Pinnacle Bancorp., Inc.

Trademark Trial and Appeal Board

Jan 29, 2004

No. 76022950 (T.T.A.B. Jan. 29, 2004)

Mailed:
January 29, 2004
Paper No. 13
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pinnacle Bancorp., Inc.
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Serial No. 76022950
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Jill Robb Ackerman and Victoria H. Finley of Baird, Holm,
McEachen, Pedersen, Hamann & Strasheim LLP for Pinnacle
Bancorp, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Pinnacle Bancorp. Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
PINN BANK 24-HOUR ONLINE BANKING and design, as shown
below, with the words "BANK" and "24-HOUR ONLINE BANKING"
disclaimed, for "mortgage lending services and mortgage
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76022950
2
banking services offered to corporate and individual
consumers via a global computer information network."1
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark, when used on its identified goods, so
resembles the mark PINN PRO, previously registered for
"financial services, namely, providing cash management
accounts,"2 as to be likely to cause confusion or mistake or
deception.
Applicant and the Examining Attorney have filed appeal
briefs.3 An oral hearing was not requested.
1 Application Serial No. 76022950, filed April 11, 2000,
asserting first use and first use in commerce on January 2, 2000.
2 Registration No. 2309164, issued January 18, 2000.
3 In its appeal brief applicant makes reference to Internet
search results that it allegedly attached to its response to an
Office action. No such search results appear in the file, and
applicant has confirmed to the Board, in a telephone
conversation, that such documents were never submitted.
With its appeal brief applicant has submitted a copy of a
definition of "cash management account," taken from the
Dictionary of Banking by Jerry M. Rosenberg (1993), and has asked
that we take judicial notice of it. The definition provided in
this dictionary is "a bank-type development of Merrill Lynch in
partnership with Bank One of Ohio, based in Columbus, where
affluent clients are offered a Visa credit card and checking to
Ser No. 76022950
3
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 Company, 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/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
draw against their investment balances. The account was
initially offered in 206 of Merrill Lynch's 382 offices in the
United States." The Examining Attorney has objected, contending
that because the dictionary was published ten years ago (now
eleven), it does not accurately reflect the meaning of the term
in the banking industry. In particular, the Examining Attorney
states that "the banking dictionary may provide one archaic
meaning of 'cash management account' and omit other more current
meanings. The meaning of 'cash management account' provided by
the banking dictionary is obviously not pertinent to registrant's
services since the registrant would not be offering the services
of Merrill Lynch, Bank One of Ohio and Visa."
The Examining Attorney's objection is well taken. Although "cash
management account" may at one time have referred to a financial
offering by Merrill Lynch, see In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir.
1987), in which the Court found that CASH MANAGEMENT ACCOUNT was
not a generic term for the financial services of "stock brokerage
services, administration of money market fund services, and
providing loans against securities services," the registration
for this mark for these services has since been cancelled
pursuant to Section 8, and the U.S. Patent and Trademark Office
obviously considers the phrase to be a generic term at this
point, as shown by its use as an identification of the
registrant's services.
Ser No. 76022950
4
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
With respect to the services, it is well established
that the goods or services of the parties need not be
similar or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services of the parties are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See In re International Telephone & Telephone
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, both applicant and the registrant offer
financial services. The Examining Attorney has made of
record certain use-based third-party registrations which
show that both the services identified in applicant's
application and those in the cited registration are the
types of services which have been registered by individual
entities under a single mark.4 Third-party registrations
4 See Registration No. 2558891 for "banking, bill payment
services, insurance brokerage, business brokerage, cash
Ser No. 76022950
5
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). Moreover, these
registrations show that companies may offer a range of
financial and banking services under a single mark.
Accordingly, consumers might well believe that applicant's
identified mortgage lending services and mortgage banking
services and the registrant's services of providing cash
management, commercial lending services, electronic funds
transfer, financial exchange, financial guarantee and surety,
financial information provided by electronic means, financing
services, loan financing, security services, namely, guaranteeing
loans, investment management, operating marketplaces for sellers
of goods and/or services, mortgage banking, mortgage brokerage,
mortgage lending, price quotations, check processing, electronic
payments, namely, electronic processing and transmission of bill
payment data, electronic processing of insurance claims and
payment data, real estate appraisal, real estate brokerage, real
estate management, leasing of real property, risk management,
security services, namely, guaranteeing loans, financial
guarantee and surety services, real estate syndication, guarantee
assurance underwriting"; and Registration No. 2619068 for
"banking services, namely, installment, commercial and real
estate loans; mortgage loan services; automatic teller machine
services; debit card services; credit card services; electronic
fund transfers, electronic interactive banking services, namely,
payment services, account balancing and fund transfer services
via global computer network; trust services, namely personal and
corporate investment and asset management services; insurance
services, namely commercial and consumer underwriting services in
property and casualty, life insurance, health insurance and
annuities; cash management services; and brokerage services,
namely investment brokerage, insurance brokerage, and mortgage
brokerage services."
Ser No. 76022950
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management accounts emanate from the same source if they
were offered under similar marks.
We also note that applicant's services, as identified,
are offered solely "via a global computer information
network." However, because the registrant's services are
not restricted, they may also be offered via a global
computer information network. Moreover, because so many
businesses today offer their goods and/or services through
the Internet, including banking services as shown by the
third-party registrations, and because so many consumers
purchase goods and services through the Internet, consumers
would be likely to come into contact with both applicant's
and the registrant's services, even if one is offered
through the Internet and the other is offered through more
traditional means.
With respect to the marks, we find that they both
share the same dominant element, PINN. The word BANK and
the phrase 24-HOUR ONLINE BANKING in applicant's mark are
descriptive, as applicant has acknowledged by its
disclaimer thereof. Similarly, the clock design merely
reinforces the significance of the descriptive phrase 24-
HOUR ONLINE BANKING. The words 24-HOUR ONLINE BANKING and
the clock design are clearly subordinate in size and effect
to the words PINN BANK. PINN is also the dominant element
Ser No. 76022950
7
in the registered mark, since PRO is suggestive of the
professional nature of the services. In articulating
reasons for reaching a conclusion on the issue of the
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 a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). Here, it is the
arbitrary word PINN5 that consumers will look to as the
primary source-indicating element, and therefore it is this
element, which is identical in both marks, which deserves
the greater weight in our analysis. Although consumers
will note the differences in appearance and pronunciation
between applicant's mark and the cited mark, they will not
ascribe these differences to differences in the source of
the services. Rather, they will assume that one mark is a
variant of the other, with each identifying services coming
from a single source.
Applicant points out that financial services such as
those rendered by applicant and the registrant are not
5 Interestingly, it appears that both applicant's and the
registrant's marks are derived from "Pinnacle"; applicant is
Pinnacle Bancorp, Inc. and the registrant is Pinnacle Banc Group,
Inc.
Ser No. 76022950
8
impulse purchases, a statement with which we agree.
However, we cannot accept applicant's statement that
potential customers for these services would "affirmatively
determine the identity of the service provider." Brief, p.
7. Applicant is, in effect, saying that consumers will go
behind the trademarks to determine the source of the
services. However, we must consider the trademarks in our
determination of likelihood of confusion, not whether
consumers will be confused if they ignore the trademarks.
Because of the similarity of the marks, we find that even
careful consumers are likely to be confused; further,
relatively sophisticated members of the general public, who
would be more aware of the breadth of banking services, are
likely to assume that applicant's and the registrant's
identified services emanate from the same source when
offered under these similar marks.
Decision: The refusal of registration is affirmed.