Wintrust Financial Corp.

Trademark Trial and Appeal Board

Feb 6, 2003

No. 75935479 (T.T.A.B. Feb. 6, 2003)

Mailed: 06 FEB 2003
Paper No. 16
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Wintrust Financial Corporation
________
Serial No. 75/935,479
_______
Michael J. Turgeon of Vedder, Price, Kaufman & Kammholz for
Wintrust Financial Corporation.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Seeherman and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Wintrust Financial Corporation (applicant) applied to
register the mark NORTHBROOK BANK & TRUST COMPANY (in typed
form) for “banking services” in International Class 36.1
Although applicant initially sought registration on the
Principal Register, the application was subsequently
amended to request registration on the Supplemental
1 Serial No. 75/935,479, filed February 17, 2000. The
application was based on applicant’s assertion of a bona fide
intention to use the mark in commerce. Subsequently, applicant
submitted an amendment to allege use and asserted a date of first
use and a date of first use in commerce on November 22, 2000.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/935,479
2
Register. Applicant has also disclaimed the words “Bank &
Trust Company.”
The examining attorney ultimately refused to register
the mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of two registrations for the mark NORTH
BROOK and design shown below.
The first registration is on the Supplemental Register
and the services are identified as “insurance services” in
International Class 36 and “property and casualty loss
control services” in International Class 37.2 The second
registration is on the Principal Register under the
provision of Section 2(f) and it is registered for
“commercial and liability insurance administration
services; underwriting and administration services in the
field of life insurance; underwriting and administration
services in the field of annuities” in International Class
36.3
2 Registration No. 1,265,418, issued January 24, 1984, Section 8
accepted.
3 Registration No. 2,266,244, issued August 3, 1999.
Ser No. 75/935,479
3
After the examining attorney made the refusal final,4
this appeal followed.
The examining attorney’s position is that the dominant
portion of both marks is the word “Northbrook,” and
applicant’s addition of the descriptive words “Bank & Trust
Company” does not change the similar overall commercial
impression created by the marks. Regarding the relatedness
of the services, the examining attorney submitted evidence
that included NEXIS printouts indicating that banking and
insurance services are provided by the same entities.
Met Life is one of the first US insurers to form a
banking unit.
Post Magazine, June 1, 2000.
The barriers between banking, insurance and brokerages
are already starting to fall.
Waterbury Republican-American, May 15, 2000.
In addition, the examining attorney submitted copies
of nine registrations (Nos. 2,608,826; 2,604,392;
2,545,286; 2,543,123; 2,595,710; 2,587,508; 2,579,902;
2,583,428; and 2,569,613) as evidence “that both banking
and insurance services often emanate from a single source
under the same mark.” Brief at 6. The examining attorney
4 The examining attorney’s final refusal also included a third
registration (No. 1,679,641) for the same mark shown above for
“commercial and liability insurance underwriting services;
insurance consulting services” in International Class 36.
However, that registration was cancelled on December 21, 2002,
and it, therefore, no longer is a bar to registration of
applicant’s mark.
Ser No. 75/935,479
4
concluded that the “marks are highly similar and the
services are related. Consumers encountering applicant’s
mark and the cited marks in the marketplace are therefore
likely to mistakenly believe that the services emanate from
a common source.” Brief at 9.
Applicant, on the other hand, maintains that the
examining attorney has not shown that registrant is
licensed to provide banking services or that “non-
competitive banking services and insurance services could
give rise to the mistaken belief that the services emanate
from a common source.” Brief at 11. Regarding the marks,
applicant argues that because the cited registrations are
either on the Supplemental Register or registered on the
Principal Register under the provisions of Section 2(f),
“the scope of protection accorded such a descriptive mark
is significantly narrowed and limited such that likelihood
of confusion can only be found where the marks are nearly
identical.” Brief at 5. Finally, applicant argues that
there is no actual confusion, the mark is weak, the trade
channels are different, and the services are dissimilar,
and, therefore, the examining attorney’s refusal should be
reversed.
We affirm.
Ser No. 75/935,479
5
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., ___ F.3d ___, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973); Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
We start by comparing applicant’s and registrant’s
marks. Applicant’s mark consists of the words NORTHBROOK
BANK & TRUST COMPANY; registrant’s mark is for the word
NORTH BROOK and design shown below.
Both marks feature the word NORTHBROOK or NORTH BROOK.
See Seaguard Corp. v. Seaward International, Inc., 223 USPQ
48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially
identical”). Applicant adds the disclaimed words “Bank &
Trust Company” to its mark while registrant displays its
marks with a simple block design. However, the dominant
part of both marks would be the word NORTHBROOK. The
addition of the words “Bank & Trust Company” does not
Ser No. 75/935,479
6
significantly alter the appearance, pronunciation, meaning,
or commercial impression. In a similar case, the Federal
Circuit held that the addition of the word “Swing” to
registrant’s mark “Laser” did not result in the marks being
dissimilar. “[B]ecause both marks begin with ‘laser,’ they
have consequent similarities in appearance and
pronunciation. Second, the term ‘swing’ is both common and
descriptive… Regarding descriptive terms this court has
noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on likelihood of
confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000) (citations and
quotation marks omitted). See also In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (Court held that the addition of “The,” “Cafe” and a
diamond-shaped design to registrant’s DELTA mark still
resulted in a likelihood of confusion); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products).
In addition, the simple design in registrant’s mark
does not change the basic impression of the mark.
Neither the design element nor the generic term "cafe"
offers sufficient distinctiveness to create a
different commercial impression. Indeed, as the board
Ser No. 75/935,479
7
found, the design is an ordinary geometric shape that
serves as a background for the word mark.
Dixie Restaurants, 41 USPQ2d at 1534.
We conclude that, when we consider these marks in
their entireties, the differences in appearance,
pronunciation, meaning, and commercial impression are minor
and the word NORTHBROOK would be the feature that
prospective purchasers would use to refer to the services.
We have taken into consideration the fact that
applicant’s mark and one of registrant’s marks is on the
Supplemental Register. Merely because a mark is on the
Supplemental Register, it does not follow that the mark is
entitled to only a narrow scope of protection. In re Smith
and Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994). We note
that Northbrook is “a village of northeast Illinois, a
residential and industrial suburb of Chicago. Population
32,308.” American Heritage Dictionary of the English
Language, Third Edition (1992). Applicant’s term involving
a village in Illinois is not the equivalent of a commonly
used descriptive term. In addition, registrant’s other
mark is on the Principal Register under the provisions of
Section 2(f). While applicant has included telephone
business page entries to show that there are other
businesses in Northbrook that include the word NORTHBROOK
Ser No. 75/935,479
8
in their name, this evidence does not establish that the
term NORTHBROOK is weak. The fact that pizza parlors,
limousine services, automobile dealers and car washes in
the Northbrook area use the term NORTHBROOK does not
establish that it is weak mark when it is used in
association with insurance services.
We now consider whether the services of the applicant
and registrant are related. We must consider the services
as they are identified in the application and registration.
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods”); In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (punctuation in original),
quoting, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“’Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
Ser No. 75/935,479
9
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
Applicant’s argument that registrant is not using its
mark in connection with the same services with which
applicant is using its mark is simply not relevant. If the
services are related, it does not matter how registrant is
actually using its mark.
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Here, applicant uses its mark in connection with
banking services and registrant uses its mark for various
insurance services. Applicant maintains that the services
Ser No. 75/935,479
10
are “not clearly related.” Brief at 9. However, the
examining attorney has included evidence that banking and
insurance services originate from the same source. In
addition to the NEXIS evidence that indicates that banks
are beginning to offer insurance services, the examining
attorney also included copies of registrations to show that
the same entities have adopted a common mark for both
banking and insurance services. See, e.g., Registration
No. 2,569,613 (THE BANK OF BLOOMFIELD HILLS for banking
services and insurance administration, insurance brokerage
and insurance agency services in the field of life, health,
and disability insurance and annuities); No. 2,604,392
(HOUSEHOLD and design for banking services and insurance
underwriting services); No. 2,606,826 (HARLEYSVILLE
NATIONAL BANK AND TRUST COMPANY and design for banking
services and insurance agency services); No. 2,579,902
(STATE FINANCIAL for banking services and insurance
services and underwriting property, casualty and life
insurance); and No. 2,583,428 (CITIONE for banking services
and insurance brokerage services including insurance
underwriting and banking services). These registrations
suggest that the same source may provide both banking and
insurance services. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
Ser No. 75/935,479
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registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993).
We have also considered applicant’s evidence of
registrations that show that the U.S. Patent and Trademark
Office has registered marks with the same geographic terms
to different entities for banking and insurance services,
however, these registrations are not very persuasive. Most
of these registrations involve registrations for a well-
known geographic term such as Illinois, New York, Chicago,
Eastern, and America combined with other terms. Therefore,
the issue of likelihood of confusion in the case before us
is different. In the present case, the cited mark contains
no additional terminology that would distinguish this mark
from applicant’s. Even if there were examples of the same
geographical terms that were registered to different
parties for banking and insurance services, that would
hardly establish that there was not a likelihood of
confusion in this case. While third-party registrations
may be used to demonstrate that a portion of a mark is
Ser No. 75/935,479
12
suggestive or descriptive, they cannot be used to justify
the registration of another confusingly similar mark. In
re J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB 1988). The
other evidence certainly supports the examining attorney’s
conclusion that potential consumers are likely to believe
that banking and insurance services may originate from the
same source or at least are related or associated in some
way.
Applicant argues that the channels of trade are
dissimilar because registrant’s services involve “a
business-to-business commercial relationship.” Reply Brief
at 12. However, the registrations are not so limited. See
Registration No. 1,265,418 for “insurance services” and
Registration No. 2,266,244 for, inter alia, “underwriting
and administration services in the field of life insurance;
underwriting and administration services in the field of
annuities.” In addition, applicant’s banking services do
not exclude services directed to businesses. Applicant
also maintains that a “business interested in obtaining
property and casualty insurance coverage is going to spend
a sizeable amount of money” and that its employees are
therefore “knowledgeable and sophisticated.” Brief at 13.
As discussed above, the registrations are not limited as
applicant argues. Even if we assume that the purchasers of
Ser No. 75/935,479
13
insurance and banking services are knowledgeable
purchasers, they would likely be confused when very similar
marks are used with both banking and insurance services.
Octocom Systems, 16 USPQ2d at 1787.
In addition, we note that applicant’s counsel has
argued that applicant is unaware of instances of actual
confusion. However, the absence of actual confusion does
not mean there is no likelihood of confusion. Majestic
Distilling, 65 USPQ2d at 1205 (“The lack of evidence of
actual confusion carries little weight”). Additionally, we
have considered applicant’s argument regarding the lack of
evidence of fame and we agree that there is no evidence of
fame, but this type of evidence would not normally be of
record in an ex parte case and the lack of such evidence
does not indicate that there is no likelihood of confusion.
See Majestic Distilling, 65 USPQ2d at 1205 (citation
omitted) (“Although we have previously held that the fame
of a registered mark is relevant to likelihood of
confusion, we decline to establish the converse rule that
likelihood of confusion is precluded by a registered mark’s
not being famous”).
We conclude that, when potential purchasers of
insurance and banking services encounter the marks NORTH
BROOK and design and NORTHBROOK BANK & TRUST COMPANY, they
Ser No. 75/935,479
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would likely believe the businesses using them are in some
way related. Our analysis leads us to conclude that there
is a likelihood of confusion. While we acknowledge that
this conclusion is not free from doubt, we must resolve any
doubt in favor of the registrant and against the newcomer.
Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1458 (Fed. Cir. 1992).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.