must also be sources of the other [service].” In re G.B.I. Tile and Stone Inc., 92
USPQ2d 1366, 1370 (TTAB 2009). Also, “the mere fact that some [services] are not
included in a registration’s identification of [services] does not establish that the
owner of the mark has not registered the mark for those [services] in another
registration since, for example, the registrant may have begun using the mark [in
connection with those services] at a later date.” Id. Thus, Applicant’s evidence and
arguments do not successfully rebut the Examining Attorney’s third-party
registration evidence that is probative of the relatedness of Applicant’s and
Registrant’s services.
As to Applicant’s arguments regarding the banking and investment industries
being highly regulated, (Applicant’s brief, 8 TTABVUE 8-10, 19), differences in the
way the services are regulated is not dispositive as to a finding of relatedness. We
must assess whether consumers, who might not be familiar with the details of
banking and investment regulation and oversight, would mistakenly believe that the
respective services originate from the same source.
Applicant also argues that the Examining Attorney’s website evidence does not
establish relatedness because only large banks offer both banking and investment
services and “the mere fact that different goods/services can be provided by a large
concern does not compel the conclusion that those goods/services are related for the
purposes of Section 2(d).” Applicant’s brief, 8 TTABVUE 19-20.
However, we find the Examining Attorney’s website evidence probative. See Recot
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (in considering
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whether pet and human food are related, the Board erred in not considering evidence
that “several large [third-party] companies produce and sell both pet and human
food”). The website evidence is supported by the many third-party registrations that
are registered for banking services and investment services as discussed above.
The second DuPont factor favors a finding of likelihood of confusion.
C. Channels of Trade, Classes of Consumers and Conditions of Sale
The third DuPont factor considers “the similarity or dissimilarity of established,
likely-to-continue trade channels.” In re Detroit Athletic Co., 128 USPQ2d at 1051
(quoting DuPont, 177 USPQ at 567). Our analysis under this factor is based on the
identifications of services in the application and the cited registration. Id.; Stone Lion
Capital Partners, 110 USPQ2d at 1161-63. As to the fourth DuPont factor, we
consider the “conditions under which and buyers to whom sales are made.” DuPont
177 USPQ at 567.
We agree with Applicant that the Examining Attorney has misstated the law
when she states that related, but not legally identical services, are presumed to have
overlapping channels of trade, quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). When the services are not identical, or legally
identical, there is no such presumption. Rather, in the absence of a restriction to the
identification of services, as we have here, we must assume that Applicant’s and
Registrant’s services travel in “the normal and usual channels of trade and methods
of distribution” for each of the identified services. CBS Inc. v. Morrow, 708 F.2d 1579,
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218 USPQ 198, 199 (Fed. Cir. 1983). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002).
Both Applicant’s and Registrant’s services are offered to the general public, and
the potential purchasers are those individuals interested in banking services and
financial 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. May 3, 2019 Office Action at TSDR 2-72.
Applicant also argues that there is no evidence in the record that the services are
marketed in proximity to one another, except for large banks. Applicant’s brief, 8
TTABVUE 20. However, marketing proximity is not an essential factor. The question
is whether a consumer is likely to think that the services have a common source or
sponsorship. Cf. Trak Inc. v. Traq Inc., 212 USPQ 846, 851 (TTAB 1981) (close
physical proximity of the display of goods is not a significant factor, but whether
consumers are likely to think that the products have commonality as to their source
or sponsorship).
Applicant submits that the fact that banking services and investment services
both use Internet marketing is insufficient to establish overlapping trade channels
because of the ubiquity of the Internet. Applicant’s brief, 8 TTABVUE 22. Applicant
also asserts that Applicant’s and Registrant’s trade channels differ because although
“brick and mortar” locations for banks exist, banks now more commonly offer their
services through mobile banking and online, while investment services such as
Registrant offer their personalized services by appointment in designated locations
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or over the telephone. Applicant’s brief, 8 TTABVUE 21, 22; Applicant’s Reply brief,
11 TTABVUE 5, 6.
However, Applicant’s arguments do not successfully rebut the Examining
Attorney’s website evidence. The record supports a finding of overlapping channels of
trade because the Examining Attorney’s website evidence shows that the same
entities offer both Applicant’s and Registrant’s services to potential purchasers and
that the services may be delivered in physical locations, online, or through mobile
applications. May 3, 2019 Office Action at TSDR 2, 5-8, 10, 13-14, 29, 32-33, 35, 36,
39, 41, 42, 44, 49, 50, 51, 69.
Applicant also argues that the Examining Attorney ignores the extrinsic evidence
regarding Applicant’s and Registrant’s trade channels that it submitted with its April
11, 2019 response. Applicant’s Reply brief, 11 TTABVUE 5; April 11, 2019 Response
to Office Action at TSDR 21-52. However, this argument disregards the requirement
that we look to, and not beyond, the identifications of services in the application and
registration in comparing the trade channels. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Consequently, we cannot consider extrinsic evidence regarding Applicant’s and
Registrant’s trade channels. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986) (extrinsic evidence and argument suggesting trade-channel restrictions
not specified in application rejected).
As to purchaser care, Applicant argues that Registrant’s investment services
involve a degree of care stating: “[c]ertainly, consumers can be expected not to invest
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significant sums and plan their financial futures without reasonable research of their
financial advisors. At the very least, consumers know who they are engaging when
they engage their financial advisors.” 8 TTABVUE 24. As to Applicant’s services,
Applicant points to case law to bolster its argument and submits that“[c]ustomers do
not pick banking services off the shelf, like cereal at a supermarket” and its
consumers are “sophisticated and discerning.” 8 TTABVUE 21.
Although the services recited in the application and cited registration encompass
sophisticated consumers, we must make our determination based on the least
sophisticated consumer. Stone Lion Capital, 110 USPQ2d at 1163. There is no
evidence in the record establishing that general-public consumers of the banking 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 the absence of any evidence establishing sophistication of the relevant consumer,
we find the fourth DuPont factor is neutral.
Applicant also asserts that rights in a mark are acquired by use in the
marketplace, not by registration of a trademark, and “confusion is not caused by
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registration” and therefore it should be allowed to register its FLCBANK mark. To
the extent that Applicant is arguing that its right to register should follow its right
to use, (i.e., conforming the register to the realities of the marketplace) such use does
not in itself entitle Applicant to register the FLCBANK mark. In re Sox Unlimited,
Inc., 169 USPQ 682, 683 (TTAB 1971) (“while applicant has strenuously urged that
it has the right to use the subject trademark, it does not necessarily follow therefrom
that it has the right to register the same mark under the 1946 Act”).
II. Conclusion
We have considered all of the arguments and evidence of record. We find that the
marks at issue are similar, that Applicant’s identified services are related to
Registrant’s services, and that the services would move in some of the same trade
channels to the same class of purchasers. Therefore, we conclude that confusion is
likely.

Decision: The refusal to register Applicant’s mark FLCBANK is affirmed.