Midland Mortgage Co.

Trademark Trial and Appeal Board

Dec 1, 2004

No. 76296698 (T.T.A.B. Dec. 1, 2004)

Mailed: December 1, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Midland Mortgage Co.
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Serial No. 76296698
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Glen M. Burdick of Dunlap, Codding & Rogers, P.C. for
Midland Mortgage Co.
Georgia Ann Carty, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Midland Mortgage Co. (applicant), an Oklahoma
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark MIDLAND
MORTGAGE (“MORTGAGE” disclaimed) for “financial services,
namely, mortgage origination and servicing of loans for
others.”1 The Examining Attorney has refused registration

1 Application Serial No. 76296698, filed July 18, 2001, based
upon allegations of use since August 31, 1950.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76296698
2
under Section 2(d) of the Act, 15 USC §1052(d), on the
basis of two registrations owned by Midland Loan Services,
L.P. for the marks MIDLAND COMMERCIAL FUNDING (“COMMERCIAL
FUNDING” disclaimed) for “financial services, namely,
commercial mortgage loan program the [sic] originates (via
a network of mortgage bankers and brokers), purchases and
aggregates mortgage loans secured by commercial and multi-
family real estate for sale in securitizations using
capital markets” (Reg. No. 2,213,718, issued December 29,
1998), and MIDLAND LOAN SERVICES (“LOAN SERVICES”
disclaimed) for “financial services, namely, servicing
mortgage loans secured by commercial and multi-family real
estate, originating, purchasing and securitizing mortgage
loans, and asset management for portfolios of commercial
and multi-family real estate owned by third parties,
namely, developing and implementing loan resolution
strategies and resolving problem loans, overseeing and
managing collateral condition and performance, and
liquidating loans and collateral properties” (Reg. No.
2,227,075, issued March 2, 1999). Applicant and the
Examining Attorney have submitted briefs, but no oral
hearing was requested.2

2 With its brief, applicant has submitted a list of 119
applications and registrations of marks containing the word
Serial No. 76296698
3
We affirm.
Briefly, the Examining Attorney contends that the
marks MIDLAND MORTGAGE, MIDLAND COMMERCIAL FUNDING and
MIDLAND LOAN SERVICES are substantially similar in sound,
appearance and commercial impression, because the dominant
part of each mark is the word “MIDLAND,” an arbitrary term
in the financial services field, and because all of these
marks contain less significant descriptive or generic
wording which has been disclaimed. With respect to the
services, the Examining Attorney argues that both
applicant’s and registrant’s services are in the financial
services industry, and that some of the respective services
are identical-—financial services involving mortgages and
loans. Moreover, the Examining Attorney points out that
applicant has not argued that the respective services are
different. Also, the Examining Attorney maintains that
while applicant argues that its services are offered to a
certain class of purchasers, applicant’s description of
services contains no restrictions. Accordingly, the
Examining Attorney argues that registrant may be engaged in

“MIDLAND.” The Examining Attorney has objected to this listing
as untimely. That objection is well taken. See Trademark Rule
2.142(d)(“The record in the application should be complete prior
to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is
filed.”) and In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3
(TTAB 1994).
Serial No. 76296698
4
providing services to the same mortgagors as applicant.
The Examining Attorney also asks us to resolve any doubt in
favor of the prior registrant.
Applicant states that it is in the business of
servicing mortgage loans for large investors such as
financial institutions and insurance companies as well as
private investors. Applicant also refers refinancings and
other services for mortgagors to other financial
institutions. With respect to the marks involved in this
case, it is applicant’s position that all components of the
respective marks must be given equal weight (brief, 5).
Applicant also notes the overall differences in
pronunciation and appearance of the various marks, and
argues that MIDLAND MORTGAGE has a primary meaning
different from the meanings of the registered marks. While
applicant admits that all of these marks are used in the
financial services industry, it is applicant’s position
that applicant does not advertise to the general public but
only to sophisticated and well-informed customers such as
large financial institutions and insurance companies, and
that applicant’s services are purchased only after careful
consideration. Based upon the listings of third-party
applications and registrations of MIDLAND marks (which we
Serial No. 76296698
5
have excluded as untimely), applicant also contends that
the mark MIDLAND is a weak one.
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are 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 [Section] 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.”).
Considering first the marks, it is well settled, of
course, that marks must be considered and compared in their
entireties, not dissected or split into component parts so
that parts are compared with other parts. This is because
it is the entire mark which is perceived by the purchasing
public and, therefore, it is the entire mark that must be
compared to any other mark. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
and Franklin Mint Corp. v. Master Manufacturing Co., 667
Serial No. 76296698
6
F.2d 1005, 212 USPQ 233 (CCPA 1981). However, although the
marks must be compared in their entireties, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985)(“On the other hand, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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 consideration of the marks in
their entireties.”).
Here, the marks MIDLAND MORTGAGE, MIDLAND COMMERCIAL
FUNDING and MIDLAND LOAN SERVICES all prominently include
the word MIDLAND, and all contain additional descriptive or
generic terms, which would be less significant in creating
a commercial impression and in indicating origin.
Moreover, these descriptive and generic words have similar
connotations in the sense that they all identify lending
services. Accordingly, if these marks were used in
connection with related services, confusion would be
likely.
Turning then to a consideration of the respective
services, it is well settled that the registrability of
Serial No. 76296698
7
applicant’s mark must be determined on the basis of the
identification of services set forth in the involved
application and the identification of the services in the
cited registrations. See Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990) and Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Also, it is settled that, absent any specific
limitations in applicant’s or registrant’s identifications
of goods or services, the issue of likelihood of confusion
must be determined by looking at all the usual or normal
channels of trade for the respective goods or services.
See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.
Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983). See also In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
It is also true that the respective services need not
be identical or competitive. They need only be related in
some manner or the circumstances surrounding their
marketing be such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
Serial No. 76296698
8
23 USPQ2d 1795 (TTAB 1992); and Chemical New York Corp. v.
Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB 1986).
Here, there are no restrictions in the identification
of services in applicant’s application, and it would be
improper to read limitations into that identification of
services. Because there are no limitations in the
application relating to the channels of trade or classes of
purchasers, we must presume that applicant’s and
registrant’s services encompass all services of the type
described, and that they move in all normal channels of
trade to all potential customers. See Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, supra.
Here, applicant’s services are mortgage origination
and servicing of loans for others, while registrant’s
services include commercial mortgage loan services and
servicing mortgage loans secured by commercial and multi-
family real estate. The services of both applicant and
registrant could (and, according to applicant, do) involve
the servicing of loans for large financial institutions and
insurance companies. While it is true that these
purchasers may be expected to be sophisticated and
knowledgeable about the purchases they make, we agree with
the Examining Attorney that even sophisticated purchasers
will not be able to distinguish source when the marks
Serial No. 76296698
9
involved are as close as MIDLAND MORTGAGE, MIDLAND
COMMERCIAL FUNDING and MIDLAND LOAN SERVICES. Even if
these purchasers realize that applicant’s mark is slightly
different from the other marks, these purchasers are likely
to believe, in view of the similarities of the marks, that
all of these services are being offered by the same
company, but under slightly different names.
As noted, applicant’s mere listing of third-party
registrations cannot be considered because it was submitted
untimely, and because such a listing does not make the
registrations and applications of record. See JT
Tobacconists, 59 USPQ2d 1080, 1081 n.2 (TTAB 2001); and In
re Duofold Inc., 184 USPQ 638 (TTAB 1974). As the
Examining Attorney noted, copies of those registrations or
the electronic equivalent should have been made of record.
TMEP §710.03. Furthermore, the listing of third-party
registrations which include the word MIDLAND does not
specify the particular goods or services in connection with
which this mark is registered. Also, this listing is not
evidence of use of those registered marks in the
marketplace, and it does not show that the public is
familiar with those marks. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Cir. 1992); and AMF Inc. v. American Leisure Products,
Serial No. 76296698
10
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)(“The
existence of [third party] registrations is not evidence of
what happens in the market place or that customers are
familiar with them...”). Accordingly, the registered marks
have not been shown to be weak. Even if we deem the
protection to be accorded the cited registered marks as
being more limited than that for a totally arbitrary mark,
it still extends to prevent the registration of a mark
which conveys the same commercial impression and which is
used for services which may emanate from a single source.
Finally, any doubt with respect to the issue of
likelihood of confusion must be resolved in favor of the
prior registrant. See In re Hyper Shoppes (Ohio) Inc., 837
F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration under Section
2(d) is affirmed on the basis of the cited registrations.