IberiaBank Corporation

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85381460 (T.T.A.B. Jun. 14, 2013)

Mailed:
June 14, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
IberiaBank Corporation
________
Serial No. 85381460
_______
Bernard F. Meroney, attorney at law, representing IberiaBank Corporation
Marc J. Leipzig, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_______
Before Kulhke, Cataldo and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
IberiaBank Corporation (“applicant”) seeks registration on the Principal
Register of the mark I WILL (in standard characters) for “banking services, namely,
checking account services, savings account services, online bill paying services, and
credit card services,” in International Class 36.1
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), contending that
applicant’s use of its mark for its identified goods is likely to cause confusion with

1 Application Serial No. 85381460 was filed on July 26, 2011, based on an allegation of
applicant’s bona fide intent to use the mark in commerce.
This Opinion is a Not
Precedent of the TTAB
Serial No. 85381460

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Reg. No. 3347833 for the mark depicted below for “mortgage brokerage; mortgage
lending” in International Class 36.2

After the examining attorney made the refusal final, applicant appealed to
this Board. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).

2 Registered December 4, 2007.
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A. Comparison of the Services
We begin our discussion by considering the similarity or dissimilarity and
nature of the services described in the application and registration. It is settled that
it is not necessary that the respective services be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis, it being sufficient that the services are related in some manner and/or that
the circumstances surrounding their marketing are such that they would be likely
to be encountered by the same persons under circumstances that would give rise,
because of the marks employed thereon, to the mistaken belief that the services
originate from or are in some way associated with the same producer. In re Home
Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990).
Applicant provides banking services. The evidence of record shows that it is
not uncommon for banks, which traditionally have offered their customers bank
accounts (such as checking, savings and credit card accounts) to have expanded
their offerings to encompass a greater array of services, including bill-paying
services (identified in applicant’s statement of services) and mortgage lending and
brokerage services (identified in registrant’s statement of services). The examining
attorney has submitted copies of use-based, third-party registrations demonstrating
the relatedness of banking services (accounts, credit card and bill-paying services)
and mortgage lending services.3 These registrations are;
Reg. No. 4051668 TDECU for “Financial services, namely,
banking services, financial planning services,
commercial lending services, mortgage lending

3 See Office action dated November 22, 2011.
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services, retirement planning, investment brokerage
services, insurance brokerage services, financial
information and advisory services”;4
Reg. No. 4032859 for the mark F1RST FEDERAL IOWA
for “Banking services; financial services, namely,
consumer lending, commercial lending, financial
planning, investment banking services, mortgage
banking, online banking services, credit card services,
and debit card services; providing on-line financial
calculators; providing information in the fields of banking
and financial services via a global computer network”;5
Reg. No. 4037643 for the mark for “Banking
services, namely, installment, commercial, consumer,
and real estate lending and financing; mortgage lending
and financing services; agricultural loans; lease purchase
financing; debit card services; electronic fund transfer
services; electronic interactive banking services, namely,
bill payment services, and account alerts services in
the nature of electronic alerts that alert users when a
banking transaction occurs; accident insurance
underwriting; cash management services; banking
services, namely, checking accounts, business checking
accounts, savings and money market accounts,
savings bank services, CD and IRA accounts, Remote
Deposit Capture, maintaining escrow accounts for real
estate and mortgages; safe deposit box services; automatic
teller machine banking services, telephone banking,
mobile banking, namely, banking services provided by
mobile telephone connections, PDA or other mobile
device”;6
Reg. No. 4028760 for the mark for “banking
and financing services, namely, mortgage lending,
commercial loans, mortgage refinancing, consumer
lending, Internet banking, small business and Small
Business Administration loans, construction loans,

4 Registered November 8, 2011.
5 Registered September 27, 2011.
6 Registered October 11, 2011.
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consumer checking, commercial checking, consumer
savings, commercial savings, certificates of deposit and
IRA's”;7
Reg. No. 4041773 for the mark SMOOTH SALIN for
“Banking services; financial planning; investment
advice; investment banking services; loan financing; on-
line banking services”;8 and
Reg. No. 4041247 for the mark for “Credit
union services, financial services, namely, banking,
individual retirement account services, consumer and
mortgage lending, loan services in the nature of
consumer and mortgage lending, financial planning
services, online banking services, namely, deposit services
in the nature of depository accounts; consumer and small
business financial services, namely banking services,
ATM and debit card services, credit card services, bill
payment services, bill presentment, namely, electronic
processing and transmission of bill payment data,
electronic wire transfers of money, checking account
overdraft services, electronic remote check deposit
services; life, property and casualty insurance
administration services.”9
Copies of use-based, third-party registrations may serve to suggest that the goods
are of a type which may emanate from a single source. In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988).
See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The examining attorney has also submitted copies from websites showing
mortgage lending and brokerage services advertised under the CHASE service
mark, the CITI service mark, and the BANK OF AMERICA trade name.10 This

7 Registered September 20, 2011.
8 Registered October 18, 2011.
9 Registered October 18, 2011.
10 See Office action dated June 2, 2012.
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evidence corroborates the third-party registrations by showing that banks provide
mortgage lending and brokerage services. In addition, tab headings, on the web
page describing CHASE home lending and refinancing services, display and provide
links to, inter alia, “Credit Cards,” “Checking,” and “Savings” services. While it is
not a full webpage showing the banking services, nonetheless, this excerpt supports
the conclusion that Chase offers traditional banking services as well as mortgage
lending services. The cumulative effect of the evidence supports our finding that in
addition to providing checking and savings accounts, credit card services and bill-
paying services, banks offer mortgage lending services. Thus, consumers of
traditional banking services will, upon encountering mortgage lending services
offered under the same or similar mark, become confused as to the source of origin
of the services.
Accordingly, this du Pont factor weighs in favor of a finding of likelihood of
confusion.
B. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under this du Pont 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 offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on the
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marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re National
Data Corp., 224 USPQ at 751. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The dominant impression created by the cited registration is formed by the
stylized wording “iWillfundyou.” The “.com” portion carries no significance as a
source-indicator; it does not “expand the meaning” of the mark to include services
beyond those of offering lending and brokerage services. In re DNI Holdings Ltd.,
77 USPQ2d 1435, 1441 (TTAB 2005). The informational slogan, “The best
legitimate home loan, period!” merely touts the services as being “the best” and is
much smaller in size and subordinate in location to the wording “iWillfundyou.”
The design feature is displayed apart from the rest of the mark, making it less
pertinent to the wording, but because it represents the letter “I,” it not only
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suggests the personal nature of the services but also emphasizes the primacy of the
dominant portion of the mark “iWillfundyou.”
In considering applicant’s mark I WILL, we first note that it is identical to
the first two words of the dominant portion of registrant’s mark “iWillfundyou.”
The marks thus share a similar pronunciation and appearance. Because applicant’s
mark has been applied for without regard to style, it may be used in any font,
including that of the cited mark’s lower case “i” and capitalized first letter “W.” It
may also be stylized as one word, i.e., “iWill.” Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). In
meaning and commercial impression, the marks are also similar. By virtue of their
use of the first person singular pronoun “I,” both marks suggest services that are
offered with a “personal touch.” Applicant argues that its mark is “an aspirational
phrase with no true meaning, but evokes a sense of partnership and support, as the
term is strongly associated with marriage vows.” Brief, p. 3. Registrant’s mark also
evokes a sense of partnership and support. Moreover, applicant’s mark implies, by
its open-ended structure, that applicant is prepared to take some, unspecified,
action, while registrant’s mark clearly identifies the action registrant proposes to
take – that of assisting its clients in obtaining mortgage loans, which is one such
action suggested by the open-ended nature of applicant’s mark. This similarity of
connotation makes it likely that the marks would be perceived by the relevant
consumer as a series of marks; applicant’s mark as the core brand, and registrant’s
mark as an extension brand, used for lending services. Since, as shown above,
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banks commonly offer both traditional banking services and mortgage lending and
brokerage services, consumers familiar with applicant’s mark will likely perceive
registrant’s mark as a variation in the line of “I WILL” service marks owned by
applicant.
Accordingly, this du Pont factor favors a finding of likelihood of confusion.
C. Purchaser Sophistication
Applicant argues that banking clients are sophisticated, and that “the
reasonably prudent users of mortgage services are more likely to be a [sic]
discriminating purchaser” because home loans typically involve large sums of
money. Brief, p. 5. Even if a current or prospective homeowner would exercise
caution in seeking to refinance or obtain a home loan, there is no evidence that
checking or savings account holders, i.e., applicant’s customers, are particularly
discriminating. The standard of care for purchasing goods is that of the least
sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306
(TTAB 2004). See also, In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690-
91 (Fed. Cir. 1990) (recognizing disparity in purchaser sophistication). Moreover,
even sophisticated purchasers can be confused by similar marks. In Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42
(Fed. Cir. 1990). In addition, the fact that the purchasers may exercise care before
purchasing these services does not mean there can be no likelihood of confusion. In
the present case, the similarity between the marks and the similarity between some
of the services as identified outweigh any sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d,
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Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers,
careful purchasing decision, and expensive goods.)
D. Balancing the factors.
The marks share the words “I WILL.” These are the first two words of the
dominant, literal portion of the cited registration and entirety of applicant’s mark.
The marks create similar commercial impressions; they suggest a company that is
committed to providing a personal touch and to taking an affirmative stance to meet
customer demands. The evidence shows that banks provide both traditional
account services as well as mortgage lending services. Because the marks are
confusingly similar and the services are related, there is a likelihood of confusion
between applicant’s mark and the cited registration, when used in association with
the respective services. To the extent that we may entertain doubt about likelihood
of confusion, that doubt is required to be resolved in favor of the prior registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and
In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984).
Decision: The refusal to register applicant’s mark I WILL is affirmed.