Southwest Bank of Texas, N.A.

Trademark Trial and Appeal Board

Apr 19, 2001

No. 75538082 (T.T.A.B. Apr. 19, 2001)

4/19/01
Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Southwest Bank of Texas, N.A.
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Serial No. 75/538,082
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Jack R. Bailey for Southwest Bank of Texas, N.A.
Alicia Benmaman, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Cissel, Seeherman and Quinn, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 17, 1998, applicant applied to register the
mark “BILL P@Y” on the Principal Register for “providing
banking and financial services,” in Class 36. 1 The
1 Although the specimens present the mark in lower case
lettering, the drawing submitted with the application, as well as
the heading of the application itself, depict the mark as “BILL
P@Y.” Notwithstanding contrary indications in the text of the
application and in applicant’s arguments throughout the
prosecution of this application, the drawing is determinative of
the mark applicant is seeking to register, and it is the mark
shown in the drawing, “BILL P@Y,” which we have considered in
connection with the refusal to register under Section 2(d). We
hasten to add that if applicant had amended the application to
seek registration of the mark “bill p@y” in special form, our
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/538,082
2
application is based on applicant’s claim of use of the
mark in connection with rendering the services in
interstate commerce since May 4, 1998.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that
applicant’s mark, as used in connection with the services
set forth in the application, so resembles the mark “USAA
BILLPAY,” which is registered2 for “financial services,
namely payment of third[-]party bills on telephone
authorization of account holder,” in Class 36, that
confusion is likely. In addition to the refusal to
register, the Examining Attorney required applicant to
amend the recitation of services to be more definite.
Responsive to the first Office Action, applicant
presented arguments on the issue of likelihood of confusion
and amended the recitation of services to read as follows:
“banking and financial services, namely payment of
third[-]party bills and otherwise dealing with third[-]party
payees electronically via PC or telephone.” Submitted in
support of applicant’s position that confusion is not likely
were a copy of dictionary pronunciation guidelines and
decision regarding the issue of likelihood of confusion would
have been the same.
2 Reg. No. 1,951,916, issued on the Principal Register to United
Services Automobile Association on Jan. 23, 1996.
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dictionary entries for the words “bill” and “pay.” This
evidence also shows that no listing appears for the term
“billpay” as one word. Applicant contended that this
evidence establishes that the marks differ in pronunciation
and meaning, and that confusion is therefore not likely.
The Examining Attorney was not persuaded by
applicant’s evidence or arguments, and in the second Office
Action, she made the refusal to register under Section 2(d)
final based on her conclusion that the mark applicant seeks
to register is similar to the cited registered mark and the
services of registrant and applicant are the same.
In addition to making the refusal to register final,
in her second Office Action, the Examining Attorney held
the amended recitation of services to be unacceptably
indefinite, and required applicant to amend the recitation
to eliminate the wording “otherwise dealing with
third[-]party payee electronically via PC or telephone.”
The requirement for an acceptable recitation of services
was continued and made final.
Applicant timely filed a Notice of Appeal, along with
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an appeal brief. The Examining Attorney filed her brief on
appeal and applicant filed a reply brief3, but applicant did
not request an oral hearing before the Board.
Although in the second Office Action, the Examining
Attorney made final the requirement for applicant to amend
the recitation of services to eliminate indefinite
terminology, applicant did not do so, nor did applicant
present arguments on this issue in its brief. The
Examining Attorney, in recounting the procedural history of
this application in her brief, noted that the requirement
for an amended recitation of services had been made final,
but thereafter failed even to mention this issue, much less
to present argument or evidentiary support for sustaining
this requirement. Under the circumstances, in view of the
fact that the Examining Attorney has the burden of proof
with respect to the propriety of a final requirement, we
3 The additional evidence submitted with applicant’s reply brief
has not been considered. The record closed with the filing of
the Notice of Appeal. Trademark Rule 2.142(d). Contrary to
applicant’s arguments, the Board may not take judicial notice of
Office records of third-party registrations. Moreover, even if
the record contained properly introduced copies of the third-
party applications and registrations applicant did not timely
submit, such records would not be evidence of use of the marks
therein. Thus they could not be the basis for the Board to reach
the conclusion that the terms “bill” and “pay” are so frequently
used in connection with services of the type involved in the
instant case that consumers of these services are readily able to
distinguish among marks which include the two words based on
other small distinctions in such marks.
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deem this issue to have been conceded by the Examining
Attorney through her inaction. The requirement for
amendment to the recitation of services is therefore
reversed.
We turn, then, to the question of whether applicant’s
mark, “BILL P@Y,” in connection with the services set forth
in the application, as amended, namely “banking and
financial services, namely payment of third[-]party bills
and otherwise dealing with third[-]party payees
electronically via PC or telephone,” is likely to cause
confusion with the mark “USAA BILLPAY,” as used in
connection with the services specified in the registration,
“financial services, namely payment of third[-]party bills
on telephone authorization of account holder.” Based on
careful consideration of the record before us in this
appeal and the relevant legal authority, we hold that the
refusal to register under Section 2(d) is not well taken.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E. I.
DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, sound, meaning and commercial
impression and the similarity of the services.
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In the case before us, although the services set forth
in the application appear to be the same or very closely
related to those specified in the cited registration,
confusion is not likely because the mark applicant seeks to
register creates a different commercial impression from
that which is engendered by the cited registered mark.
We have not been persuaded to reach this conclusion by
any of applicant’s overly technical arguments, such as
those based on the numbers of letters and syllables in the
marks, or on the fact that neither “USAA” nor “BILLPAY” are
words that are listed in a dictionary. The plain fact is
that the words “bill” and “pay,” in the context of either
applicant’s mark or the cited registered mark, would be
understood in connection with the respective services of
applicant and registrant as conveying the fact that the
services involve bill payment. In these contexts, both
marks are suggestive of the services in connection with
which they are used because both services involve the
payment of bills. The only similarity between these two
marks is that both contain these highly suggestive words.
It is well settled, however, that use of such suggestive
terminology does not entitle the prior user to a broad
scope of protection.
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The commercial impressions these two marks generate
are sufficiently different to permit customers of these
services to distinguish between the marks. This difference
is the result of the use of the letters “USAA” in
registrant’s mark and applicant’s use of the distinctive
“@” sign in place of the letter “a” in the word “pay.” The
registered mark uses the composite term “BILLPAY,” which
would be quite similar to the mark “BILL PAY,” but, as
noted above, “BILL PAY” is not applicant’s mark, “BILL P@Y”
is. In addition, the registered mark combines “BILL PAY”
with the apparently arbitrary, at least in connection with
these services, letters “USAA.” The unusual spelling, or
stylized presentation, of the word “pay” in applicant’s
mark, combined with the additional arbitrary letters in the
cited registered mark, are sufficient differences to allow
prospective customers to distinguish between the two
suggestive marks. Because of these distinctions, even
though the services are essentially the same, confusion is
not likely.
Decision: The requirement for amendment to the
recitation of services and the refusal to register
applicant’s mark under Section 2(d) of the Lanham Act are
both reversed.
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