Max Briggs

Trademark Trial and Appeal Board

Aug 2, 2007

No. 78493404 (T.T.A.B. Aug. 2, 2007)

Mailed:
August 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Max Briggs
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Serial No. 78493404
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Katherine M. Hoffman of Luce, Forward, Hamilton & Scripps
for Max Briggs.

Giselle M. Agosto, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Max Briggs, a Canadian citizen, seeks registration on
the Principal Register of the mark DESERT COMMERCIAL BANK
(in standard character form, “COMMERCIAL BANK” disclaimed)
for “banking services” in International Class 36.1
Registration has been refused under Section 2(d) of the

1 Application Serial No. 78493404, filed October 1, 2004,
alleging a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78493404
2
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with his identified services,
so resembles the registered mark shown below

for “automated teller machine services” in International
Class 36 as to be likely to cause confusion, mistake or
deception.2 The mark includes the wording DCB DESERT
COMMUNITY BANK on the cashbox design and “COMMUNITY BANK”
is disclaimed.
The appeal is fully briefed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544

2 Registration No. 1804747, issued November 16, 1993, renewed.
Serial No. 78493404
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F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We find the services to be legally identical inasmuch
as applicant’s broad identification “banking services”
encompasses registrant’s “automated teller machine
services.” The evidence of record supports this finding.
The examining attorney submitted several third-party use-
based registrations to show that numerous entities have
adopted a single mark for applicant’s “banking services”
and registrant’s “automatic teller machine services.” See,
e.g., Reg. No. 1529695 (CHEVY CHASE for, inter alia,
banking services, namely loan financing services, credit
and loan services, savings and other interest account
services, checking account services...electronic banking,
namely automated teller machine services); Reg. No. 2494690
(BANK OF AMERICA for, inter alia, banking and related
financial services; commercial and consumer lending and
leasing services; automated teller machine services); Reg.
No. 2939449 (BANKUNITED for, inter alia, banking services,
namely, personal and business checking accounts, savings
accounts...automated teller machine services); Reg. No.
2965009 (NORTH FORK for, inter alia, full line of
commercial, personal and municipal banking services;
Serial No. 78493404
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automated teller machine services); Reg. No. 2695267 (OLD
NATIONAL for, inter alia, banking services; automated
teller machine services); Reg. No. 2801838 (WEBSTER for,
inter alia, banking services; automated teller machine
services); Reg. No. 2846648 (SEACOAST COMMERCE BANK for,
inter alia, banking services; automated teller machine
services); Reg. No. 2777978 (FIRST FEDERAL for, inter alia,
banking and related financing services; automated teller
machine services); and Reg. No. 2923122 (PROBIZBANK for,
inter alia, banking; automated teller machine services).
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).
Further, inasmuch as there are no limitations in the
identification of services, we must presume that the
services will be offered in some of the same channels of
trade, and will be used by some of the same purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In this connection,
it is common knowledge that automated teller machines are
frequently attached to banks, and consumers may use an
automated teller machine as an alternative to going inside
the bank to deposit or withdraw money. In view of the
above, the du Pont factors of the similarity of the
Serial No. 78493404
5
services and the channels of trade favor a finding of
likelihood of confusion as to the cited registration.
Applicant has attempted in his November 7, 2005
response to the first Office action to limit the trade
channels by arguing that his services target “primarily
corporate consumers who require capital funding for their
businesses” and noting that automatic teller machines (ATM)
are often not located inside a bank building and are used
“by individuals who may be seeking to quickly obtain a
small sum of money for short-term expenditures, or to
deposit a personal check.” Response filed November 7,
2005. However, banking services encompass ATM services and
ATMs are also located inside banks. Moreover, there are no
limitations as to the types of customers or trade channels
in the application or registration. That is, applicant has
identified his services as “banking services” generally.
With regard to the conditions of sale, we note that
banking and ATM services can range from general day-to-day
transactions to highly sophisticated financial
transactions. Applicant argued in his November 7, 2005
response to the examining attorney’s first Office action
that his purchasers “are primarily corporate clients” and
applicant’s and registrant’s consumers are “likely to be
highly sophisticated...[b]ecause the services at issue
Serial No. 78493404
6
involve finances, whether owned by an individual ATM
consumer or being sought as a loan by a corporate consumer”
and they will not purchase services on impulse. We first
note that we must consider all potential customers,
including the less sophisticated banking customers. In re
Bercut-Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986)
(average ordinary wine consumer must be looked at in
considering source confusion). Second, even the more
sophisticated banker consumers would not be immune from
source confusion. In re Decombe, 9 USPQ2d 1812 (TTAB
1988).
We now consider whether applicant’s mark, DESERT
COMMERCIAL BANK and the mark in the cited registration,
DESERT CASHBOX DCB COMMUNITY BANK (and design), are similar
or dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
In making this determination we recognize that where the
goods or services are virtually identical, “the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506
U.S. 1034 (1992).
Serial No. 78493404
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Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980). We must determine whether the marks
are sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Clearly, the word DESERT is the dominant element in
applicant’s mark given the highly descriptive nature of the
other two disclaimed words COMMERCIAL BANK. There is no
question that DESERT is the source-identifying element in
applicant’s mark. Similarly, in registrant’s mark the word
DESERT is in a prominent position and certainly dominates
over the design and the wording DCB DESERT COMMUNITY BANK
displayed in extremely small script. While the word
CASHBOX could perhaps be somewhat suggestive of
registrant’s ATM services, it does serve a source-
Serial No. 78493404
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identifying function. However, we believe that, coming in
the first position, it is the word DESERT in registrant’s
mark that will leave the first and stronger impression in
the consumer’s mind. Further, in view of the respective
services, DESERT CASHBOX could be viewed as a variant of
applicant’s mark DESERT COMMERCIAL BANK, serving as the
mark for his ATM services. In short, because of the
dominance of the word DESERT in both marks we find that the
marks are similar in sound, appearance and connotation, and
have the same overall commercial impression.
In making our determination we have considered
applicant’s argument that the term DESERT in both marks is
weak and as such cannot be the dominant part of
registrant’s mark in view of widespread third-party use of
the term DESERT. In support of his argument, applicant
submitted hit list summaries from various Internet search
engines and printouts of third-party registrations from the
USPTO’s Trademark Application and Registrations Retrieval
(TARR) system. We first note that it is well settled that
third-party registrations are not evidence of use in the
marketplace and thus have little probative value on this
issue. Second, search summaries are generally too
truncated to provide sufficient information about the use
of a particular term. In re Fitch IBCA, Inc., 64 USPQ2d
Serial No. 78493404
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1058, 1060 (TTAB 2002). We further note that these search
summaries and third-party registrations are for a wide
variety of goods and services that have no bearing on the
question of the strength of the term DESERT in connection
with banking and ATM services. A review of the voluminous
documents submitted by applicant reveals what appear to be
a total of three third-party banks that include the word
DESERT in their respective names: Palm Desert, Mohave
Desert and Desert Hills.3 The addition of modifying terms
to the word Desert sets these examples apart from the marks
before us and, moreover, the search summaries are too
limited to show whether these banks are still in existence
and the extent of their use of these terms.
Even assuming DESERT is suggestive of the respective
locations of the services and, thus, afforded a somewhat
lesser scope of protection, given that we have legally
identical services which may be purchased without a high
degree of care by some consumers, and a similar connotation
that directs consumers to a regional source without
distinguishing modifiers (e.g., Palm Desert) the protection
afforded this mark certainly encompasses these

3 There are many examples that appear to reference registrant,
DESERT COMMUNITY BANK, and a few reference applicant DESERT
COMMERICAL BANK.
Serial No. 78493404
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circumstances. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) (even a weak
mark is entitled to protection against the registration of
a similar mark for closely related goods or services).
In conclusion, we find that because of the legally
identical services, the overlap in the trade channels, and
the similarities in the marks, confusion is likely between
applicant’s mark and the mark in the cited registration.
To the extent there are any doubts, we resolve them, as we
must, in registrant’s favor. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.