Hana Financial Group Inc.

Trademark Trial and Appeal Board

Jun 2, 2021

86019890 (T.T.A.B. Jun. 2, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Hana Financial Group Inc.
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Serial No. 86019890
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Michelle L. Wisniewski and Carlo F. Van den Bosch of
Sheppard Mullin Richter & Hampton LLP,
for Hana Financial Group Inc.
Brian Pino, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Kuhlke, Lykos and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Hana Financial Group Inc. (“Applicant”) seeks registration on the Principal
Register of the mark

(the “HANA BANCORP and Design” mark – “Bancorp” disclaimed) for:
Advertising; business management; business administration; office
functions, in International Class 35; and
Serial No. 86019890
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Insurance, namely, insurance underwriting, insurance brokerage,
insurance administration, insurance consultation, insurance claims
administration; Financial affairs and monetary affairs, namely,
financial advisory and consultancy services, providing financial
information, management and analysis services; Monetary affairs,
namely banking; Real estate affairs, namely, real estate agencies, real
estate appraisal, real estate brokerage, real estate consultancy, real
estate financing services, in International Class 36.1
The Trademark Examining Attorney refused registration of Applicant’s HANA
BANCORP & Design mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
on the ground that Applicant’s mark, as applied to the services identified in the
registration, so resembles the registered mark

(the “HANA FINANCIAL and Design” mark – “Financial” disclaimed) for:
Financial services, namely factoring services, asset-based lending,
equipment lease financing, international trade financing, real estate
financing, and investment consulting services, in International Class
36.2

1 Application Serial No. 86019890 was filed on July 25, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b). The mark is described in the application as follows: “Color is not
claimed as a feature of the mark. The mark consists of the stylized wording ‘HANA
BANCORP’ and the stylized design of a person.”
2 Registration No. 1987227 was issued on July 16, 1996; renewed. The mark is described in
the registration as follows: “The mark consists of a 3-Dimensional triangle with a stylized
comet crossing from right to left in the middle of the triangle with the words HANA
FINANCIAL appearing beneath the drawing.” The last listed owner of this registration in
the USPTO’s records is Hana Commercial Finance, Inc., a Delaware corporation.

Serial No. 86019890
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as to be likely to cause confusion, mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the refusal to register.
I. The Examining Attorney’s Evidentiary Objections
Before proceeding to the merits of the refusal, we address evidentiary issues the
Examining Attorney raised in his brief.
A. KEB HANA BANK and Design Registrations
The Examining Attorney objects to Applicant’s introduction of the following
service mark registrations:
Reg. No. 6061371 ( ), and
Reg. No. 6061372 ( )
and any arguments based on these registrations. The USPTO issued both
registrations to Applicant’s affiliate, KEB Hana Bank, on May 26, 2020. The
Examining Attorney objects to the Board’s consideration of these registrations on the
ground that Applicant did not make them of record during the prosecution of HANA
BANCORP & Design application.3 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In
re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002) (refusing to consider

3 Examining Attorney’s Brief, 12 TTABVUE 4. Page references herein to the application
record refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. References
to the briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE
designation is the docket entry number; and after this designation are the page references, if
applicable.

Serial No. 86019890
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Applicant’s evidence because “Applicant did not comply with the established rule that
the evidentiary record in an application must be complete prior to the filing of the
notice of appeal.”).
Applicant responds that it placed both marks into evidence with its Request for
Reconsideration filed on March 20, 2020. On that date, the underlying applications
for these marks had been published for potential opposition but had not yet
registered. In its Request for Reconsideration, Applicant referenced both marks by
serial number and submitted copies of their publication notices.4 Registrations for
those marks then issued on May 26, 2020. Thus, says Applicant, they were not new
to the record with Applicant’s appeal brief, but were made part of the record on March
20, 2020.5
Although technically untimely, we consider these registrations because the
Examining Attorney did not advise Applicant, when the notices of publication were
originally submitted during the prosecution of the application, of their limited
probative value, or that copies of the registrations were necessary. See In re Hayes,
62 U.S.P.Q.2d 1443, 1445 n.3 (TTAB 2002) (registrations considered part of appellate
record where copies of Official Gazettes showing they had been published for
opposition were submitted as evidence during prosecution). The Examining
Attorney’s objection therefore is overruled.

4 Request for Reconsideration of March 20, 2020 at TSDR 9-10, 28-30.
5 Applicant’s Rebuttal Brief, 13 TTABVUE 2-3.
Serial No. 86019890
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B. List of Third-Party Registrations from TESS Database
The Examining Attorney also objects to Applicant’s submission of a list from the
USPTO’s TESS database of 1,059 live third-party registrations issued in
International Class 36 for service marks including the terms “one” or “first.”6
Applicant submitted this list of third-party registrations to show that the term
“HANA,” which Applicant says is Korean for “one” or “first,” is weak because it exists
within a crowded marketplace of such marks for financial services incorporating such
terms.7
Third-party registrations may not be made of record by merely listing them in
response to an Office Action. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1208.02 (June 2020) and cases cited therein. The proper way
to submit third-party applications and registrations into the record is to submit a
copy of the applications or registrations themselves, or the electronic equivalent
thereof from the USPTO’s electronic databases. See In re Jump Designs, LLC, 80
USPQ2d 1370, 1372 (TTAB 2006) (“[T]he mere submission of a listing from the TESS
database is insufficient to make the referenced registrations of record. To make a
third-party registration of record, a copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic records of the Office, should be
submitted.”). The Examining Attorney’s objection to Applicant’s submitted list from

6 Request for Reconsideration of March 20, 2020 at TSDR 31-63.
7 Applicant’s Brief, 9 TTABVUE 15-17.
Serial No. 86019890
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the USPTO’s TESS database of third-party “one” and “first” registrations therefore is
sustained.
II. Likelihood of Confusion - Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must 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). However, “each case
must be decided on its own facts and the differences are often subtle ones.” Indus.
Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973).
Varying weights may be assigned to the various DuPont factors depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). In fact, “any
one DuPont factor may be dispositive in a particular case ….” See Champagne Louis
Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir.
1998) (dissimilarity of the marks found dispositive) (citing Kellogg Co. v. Pack’em
Enters., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed.Cir.1991)).
Serial No. 86019890
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III. Likelihood of Confusion - Analysis of the Controlling Thirteenth
DuPont Factor
The likelihood of confusion factors Applicant discussed are the strength of the
cited mark, the dissimilarity of the respective marks, the sophistication of the
consumers for the services, the co-existence of the respective marks without evidence
of actual confusion, and Applicant’s claimed ownership of prior registrations for
similar marks. The factors the Examining Attorney discussed are the similarity of
the respective marks and their associated services, including the channels of trade
and classes of purchasers therefor. The Examining Attorney also addressed
Applicant’s arguments.
As we find below, the thirteenth DuPont factor, ownership of prior registrations
for similar marks that are not materially different from Applicant’s pending mark,
outweighs the other DuPont factors that otherwise would support findings that
confusion is likely; that is, the strength of Registrant’s mark, the similarity of
Applicant’s and Registrant’s marks, the similarity of the respective services and
overlapping channels of trade.
The thirteenth DuPont factor considers “any other established fact probative of
the effect of use.” DuPont, 177 USPQ at 567. Applicant argues that it’s pending HANA
BANCORP and Design mark is nearly identical to the marks shown in four federal
registrations it also claims to own, as follows:

Serial No. 86019890
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Mark Reg. No./Reg. Date Services Owner

Reg. No.: 4861400
Reg. Date: Dec. 1, 2015

Banking, Cl. 36 Hana
Bank

Reg. No.: 5519744
Reg. Date: Jul. 17, 2018
Business management; business
management planning; business
management supervision, Cl. 35
Hana
Bank

Reg. No.: 6061371
Reg. Date: May 26, 2020
Insurance, namely, life insurance
underwriting; financial affairs,
namely, financial advisory services
relating to asset management;
monetary affairs, namely,
banking; loan financing, Cl. 36
KEB
Hana
Bank

The non-Latin
characters in
the mark
transliterate to
“HANA
EUNHAENG”
and this means
“HANA BANK”
in English.
Reg. No.: 6061372
Reg. Date: May 26, 2020
Insurance, namely, life insurance
underwriting; financial affairs,
namely, financial advisory services
relating to asset management;
monetary affairs, namely,
banking; loan financing, Cl. 36
KEB
Hana
Bank
The details of Applicant’s pending application are:
Mark App. No./
Filing Date
Services Owner

App. No.: 86019890
Filing Date: Jul. 25,
2013
Advertising; business
management; business
administration; office
functions, Cl. 35
Insurance, namely, insurance
underwriting, insurance
brokerage, insurance
administration, insurance
consultation, insurance claims
administration; Financial
affairs and monetary affairs,
namely, financial advisory
and consultancy services,
providing financial
information, management and
analysis services; Monetary
affairs, namely banking; Real
estate affairs, namely, real
estate agencies, real estate
appraisal, real estate
brokerage, real estate
Hana
Financial
Group
Inc.
Serial No. 86019890
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Mark App. No./
Filing Date
Services Owner
consultancy, real estate
financing services, Cl. 36

Applicant contends that the Examining Attorney erred by denying registration of
the mark of its pending application under the “rule of consistency in examination,”
particularly in light of his failure to identify any resulting harm from doing so.8 The
Examining Attorney argues the issuance of registrations for prior marks having
characteristics similar to Applicant’s pending mark should be considered under the
analysis set forth in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400
(TTAB 2012),9 which we discuss below.
Before we address the prior registrations under the thirteenth DuPont factor, we
note that Applicant’s claim of ownership of Registration Nos. 4861400, 5519744,
6061371 and 6061372 pertains to prior registrations owned by its wholly-owned
subsidiaries. Registration Nos. 4861400 and 5519744 were issued in the name of
Hana Bank. In a declaration submitted pursuant to Trademark Rule 2.20, 37 C.F.R.
§ 2.20, Applicant’s Manager, Ms. Do Kyung Kim, attests that Hana Bank is
Applicant’s wholly-owned subsidiary.10 Given that Registration Nos. 4861400 and
5519744 are owned by Applicant’s wholly-owned subsidiary, Applicant may rely on
them for purposes of asserting no likely confusion under this DuPont factor.

8 Applicant’s Brief, 9 TTABVUE 12-14; Applicant’s Reply Brief, 13 TTABVUE 4-6.
9 Examining Attorney’s Brief, 12 TTABVUE 13.
10 Declaration of Ownership, Office Action Response of March 11, 2019 at TSDR 9. Because
we do not rely on Registration Nos. 6061371 or 6061372 in support of our decision, we do not
address their ownership.
Serial No. 86019890
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As discussed in In re Strategic Partners, the factors to be considered in
determining the significance of a prior registration owned by an applicant under the
thirteenth DuPont factor include:
 There is no “meaningful difference” between the marks in
applicant’s prior registration and its present application – that
is, there is no material difference between the marks;
 The services are at least in-part identical; and
 Both the applicant’s prior registration and the cited
registration are more than five years old and thus immune
from attack on likelihood of confusion grounds.
In re Strategic Partners, 102 USPQ2d at 1399. The Board acknowledged these facts
constituted a “unique situation,” such that an applicant’s prior registration would
generally need to fit within these parameters to overcome a Section 2(d) refusal. Id.
at 1400.
The facts of In re Strategic Partners are illustrative. There, the Board found no
likelihood of confusion between applicant’s applied-for mark for “footwear”
and the cited registration 11 for “jackets, shirts, pants, stretch T-tops and
stoles.” The Board noted that the applicant’s prior registration for the mark
ANYWEARS (in standard characters) for, inter alia, “footwear” had coexisted with
the cited registration for over five years, and the applicant’s existing registration was
not subject to attack by the owner of the cited registration on a claim of priority and
likelihood of confusion. These facts tipped the scale in favor of the applicant and a

11 The literal portion of the mark reads: ANYWHERE BY JOSIE NATORI.
Serial No. 86019890
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finding of no likelihood of confusion.” In re Strategic Partners, 102 USPQ2d at 1399-
1400.
Registration No. 4861400 for the mark HANA BANK and Design, issued in
December 2015 for “banking” services. Registration No. 5519744 for the mark HANA
GROUP and Design, issued in July 2018 for “business management; business
management planning; [and] business management supervision” services. We
address each registration in turn.
We find there is no “meaningful difference” between the prior HANA BANK and
Design mark and Applicant’s pending HANA BANCORP and Design mark. Both
marks begin with the term HANA and contain the same design element. “The marks’
second terms vary only slightly. “The … [pending mark’s] second term, BANCORP,
alters BANK only by changing the ‘C’ to a ‘K’ and adding the three letters ‘ORP.’”12
The Class 36 services in the prior HANA BANK and Design registration and the
pending HANA BANCORP and Design application are identical or otherwise related.
Both the HANA BANK and Design registration and the cited HANA FINANCIAL
and Design registration have been extant for over five years.
We also find there is no “meaningful difference” between the prior HANA GROUP
and Design mark and Applicant’s pending HANA BANCORP and Design mark. Both
marks begin with the term HANA and contain the same design element. HANA is
the first and dominant portion of each mark. See Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark

12 Applicant’s Brief, 13 TTABVUE 5.
Serial No. 86019890
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which is most likely to be impressed upon the mind of a purchaser and remembered”);
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the
identical lead word). The term “Group” is disclaimed in the HANA GROUP and
Design registration, and the term “Bancorp” is disclaimed in the HANA BANCORP
and Design application. Disclaimed, descriptive matter – such as “Group” and
“Bancorp” in each mark – has less significance. Cf. 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 component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.”) (cleaned up, citation
omitted).
The Class 35 services in the prior HANA GROUP and Design registration and in
the pending HANA BANCORP and Design application are identical or otherwise
related. Although the HANA GROUP and Design registration and the cited HANA
FINANCIAL and Design registration have only coexisted for 2-½ years, In re
Strategic Partners does not dictate the prior registration must be five years old.
Rather, “the duration of coexistence … should be considered together with all the
other relevant DuPont factors.” TBMP § 1207.01; see also, In re Country Oven, Inc.,
2019 USPQ2d 443903, at *18 (TTAB 2019) (The USPTO’s issuance of prior
registrations to Applicant for similar marks is a highly fact specific DuPont factor
and it is under very specific circumstances that this factor may matter); In re USA
Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017) (3 year
Serial No. 86019890
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co-existence of Applicant’s prior registration and the cited registration a relevant
consideration).
We find, under the circumstances of this case, where (1) a prior registration, for a
mark with no material difference from Applicant’s pending mark, existed in excess of
five years for identical and related services; and (2) the younger prior registration,
again for a mark with no material difference from Applicant’s pending mark, existed
in excess of two years for identical and related services, the thirteenth DuPont factor
overcomes the other DuPont factors that otherwise might support a finding that
confusion is likely.
IV. Likelihood of Confusion - Conclusion
We find the thirteenth DuPont factor, in view of the ownership of the HANA
BANK and Design and HANA GROUP and Design registrations by Applicant’s Hana
Bank subsidiary (for Class 36 and 35 services, respectively), is dispositive in this case.
We find this is so even though the first, second and third DuPont factors might
otherwise weigh in favor of a finding that confusion is likely between the HANA
BANCORP and Design and HANA FINANCIAL and Design marks and associated
services.
Decision:
The refusal to register Applicant’s mark in Classes 35 and 36 on
the ground of likelihood of confusion pursuant to Trademark Act Section 2(d) is
reversed.