NODUS International Bank Inc.

Trademark Trial and Appeal Board

Jun 30, 2020

88033302 (T.T.A.B. Jun. 30, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: June 18, 2020 Mailed: June 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re NODUS International Bank Inc.
_____

Serial Nos. 88033302, 88033653, 88034989
_____

Carmen I. Balleste Frank of Sosa Llorens & Cruz Neris, Asociados, LLP,1
for NODUS International Bank Inc.
Mariam Aziz Mahmoudi, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.2
_____

Before Cataldo, Greenbaum and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
NODUS International Bank Inc. (“Applicant”) seeks registration on the Principal
Register of the following marks:
NODUSBANK (in standard characters) for:
Banking; Banking and financing services; Banking consultation;
Banking services; Banking services featuring the provision of
certificates of deposit; Banking services provided by mobile telephone
connections; ATM banking services; Electronic banking via a global
computer network; Financial services, namely, funding online cash

1 Bettina Font Nicole represented Applicant at oral hearing.
2 Daniel Brody represented the USPTO at oral hearing.
Serial Nos. 88033302, 88033653, 88034989

- 2 -
accounts from prepaid cash cards, bank accounts and credit card
accounts; Home banking; Investment banking services; Issuance of bank
checks; Merchant banking and investment banking services; Merchant
banking services; Mortgage banking; Mortgage banking services,
namely, origination, acquisition, servicing, securitization and brokerage
of mortgage loans; Mortgage services, namely, buyer pre-qualification of
mortgages for mortgage brokers and banks; On-line banking services;
On-line banking services featuring electronic alerts that alert credit and
debit card users when a single transaction exceeds a certain amount;
Online banking; Online banking services accessible by means of
downloadable mobile applications; Providing banking information;
Providing a website featuring information in the field of banking;
Savings bank services; Telephone banking services in International
Class 36.3
(“International” disclaimed) for:
Bank tendering, namely, tendering of money; Banking; Banking and
financing services; Banking consultation; Banking services; Banking
services featuring the provision of certificates of deposit; Banking
services provided by mobile telephone connections; ATM banking
services; Electronic banking via a global computer network; Financial
services, namely, funding online cash accounts from prepaid cash cards,
bank accounts and credit card accounts; Home banking; Investment
banking services; Investment banking services in the field of Employee
Stock Ownership Plans (ESOP); Issuance of bank checks; Merchant
banking and investment banking services; Merchant banking services;
Mortgage banking; Mortgage banking services, namely, origination,
acquisition, servicing, securitization and brokerage of mortgage loans;
Mortgage services, namely, buyer prequalification of mortgages for
mortgage brokers and banks; On-line banking services; On-line banking
services featuring electronic alerts that alert credit and debit card users
when a single transaction exceeds a certain amount; Online banking;
Online banking services accessible by means of downloadable mobile
applications; Providing banking information; Providing a website

3 Application Serial No. 88033302 (the “‘302 Application”) filed on July 11, 2018, under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use
anywhere and use in commerce since at least as early as February 1, 2010.
Serial Nos. 88033302, 88033653, 88034989

- 3 -
featuring information in the field of banking; Telephone banking
services in International Class 36.4
NODUSONLINE (in standard characters) for:
Bank tendering, namely, tendering of money; Banking; Banking and
financing services; Banking consultation; Banking services; Banking
services featuring the provision of certificates of deposit; Banking
services provided by mobile telephone connections; ATM banking
services; Electronic banking via a global computer network; Home
banking; Investment banking services; Investment banking services in
the field of Employee Stock Ownership Plans (ESOP); Issuance of bank
checks; Merchant banking and investment banking services; Merchant
banking services; Mortgage banking; Mortgage banking services,
namely, origination, acquisition, servicing, securitization and brokerage
of mortgage loans; Mortgage services, namely, buyer pre-qualification of
mortgages for mortgage brokers and banks; On-line banking services;
On-line banking services featuring electronic alerts that alert credit and
debit card users when a single transaction exceeds a certain amount;
Online banking; Online banking services accessible by means of
downloadable mobile applications; Providing bank account information
by telephone; Providing banking information; Providing a website
featuring information in the field of banking; Savings bank services;
Telephone banking services in International Class 36.5
The Trademark Examining Attorney refused registration under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), on the ground that each of Applicant’s marks, as
applied to the services identified in the applications, so resembles the following marks

4 Application Serial No. 88033653 (the “‘653 Application”) filed on July 11, 2018, under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use
anywhere and use in commerce since at least as early as February 1, 2010. The mark is
described in the ‘653 Application as follows: “The color(s) blue, light blue, dark blue and gray
is/are claimed as a feature of the mark. The mark consists of the design of a trefoil knot with
the left part of the knot in light blue, the right part of the knot in blue and the top part of the
knot in dark blue; the wording ‘NODUSBANK’ appears below the design with the ‘NODUS’
portion in dark blue and the ‘BANK’ portion in blue; the word ‘International’ appears in gray
below the wording ‘NODUSBANK’.”
5 Application Serial No. 88034989 (the “‘989 Application”) filed on July 12, 2018, under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use
anywhere and use in commerce since at least as early as January 1, 2018.
Serial Nos. 88033302, 88033653, 88034989

- 4 -
registered on the Principal Register as to be likely to cause confusion, to cause
mistake, or to deceive:
NODUS (as a typed drawing) for:
Computer software for use in electronic payment processing and credit
card payment processing (excluding computer software for processing
on-line payment in the trucking industry) in International Class 9, and
Computer software consultation; customization of computer software;
installation of computer software; maintenance of computer software;
technical support services, namely, troubleshooting of computer
software problems in International Class 42;6 and
NODUS (in standard characters) for:
Computer software for processing electronic payments and credit card
payments, excluding for processing on-line payment in the trucking
industry; computer software for supply planning, allocation, assortment
and replenishment, for revenue management, and for merchandise
management in the entire retail demand chain; computer software for
managing, mining, analyzing and reporting business data, verifying
prices, ordering stock, and operating retail stores and warehouses and
Internet online web stores and warehouses; computer software for
disseminating advertising and promotional materials for others;
computer software for accessing and transmitting retailer and supplier
product data via the Internet; computer software for supply planning,
allocation, assortment and replenishment, for revenue management,
and for merchandise management in the field of online retail stores and
the entire web store demand chain in International Class 9, and
Application service provider (ASP) featuring software for processing
electronic payments and credit card payments, excluding for processing
on-line payment in the trucking industry; application service provider
(ASP) featuring software for supply planning, allocation, assortment
and replenishment, for revenue management, and for merchandise
management in the entire retail demand chain; application service

6 Registration No. 2876650 (the “‘650 Registration”), issued Aug. 24, 2004; renewed. Prior to
November 2, 2003, “standard character” marks were known as “typed” drawings. A typed
mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”).

Serial Nos. 88033302, 88033653, 88034989

- 5 -
provider (ASP) featuring software for managing, mining, analyzing and
reporting business data, verifying prices, ordering stock, and operating
retail stores and warehouses and Internet online web stores and
warehouses; application service provider (ASP) featuring software for
disseminating advertising and promotional materials for others;
application service provider (ASP) featuring software for accessing and
transmitting retailer and supplier product data via the Internet;
application service provider (ASP) featuring software for supply
planning, allocation, assortment and replenishment, for revenue
management, and for merchandise management in the field of online
retail stores and the entire web store demand chain; computer software
consultation; customization of computer software; installation of
computer software; maintenance of computer software; technical
support services, namely, troubleshooting of computer software
problems in International Class 42.7
When the refusal was made final in each application, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. Applicant and the Examining Attorney
submitted briefs and appeared for an oral hearing. We affirm the refusal to register
as to all three applications.
I. Preliminary Issues
Before proceeding to the merits of the refusals, we address three preliminary
matters.8

7 Registration No. 3637558 (the “‘558 Registration”), issued Jun. 16, 2009; renewed.
8 Applicant and the Examining Attorney made of record nearly identical evidentiary
materials during the prosecution of all three applications. Applicant filed nearly identical
briefs in all three appeals. The Examining Attorney filed a consolidated brief for the three
appeals, and Applicant filed a consolidated reply brief. Our citations herein are to the
evidentiary record and briefs concerning the ‘302 Application unless otherwise indicated.
Page references herein to the application records 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. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d
1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal refer to the Board’s
Serial Nos. 88033302, 88033653, 88034989

- 6 -
A. Consolidation
As noted above, Applicant has filed ex parte appeals to the Board in three co-
pending applications. These appeals present common questions of law and fact and
the records are substantially similar. Therefore, in the interest of judicial economy,
we sua sponte consolidate the cases and decide them in this single opinion. See, e.g.,
In re S. Malhotra & Co., 128 USPQ2d 1100, 1102 (TTAB 2018) (Board sua sponte
consolidated two appeals); In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012)
(Board sua sponte consolidated two appeals).
B. Contingent Request to Amend Identification of Services
In a footnote to Applicant’s response to the first Office Action, Applicant’s Request
for Reconsideration and Applicant’s Brief,9 Applicant states its belief that a
restriction to Applicant’s Identification of Services to limit them to “international
banking” is not merited, but expresses a willingness to provide such an amendment
if the Examining Attorney requests or requires it.10
However, in none of the three applications now on appeal did Applicant submit a
proposed amendment to the Identification of Services, considering it unnecessary, but
merely indicated a willingness to amend the Identification. Applicant argues the
substance of the appeal based on its proposed Identification of Services, suggesting a

TTABVUE docket system. Before the TTABVUE designation is the docket entry number; and
after this designation are the page references, if applicable.
9 Applicant’s Response to Office Action of April 16, 2019 at TSDR 15 n. 4; Applicant’s
Response to Office Action of November 7, 2019 at TSDR 19 n.4; and Applicant’s Brief, 15
TTABVUE 27 n.8.
10 Applicant repeats these statements in its Reply Brief. 18 TTABVUE 10.
Serial Nos. 88033302, 88033653, 88034989

- 7 -
limitation to “international banking”. Had Applicant filed the proposed amendment
in its Request for Reconsideration before filing its Notice of Appeal, or in a separately
captioned Request for Remand before filing its brief, this issue could have been
resolved prior to the issuance of this final decision.
Pursuant to Trademark Rule 2.141(g), 37 C.F.R. § 2.141(g), once the Board has
considered and decided an appeal, prosecution of the involved application will not be
reopened for consideration of an amendment, except in a very limited situation not
present here. The Board will not entertain amendments to the Identifications of
Services at this late stage of proceedings or remand for consideration of such an
amendment. The present Identifications of Services reproduced above in the involved
applications are operative for purposes of these appeals. Applicants before the Board
are therefore strongly encouraged to follow the preferred practice described above in
order to ensure the orderly administration of ex parte appeals.
C. Materials Attached to Applicant’s Appeal Briefs
Applicant attached to its appeal briefs what appears to be the same exhibits it
already submitted with its Requests for Reconsideration; the Board discourages this
practice. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011) (the
Board discourages attaching material previously made of record to briefs); In re
SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching as
exhibits to brief material already of record requires Board to determine whether
attachments had been properly made of record and adds to the bulk of the file).
To the extent Applicant attached to its appeal briefs any additional materials not
already made of record during prosecution, we do not consider them. The evidentiary
Serial Nos. 88033302, 88033653, 88034989

- 8 -
record in an application should be complete prior to the filing of an ex parte appeal to
the Board. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re I-Coat Co., 126
USPQ2d 1730, 1734-35 (TTAB 2018); TBMP § 1203.02(e) (June 2020) (“Exhibits
attached to a brief that were not made of record during examination are untimely,
and generally will not be considered.”).
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).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect registrants from damage caused by registration of confusingly similar
marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331
(1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163
(1995); DuPont, 177 USPQ at 566.
Serial Nos. 88033302, 88033653, 88034989

- 9 -
Varying weights may be assigned to each DuPont factor 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”). Two key considerations are the
similarities between the marks and the relatedness of the goods and services. See In
re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”)).
III. Analysis
We now consider the arguments of Applicant and the Examining Attorney in view
of applicable law and the evidence of record. The likelihood of confusion factors
Applicant focused on in these appeals are the similarity or dissimilarity of the marks,
the relatedness of the goods and services associated with each mark, the channels of
trade and prospective purchasers therefor, the sophistication of the relevant
purchasers, and the claimed absence of actual confusion.
A. The Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and the Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir.
Serial Nos. 88033302, 88033653, 88034989

- 10 -
2018); “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” In re i.am.symbolic, llc, 123 USPQ2d at 1748. “The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks.” In re Assoc. of the U.S. Army, 85 USPQ2d 1264,
1268 (TTAB 2007).
Regarding the NODUSBANK mark of the ‘302 Application, Applicant argues that:
The additional unshared terms [sic] BANK, changes the meaning and
connotation of Applicant’s mark, further projecting the differences
between the commercial impressions conveyed by the marks. The
unshared term, “BANK”, clearly modifies the shared term, NODUS,
giving context and meaning to the other terms. Notably, the cited marks
lack the word “BANK”, [the] element that forms an essential part of
Applicant’s mark and is an important identifier of its services and source
as an international banking institution. It is precisely the inclusion of
these source-identifying elements what [sic] creates a total different
impression and effect of the designation. Therefore the marks are
significantly different in appearance sound and meaning to avoid
confusion.11
As to the NODUSBANK INTERNATIONAL & Design mark of the ‘653
Application, Applicant argues that:
[E]ven though the term INTERNATIONAL is disclaimed in Applicant’s
mark, it cannot be ignored in the analysis of the dissimilarity of the
marks. … Applicant’s design mark is a composite mark, while the
cited mark is only one word. Applicant’s mark is 2 times longer than the
cited mark in both appearance and sound as well through its visual

11 Applicant’s Brief re the ‘032 Application, 15 TTABVUE 26.
Serial Nos. 88033302, 88033653, 88034989

- 11 -
depiction creates a separate and different impression. The additional
unshared terms INTERNKDONAL, BANK, changes the meaning and
connotation of Applicant’s mark, further projecting the differences
between the commercial impressions conveyed by the marks. The
unshared terms, “INTERNATIONAL”, “BANK”, as well as the design
modifies the shared portion, NODUS, giving context and meaning to the
other terms. Notably, the cited marks lack the words
INTERNATIONAL, and BANKING elements, that forms an essential
part of Applicant’s mark and is an important identifier of its services
and source as an international banking institution. It is precisely the
inclusion of these source-identifying elements as well as the distinctive
design which creates a totally different commercial impression than
the [NODUS] mark. The design has additional elements such as the
trefoil know [sic] in different shades of blue that create an overall
distinctive commercial impression very different from the [NODUS]
mark. … Therefore, the marks are significantly different in appearance
sound and meaning to avoid confusion.12
Concerning the NODUSONLINE mark of the ‘989 Application, Applicant argues
that:
The additional unshared term [ONLINE], changes the meaning and
connotation of Applicant’s mark, further projecting the differences
between the commercial impressions conveyed by the marks. The
unshared term “[ONLINE]”, clearly modifies the shared term, NODUS,
giving context and meaning to the other terms. Notably, the cited marks
lack the word “[ONLINE]”, element that forms an essential part of
Applicant’s mark and is an important identifier of its services and source
as an international banking institution. It is precisely the inclusion of
these source-identifying elements what [sic] creates a totally different
impression and effect of the designation. Therefore, the marks are
significantly different in appearance sound and meaning to avoid
confusion.13
With respect to all three applications, the Examining Attorney argues:
In this case …, applicant’s marks “NODUSBANK,” “NODUSBANK
INTERNATIONAL,” and “NODUSONLINE” and the registrant’s mark
“NODUS” are highly similar in sound, appearance, connotation and

12 Applicant’s Brief re the ‘653 Application, 15 TTABVUE 26-27.
13 Applicant’s Brief re the ‘989 Application, 15 TTABVUE 26.
Serial Nos. 88033302, 88033653, 88034989

- 12 -
commercial impression. The marks are identical in part in that they all
contain the term “NODUS.”

* * *
Applicant has merely added the terms “BANK,” “BANK
INTERNATIONAL,” and “ONLINE” to registrant’s marks. Adding a
term to a registered mark generally does not obviate the similarity
between the compared marks, as in the present case, nor does it overcome
a likelihood of confusion …

* * *
[T]he added terms “BANK,” “INTERNATIONAL,” and “ONLINE” in the
applied-for marks are merely descriptive of or generic for applicant’s
services. Specifically, these terms merely indicate that: 1) applicant is a
business establishment where money is kept for saving, commercial, or
investment purposes or is supplied for loans or exchanged; 2) the various
banking services extend across or transcend national boundaries; and 3)
the services are accessible or facilitated by means of a computer or
computer network. Furthermore, the term “INTERNATIONAL” has
been disclaimed in the respective application. Thus, these terms are less
significant in affecting the marks’ commercial impressions, and renders
the shared term “NODUS” the more dominant element of the marks. …
Moreover, the term “NODUS” is the first term in applicant’s marks.

* * *
With respect to the design element in the mark in Application Serial No.
88033653 …, the presence of the design element does not obviate a
finding of likelihood of confusion. … When evaluating a composite mark
consisting of words and a design, the word portion is normally accorded
greater weight because it is likely to make a greater impression upon
purchasers, be remembered by them, and be used by them to refer to or
request the goods and/or services.14
Neither Applicant nor the Examining Attorney introduced a dictionary definition
of the term “NODUS” into the record. “NODUS” is a noun defined as “complication,

14 Examiner’s Brief, 17 TTABVUE 7-9.
Serial Nos. 88033302, 88033653, 88034989

- 13 -
difficulty.”15 We do not imagine that Applicant or the Registrant would want the
dictionary definition of NODUS to be associated with its products or services, and
there is no evidence of record that the relevant consuming public makes or would
make such an association.
Because NODUS therefore has no inherent meaning in connection with, or
relationship to, the goods or services of either Applicant or Registrant, we find this
term to be arbitrary and functions as a source identifier in Applicant’s and the
Registrant’s marks. See, e.g., Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372
F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as “a
known word used in an unexpected or uncommon way” and observing that such
marks are typically strong).
If, as in this case, a significant (or dominant) portion of both marks is the same
(the term “NODUS”), then the marks may be similar notwithstanding some
differences. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming the Board’s finding that
applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered
marks LION CAPITAL and LION, and that the noun LION was the dominant part
of both parties’ marks).

15 Https://www.merriam-webster.com/dictionary/nodus. The Board may take judicial notice
of dictionary definitions, including online dictionaries that exist in printed format. In re
Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d
1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial Nos. 88033302, 88033653, 88034989

- 14 -
The Examining Attorney made of record definitions of the term “BANK” as “[a]
business establishment in which money is kept for saving or commercial purposes or
is invested, supplied for loans, or exchanged”, or “[t]he offices or building in which
such an establishment is located.”16 Applicant made of record a similar definition.17
In connection with the ‘653 Application, the Examining Attorney made of record
definitions of the term “INTERNATIONAL” as “[o]f, relating to, or involving two or
more nations” or “[e]xtending across or transcending national boundaries.”18
Applicant made of record an article titled “How International Banking Works,” which
states that “international banks lend and borrow on international markets” and “also
make it easier for a company with an international presence to do business around
the world.”19
In connection with the ‘989 Application, the Examining Attorney made of record
definitions of the term “ONLINE” as “[c]onnected to a central computer or to a
computer network”, “[a]ccessible via a computer or computer network” and
“[c]onducted or facilitated by means of a computer network”.20 Applicant made of
record the definition of “ONLINE BANKING” as “allow[ing] a user to conduct

16 Office Action of October 31, 2018, at TSDR 12-13.
17 Request for Reconsideration of November 7, 2019, at TSDR 62: “A bank is a financial
institution licensed to receive deposits and make loans. Banks may also provide financial
services, such as wealth management, currency exchange, and safe deposit boxes. There are
two types of banks: commercial/retail banks and investment banks. In most countries, banks
are regulated by the national government or central bank.”
18 Office Action of October 31, 2018 re the ‘653 Application, at TSDR 33-34
19 Request for Reconsideration of November 7, 2019, at TSDR 64-65.
20 Office Action of October 31, 2018 re the ‘989 Application, at TSDR 30-32.
Serial Nos. 88033302, 88033653, 88034989

- 15 -
financial transactions via the Internet”, “also known as internet banking or web
banking.”21
Applicant describes itself as “an international banking entity” whose objective is
to provide “banking services … in a technologically advanced … environment” to
“facilitate the management of … [its client’s] cash and investments ….”22 Thus, as
argued by the Examining Attorney, the added terms “BANK,” “INTERNATIONAL,”
and “ONLINE” in the applied-for marks are merely descriptive of or generic for
Applicant’s services. Descriptive or generic matter (such as “BANK” in the ‘302 and
‘653 Applications, “ONLINE” in the ‘989 Application, and the disclaimed term
“INTERNATIONAL” in the ‘653 Application) has less significance in likelihood of
confusion determinations. See 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.’”) (quoting In re Nat’l Data, 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985)).
Applicant’s argument that the terms “BANK,” “INTERNATIONAL,” and
“ONLINE” in the applied-for marks distinguish them from the Registrant’s NODUS
mark is not well taken. In fact, the general rule suggests the opposite. Likelihood of
confusion is not necessarily avoided between otherwise confusingly similar marks
merely by adding terms that are descriptive or suggestive of the respective services.

21 Request for Reconsideration of November 7, 2019, at TSDR 66.
22 Id., at TSDR 21.
Serial Nos. 88033302, 88033653, 88034989

- 16 -
See In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004) (“Viewed in their entireties with non-dominant features appropriately
discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD
for tequila] become nearly identical.”); In re J.M. Originals Inc., 6 USPQ2d 1393, 1395
(TTAB 1987) (holding JM ORIGINALS (with ORIGINALS disclaimed) for various
items of apparel, and JM COLLECTABLES for sport shirts, likely to cause confusion).
The font styling of the literal portions, and presence of the trefoil knot design, in
the NODUSBANK INTERNATIONAL & Design mark of the ‘653 Application also
does not distinguish this mark from the Registrant’s NODUS mark. The Registrant’s
standard character mark NODUS could appear in the same font as Applicant’s mark
of the ‘653 Application, resulting in a similar appearance. See In re Viterra, 101
USPQ2d at 1909 (holding that the specific font style of a mark cannot serve as the
basis to distinguish it from a mark in standard character form). That Applicant’s
mark includes a design element is of diminished importance because, “the verbal
portion of the mark is the one most likely to indicate the origin of the goods [or
services] to which it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co., KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 21 USPQ 198, 200 (Fed.
Cir. 1983)). Also, greater weight is often given to the wording because it is what
purchasers would use to refer to or request the goods or services. See, e.g., In re
Viterra, Inc., 101 USPQ2d at 1911.
Serial Nos. 88033302, 88033653, 88034989

- 17 -
We therefore find that Applicant’s applied-for marks and the Registrant’s NODUS
mark appear and sound similar in that they share the arbitrary and dominant term
“NODUS,” notwithstanding the addition of the descriptive or generic terms “BANK”,
“INTERNATIONAL” and/or “ONLINE” in Applicant’s marks or the font style and
design element in the mark of the ‘653 Application. We also find that the respective
marks have similar overall commercial impressions. The first DuPont factor,
therefore, favors a finding that confusion is likely.
B. The Similarity or Dissimilarity and Nature of the Goods and
Services

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.…” DuPont, 177
USPQ at 567. “This factor considers whether ‘the consuming public may perceive [the
respective goods and services of the parties] as related enough to cause confusion
about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)).
“Likelihood of confusion must be found as to the entire class [of services identified]
… if there is likely to be confusion with respect to any service that comes within the
recitation of services in that class.” Primrose Retirement Cmtys., LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
The goods and/or services need not be identical or even competitive to find a
likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
Serial Nos. 88033302, 88033653, 88034989

- 18 -
56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner
and/or if the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that [the goods and/or services] … emanate from 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)).
Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods and services are used by the same
purchasers; advertisements showing that the relevant goods and services are
advertised together or sold by the same manufacturer or dealer; or copies of use-based
registrations of the same mark for both Applicant’s services and the goods and
services listed in the cited registrations. See, e.g., In re Davia, 110 USPQ2d at 1817
(finding pepper sauce and agave related where evidence showed both were used for
the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores).
As evidence of product relatedness, the Examining Attorney made of record copies
of thirteen third-party use-based registrations, each depicting the same mark for both
Applicant’s services and the goods or services listed in the cited registrations.23
Although such registrations are not evidence that the registered marks are in use or

23 Third-party registrations made of record with the Office Action of October 31, 2018 at TSDR
14-31; and the Office Action of May 8, 2019 at TSDR 55-66.
Serial Nos. 88033302, 88033653, 88034989

- 19 -
that the public is familiar with them, they nonetheless have some probative value to
the extent that they serve to suggest that the goods and services identified in those
registrations are of a kind which may emanate from a single source under a single
mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The Examining Attorney also provided captures from nine websites showing, at
each site, that the same-named banking entity offers both Applicant’s services and
the goods or services listed in the cited registrations (or, if offered under a different
mark, that mark is displayed in significantly diminished prominence and relative size
in relation to the name of the banking entity). In particular, the Examining Attorney
made of record captures from the websites of Wells Fargo, Chase, City Bank, Bank of
America, PNC, Citi, M&T Bank, US Bank and SunTrust.24 Evidence of third-party
use of the same mark for an applicant’s identified services (or similar services) on the
one hand, and a registrant’s identified goods and services (or similar goods and
services) on the other, may establish a relationship between those goods and services.
In re Detroit Ath., 128 USPQ2d at 1051; see also In re C.H. Hanson Co., 116 USPQ2d
1351, 1355-56 (TTAB 2015). We find the third-party registration evidence and the
third-party banking website evidence together amply demonstrate the relatedness of
Applicant’s services and the Registrant’s goods and services.
The Examining Attorney summarizes the USPTO’s arguments regarding product
and service relatedness as follows:

24 Captures of third-party banking websites made of record with the Office Action of May 8,
2019 at TSDR 7-51; and the Office Action of November 25, 2019.
Serial Nos. 88033302, 88033653, 88034989

- 20 -
[A]pplicant’s various banking services and registrant’s software goods
and services used for processing electronic payments are very closely
related, because they will travel through the same channels of trade to
the same consumers under circumstances that could give rise to the
mistaken belief that the goods and services emanate from a common
source. In addition, the goods and services are complementary, making
it highly likely that they will be used together.

* * *
[T]he evidence of record consists of a combination of on-point, use based
third-party registrations and third-party website evidence from several
banks which establishes that the same entity commonly provides the
relevant goods and services and markets the goods and services under
the same mark through the same trade channels and for use by the same
classes of consumers in the same fields of use. In addition, this evidence
shows that the goods and services are complementary in that they are
used together and purchased by the same purchasers for the same or
related purposes. Specifically, traditional banking and merchant
banking services are now offered or facilitated through the use of a
bank’s downloadable or online nondownloadable software solution.25
Applicant challenges the Examining Attorney’s evidence and argument as follows:
Applicant is an international banking entity (“'IBE”) organized, licensed
and existing pursuant to the laws of the Commonwealth of Puerto Rico.
As such, Applicant is a banking institution, the operations of which are
based on financial intermediation, that is, the acceptance of deposits,
transfer of moneys and the extension of credit. Accordingly, Applicant’s
customers seek this particular entity to carry out financial transactions,
such as depositing funds, making payments to third parties, obtaining
loans, requesting letters of credit, etc. Furthermore, Applicant is a
highly specialized type of banking institution: it is an international or
“offshore” bank. This means that its customers correspond to a
specialized and very well delimited group of clients that seek to
effectuate international financial transactions. Actually, Applicant
operates under a specific statute that limits its operations to serving
“international” customers.

* * *

25 Examiner’s Brief, 17 TTABVUE 11, 15.
Serial Nos. 88033302, 88033653, 88034989

- 21 -
The relationship between Applicant and its customers is governed by
highly sophisticated processes and contractual relationships that clearly
dispel any likelihood of confusion. … Customers that need to open a
deposit account, apply for loans or make payments to third parties will
not confuse the mark that identifies the bank providing said banking
services with a mark that represents software and applications.

* * *

[T]he user [of the services listed in the cited registrations] is a
businessperson or entity that must license or buy the software for the
particular needs of its business and engage in a contractual relationship
with Registrant to use the product and the services. The software ([in
Class] 009) and consultation services ([in Class] 042) are specifically
tailored to the business needs of each client, who undergo training on
how to use the software, applications and other technological tools.

* * *

[T]he Examining Attorney is erroneously equating banking services
with “payment processing”. The electronic “processing” of payments is
not a banking transaction. It is an electronic process of compiling
information for each payment transaction, including the identification
of each payee and payor and their respective banks, the identification of
their respective account numbers and the date and dollar amounts of
the payment. This information is compiled, organized and submitted
(i.e., “processed”) following standard and uniform formats. These are
distinguishable and separate from the “banking” services of actually
crediting and debiting deposit accounts, thus actually transferring
money between banks.

* * *

These are different and separate services and processes, even if they
interact and communicate amongst them. Applicant and its marks
pertain to the banking services and not to processing, while the owner
of the cited registrations deals with the processing and not the banking
services. The fact that both “banking services” and “payment processing
services” rely on electronic technology and software does not equate one
with the other.26

26 Applicant’s Brief, 15 TTABVUE 13-14, 16, 19-20.
Serial Nos. 88033302, 88033653, 88034989

- 22 -
There are several problems with Applicant’s arguments, factually and legally. To
begin, Applicant practically glosses over the thirteen third-party registrations the
Examining Attorney made of record wherein the same mark is registered for
traditional banking services and payment processing services – except to argue that
the registrations are not probative evidence of actual use in commerce and that
the recited services are not the same.27 Applicant’s argument misses the point. The
Examining Attorney made this evidence of record to show that these services could
be offered by the same source under the same mark.
Applicant also criticizes the Examining Attorney’s third-party banking website
evidence demonstrating that payment processing services are offered by institutions
that provide traditional banking services.28 Applicant’s argument is that payment
processing services on some of these third-party banking sites are offered under
different marks to identify these services. As noted above, to the extent the payment
processing services are offered under a different mark, that mark is displayed in
significantly diminished prominence and relative size in relation to the name of the
banking entity. To the user taking advantage of the services, it appears quite clear
on the websites that the entity with whom the user is dealing is the bank, not the
owner of the other (different) mark.
Applicant’s arguments also do not address that all three of its Applications recite
“merchant banking” as part of the Identification of Services. According to the

27 Applicant’s Brief, 15 TTABVUE 16.
28 Id.
Serial Nos. 88033302, 88033653, 88034989

- 23 -
definitions of “merchant services” and “merchant service provider” that Applicant
itself made of record:
Merchant services is a category of financial services in the United States
that is used by businesses. Merchant services are authorized financial
services that allow a business to accept credit card or bank debit card
transactions using online ordering or point of sales systems. To use
merchant services, a US-business must obtain a merchant account to
accept customer credit card and electronic payments through an
electronic commerce Web site. … A commonly associated term is
Merchant Service Provider (MSP) the name used to describe a company
or organization that will provide transaction processing solutions to
merchants.
In keeping with the above definition of “merchant services,” all of the third-party
banking websites the Examining Attorney made of record use the terms “merchant
services” and “payment processing” or “processing of transactions” synonymously.
Thus, according to its own Identification of Services, Applicant itself offers traditional
banking services and merchant services or payment processing services under its own
marks.
Aside from what is factually shown by the evidence of record, Applicant’s
arguments are contrary to our precedent regarding the relatedness of goods and/or
services for likelihood of confusion purposes. That is, the issue is not likelihood of
confusion between particular goods and/or services, as Applicant argues, but rather
likelihood of confusion as to the source or sponsorship of those goods and services. In
re Majestic Distilling, 65 USPQ2d at 1205; In re Shell Oil, 26 USPQ2d at 1689. The
goods and/or services need not be identical or even competitive to find a likelihood of
confusion. See On-line Careline, 56 USPQ2d at 1475; Recot, 54 USPQ2d at 1898. They
need only be “related in some manner and/or if the circumstances surrounding their
Serial Nos. 88033302, 88033653, 88034989

- 24 -
marketing are such that they could give rise to the mistaken belief that services …
emanate from the same source.” Coach Servs., 101 USPQ2d at 1722.
Moreover, determining the similarity and relatedness of goods and/or services is
based on the description of the goods and/or services in the applications and
registrations at issue, not on extrinsic evidence of actual use. See Stone Lion, 110
USPQ2d at 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers
Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Here, the
goods and services in the applications and cited registrations have no meaningful
restrictions29 as to nature, type, channels of trade, or classes of purchasers. Therefore,
we do not consider Applicant’s attempt to restrict the scope of its services and the
scope of the goods and services covered in the registrations by extrinsic argument or
evidence. In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764–65 (TTAB 1986)); see also In re Detroit Ath.,
128 USPQ2d at 1052 (“The [second] DuPont factor … must be evaluated with an eye
toward the channels specified in the application and registration, not those as they
exist in the real world.”). Thus, the second DuPont factor also favors a finding of
likelihood of confusion.

29 The restrictions in the cited NODUS registrations “excluding computer software for
processing on-line payment in the trucking industry,” “excluding for processing on-line
payment in the trucking industry” and “excluding for processing on-line payment in the
trucking industry” are not relevant restrictions for purposes of these appeals.

Serial Nos. 88033302, 88033653, 88034989

- 25 -
C. The Similarity or Dissimilarity of Trade
Channels and Classes of Purchasers
Under the third DuPont factor, we must base our determination regarding the
similarities or dissimilarities between channels of trade and classes of purchasers for
the services as they are identified in the applications and the goods and services as
they are identified in the cited registrations. Octocom, 16 USPQ2d at 1787; Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987); Mini Melts v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1471 (TTAB 2016). Neither Applicant’s applications nor the cited registrations
contain any meaningful limitations as to trade channels or classes of customers, and
we may not read any limitation into them. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983), quoted in In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1091 (TTAB 2016). Therefore, the services of Applicant and the goods and
services of Registrant must be assumed to travel in all channels of trade usual for
such goods and services.
The only evidence relating to the trade channels through which the goods and
services at issue travel is the third-party banking website evidence submitted by the
Examining Attorney, discussed above. This evidence shows that the services
identified in Applicant’s applications, as well as goods and services identified in the
cited registrations, may be offered via the same banking institutions to merchants
and vendors of various kinds, i.e., merchants interested in the processing of their
customer’s credit and debit card charges. Thus, the respective goods and services, as
Serial Nos. 88033302, 88033653, 88034989

- 26 -
identified, would be provided in the same or at least overlapping channels of trade to
the same or overlapping classes of purchasers. Applicant concedes as much:
• “Only the capability of the software for the processing of electronic or credit
card payments [the Registrant’s goods] recalls financial transactions
[Applicant’s services].”
• The software offered by the owner of the cited registrations merely enables [the
merchant business receiving a customer’s payment] to communicate with its
bank (i.e. the Receiving Bank) to initiate the actual payment process.
• The [recited goods and services of the] cited marks provide the tools, such as
the software and applications, for banks to “move” funds.30
Consequently, as noted by the Examining Attorney,31 the goods and services at
issue have complementary uses; that is, they are used in conjunction with one another
by merchants of goods and services accepting electronic, credit card or debit card
payments, thus demonstrating they are sufficiently related such that confusion would
be likely if they are marketed under the same or similar marks. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)
(holding bread and cheese to be related because they are often used in combination
and noting that “[s]uch complementary use has long been recognized as a relevant
consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic
apparatus and medical ultrasound devices to be related, based in part on the fact that
such products have complementary purposes because they may be used by the same

30 Applicant’s Brief, 15 TTABVUE 14, 15, 20.
31 Examiner’s Brief, 17 TTABVUE 15-16.
Serial Nos. 88033302, 88033653, 88034989

- 27 -
medical personnel on the same patients to treat the same disease). Thus, the third
DuPont factor weighs in favor of a finding a likelihood of confusion.
D. Sales Conditions and Purchaser Sophistication
“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.’” Stone Lion,
110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). Applicant argues:
Applicant’s services are banking, and financial services customized for
each international client, requiring Applicant to work closely with the
clients to understand their needs. These purchases are characterized by
personal sales experience by knowledgeable bank officers and a focused
need for the services for a specific customer, namely international
customers looking to secure their assets with a depository financial
institution specialized in international financial transactions. Similarly,
Registrant’s computer software programs and/ or solutions for payment
processing requires customers to exercise a degree of care in considering
the features and capabilities of the software vis a vis the particular
business needs of [the] consumer. … In this case, each of the respective
clients of both Applicant and Registrant are sophisticated consumers,
who exercise a degree of care when acquiring the respective goods and
services. Therefore, it is evident that, in accordance with the long-
standing principle of sophistication of consumers in trademark law, it is
highly unlikely that there be any likelihood of confusion.32
To support its arguments regarding customer sophistication, Applicant made of
record the long and complex forms and agreements Applicant’s customers are
required to complete, a few captured pages from Applicant’s website, a single page
from the Registrant’s website, the Registrant’s LinkedIn Profile, and a client case

32 Applicant’s Brief, 15 TTABVUE 23-24
Serial Nos. 88033302, 88033653, 88034989

- 28 -
study published by the Registrant.33 The prices charged for Applicant’s services and
the Registrant’s products and services are not provided.34
The Examining Attorney does not address this evidence, but simply says that
Applicant’s legal arguments of customer sophistication are unpersuasive.
Focusing as we must on the least sophisticated potential customers of Applicant’s
services and the Registrant’s goods and services, we find this factor neutral. See Stone
Lion, 110 USPQ2d at 1163 (“Although the services recited in the application also
encompass sophisticated investors, Board precedent requires the decision to be based
‘on the least sophisticated potential purchasers.’”). However, even were we to consider
care in purchasing the goods and services in the cited registrations, particularly in
the context of such similar marks and overlapping goods and services, this would not
render the consumers “immune from trademark confusion.” See Harry Winston, Inc.
v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1442 (TTAB 2014); see also In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“That the
relevant class of buyers may exercise care does not necessarily impose on that class
the responsibility of distinguishing between similar trademarks for similar goods.”).
Even “careful purchasers who do notice the difference in the marks will not
necessarily conclude that there are different sources for the [services], but will see

33 Request for Reconsideration of November 7, 2019 at TSDR 21-23, 25-55, and 57-60.
34 This would not be relevant in any event, because we cannot resort to extrinsic evidence to
restrict the prices of Applicant’s services or Registrant’s goods and services (as being
“expensive”) or to distinguish the goods and services. See In re Bercut-Vandervoort, 229 USPQ
at 764 (evidence that relevant goods are expensive wines sold to discriminating purchasers
must be disregarded given the absence of any such restrictions in the application or
registration).
Serial Nos. 88033302, 88033653, 88034989

- 29 -
the marks as variations of each other, pointing to a single source.” In re Hitachi High-
Techs. Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
We therefore consider the fourth DuPont factor, the conditions under which and
the buyers to whom sales are made, to be a neutral likelihood of confusion factor on
these appeals.
E. The Presence or Absence of Actual Confusion
The seventh DuPont factor is the “nature and extent of any actual confusion, while
the eighth DuPont factor considers the “length of time during and conditions under
which there has been concurrent use without evidence of actual confusion.” DuPont,
177 USPQ at 567. In its decision on remand from the Federal Circuit’s decision in In
re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160 (Fed. Cir. 2019), the Board
recently held that the eighth DuPont factor “requires us to look at actual market
conditions, to the extent there is evidence of such conditions of record.” In re Guild
Mortg., 2020 USPQ2d 10279, *15 (TTAB 2020).
Applicant argues:
[T]he best evidence of the lack of likelihood of confusion is the fact that
[the marks of] the cited registrations and Applicant’s marks have
coexisted in commerce for close to 10 years without any evidence of
actual confusion. … The fact that both these marks have co-existed for
all these years definitively militates against a finding of likelihood of
confusion.35
The Examining Attorney contends that, under our precedent, Applicant’s argument
is unpersuasive.36

35 Applicant’s Brief, 15 TTABVUE 26-27.
36 Applicant’s Brief, 17 TTABVUE 10.
Serial Nos. 88033302, 88033653, 88034989

- 30 -
“[U]ncorroborated statements of no known instances of actual confusion are of
little evidentiary value.” In re Majestic, 65 USPQ2d at 1205. “The absence of any
reported instances of confusion is meaningful only if the record indicates appreciable
and continuous use by applicant of its mark for a significant period of time in the
same markets as those served by … [the Registrant] under its marks.” Citigroup Inc.
v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011). Here, we have no evidence of whether the
extent and circumstances of Applicant’s or the Registrant’s use of the respective
marks has been such as to give rise to meaningful opportunities for actual confusion
to occur. In re Kangaroos U.S.A., 223 USPQ 1025, 1026‒27 (TTAB 1984) (holding
that, without this evidence, the absence of actual confusion is of “little probative
value”).
In any event, the lack of evidence of actual confusion “is of minor relevancy”. J.C.
Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
The issue before us is the likelihood of confusion, not actual confusion. In re Detroit
Ath., 128 USPQ2d at 1053; Herbko Int’l, 64 USPQ2d at 1380 (“[A] showing of actual
confusion is not necessary to establish a likelihood of confusion.”). We therefore find
the absence of actual confusion, contemplated by the seventh and eighth DuPont
factors, to be a neutral consideration in the likelihood of confusion analysis.
IV. Conclusion: Likelihood of Confusion
The first, second, and third DuPont factors favor a finding of likelihood of
confusion. We treat the other DuPont factors as neutral. The marks at issue are
similar. The respective goods and services are related such that the marks would
Serial Nos. 88033302, 88033653, 88034989

- 31 -
travel in overlapping trade channels and provided to the same or overlapping classes
of purchasers. We therefore find that Applicant’s marks NODUSBANK,
NODUSBANK INTERNATIONAL & Design and NODUSONLINE, used in
connection with Applicant’s services, so closely resembles the registered mark
NODUS as to be likely to cause confusion, mistake or deception as to the source of
Applicant’s services.
Decision:
The refusals to register each of Applicant’s marks are affirmed.