Bams Holdings Group LLC (aka Bank Associates Merchant Services)

Trademark Trial and Appeal Board

Oct 23, 2012

No. 85128623 (T.T.A.B. Oct. 23, 2012)

Mailed:
October 23, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bams Holdings Group LLC
(aka Bank Associates Merchant Services)
________

Serial No. 85128623
_______

Inessa Shalevich, Esq. for Bams Holdings Group LLC
(aka Bank Associates Merchant Services).

Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Taylor, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Bams Holdings Group LLC (aka Bank Associates Merchant
Services), applicant, filed an application to register the
mark BAMS (in standard character form) on the Principal
Register for, in part, the following goods and services:1

1 Application Serial No. 85128623 is based on an alleged date of
first use anywhere and in commerce of January 1, 2006, under
Section 1(a) of the Trademark Act, for the goods and services
identified in classes 9 and 36. The application also covers
services in International Class 35, but these services are not
subject to the refusal of registration.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 85128623
2
Computer software, namely, electronic financial
platform that accommodates multiple types of payment
and debt transactions in an integrated mobile phone,
PDA, and web based environment; Electronic and
magnetic ID cards for use in connection with payment
for services; Electronic payment terminal; Holders for
magnetically encoded gift cards; Multi-functional
computer terminals with payment function; Multi-
functional electronic payment terminals; Secure
terminals for electronic transactions in International
Class 9;

Bill payment services; Bill payment services provided
through a website; Credit card and payment card
services; Credit card authorization services; Credit
card factoring services; Credit card payment
processing services; Credit card transaction
processing services; Debit card services; Electronic
commerce payment services, namely, establishing funded
accounts used to purchase goods and services on the
Internet; Electronic credit card transactions;
Electronic foreign exchange payment processing;
Electronic payment, namely, electronic processing and
transmission of bill payment data; Electronic
processing of insurance claims and payment data;
Financial transaction services, namely, providing
secure commercial transactions and payment options;
Financial transaction services, namely, providing
secure commercial transactions and payment options
using a mobile device at a point of sale; Loyalty
coupon payment processing services; Loyalty program
payment processing services; Merchant banking
services; Merchant services, namely, payment
transaction processing services; Payment processing
services, namely, credit card and debit card
transaction processing services; Processing electronic
payments made through prepaid cards; Providing
electronic processing of ACH and credit card
transactions and electronic payments via a global
computer network; Providing electronic processing of
credit card transactions and electronic payments via a
global computer network; Providing electronic
processing of electronic funds transfer, ACH, credit
card, debit card, electronic check and electronic
payments; Providing information regarding policy rates
for all types of insurance and electronic processing
of insurance claims and payment data over a web based
Serial No. 85128623
3
computer network; Providing multiple payment options
by means of customer-operated electronic terminals
available on-site in retail stores; Wireless telephone
payment services, namely, wireless mobile telephone
rate plans in International Class 36.

The examining attorney has refused registration of
applicant's mark in Classes 9 and 36 pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground
that applicant’s mark so resembles the previously
registered mark BAMpay (in standard character form) for:
Financial transaction services, namely, providing
secure commercial transactions and payment options
using a mobile device at a point of sale in
International Class 36.2

Applicant appealed the final refusal and briefs were
filed.3 For the following reasons, we affirm the refusal to
register.
Likelihood of Confusion
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

2 Registration No. 3895391 issued December 8, 2009.
3 The examining attorney’s objection to certain evidentiary
materials (identified as exhibits A and B) submitted with
applicant’s appeal brief, for the first time, is well-taken.
Trademark Rule 2.142(d); see also, TBMP Section 1207.01 (3d ed.
2012)(Evidence Submitted After Appeal Untimely) and authorities
cited therein. Accordingly, the materials submitted by applicant
with its appeal brief have not been considered.
Serial No. 85128623
4
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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).
We first consider the du Pont factors regarding the
goods and services, trade channels and classes of
purchasers. In an ex parte appeal, likelihood of confusion
is determined on the basis of the goods and/or services as
they are identified in the application and the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981); In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976).
Here, the respective services are identical, in part,
inasmuch as both the application and cited registration
cover “Financial transaction services, namely, providing
secure commercial transactions and payment options using a
mobile device at a point of sale.” Applicant’s electronic
financial transaction goods in International Class 9 are
also closely related to the aforementioned financial
Serial No. 85128623
5
transaction services. Specifically, applicant’s “computer
software, namely, electronic financial platform that
accommodates multiple types of payment and debt
transactions in an integrated mobile phone, PDA, and web
based environment” could be used in conjunction with the
services by actually facilitating the transactions. The
other identified goods in the application, e.g.,
“Electronic and magnetic ID cards...Electronic payment
terminal; Holders for magnetically encoded gift cards;
Multi-functional computer terminals with payment function;
Multi-functional electronic payment terminals; Secure
terminals for electronic transactions,” are complementary
to the extent that they may also be used in connection with
the financial transaction services.
This factor therefore weighs in favor of finding a
likelihood of confusion, and very strongly so with respect
to where the services are identical.
Because the services in the application and the cited
registration are identical, in part, we must presume that
the channels of trade and classes of purchasers at least in
part are the same with respect to said services. Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
Serial No. 85128623
6
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”). Applicant
has attempted to show that registrant’s services would be
found in different trade channels and offered to a
different type of consumer from that of applicant’s
services. However, because the respective recitations of
services do not contain any such restrictions as to trade
channels or classes of purchases, we cannot rely on
extrinsic evidence to restrict the scope of the recitations
as worded.
As to the trade channels and classes of purchasers for
applicant’s financial payment software and other financial
payment-related goods in International Class 9 vis-à-vis
registrant’s financial transaction services, we find they
too will are closely related, if not the same. Although
applicant’s goods are clearly not identical to registrant’s
services, they are, as previously noted, complementary in
nature. Purchasers of applicant’s financial payment
software and related goods are likely to be recipients of
Serial No. 85128623
7
registrant’s financial transaction services. It is likely
therefore that these services and goods will be advertised
in the same trade channels. The fact that applicant,
itself, seeks to register the same mark for services
identical to those of registrant as well as otherwise
closely related goods and services corroborates the notion
that consumers are not unaccustomed to the same entity
using the same mark on or in connection with said goods and
services.
Thus, the du Pont factors involving trade channels and
classes of purchasers also strongly favor a finding of
likelihood of confusion between the respective identical
financial transaction services in Class 36; likewise, these
factors favor a finding of likelihood of confusion in
connection with applicant’s Class 9 goods and the services
in the registration.
This brings us to the similarity of the marks. We
keep in mind that when marks would appear on identical
services, as they do in part here, the degree of similarity
of the marks necessary to support a conclusion of likely
confusion declines with respect to that class of services
(in this case, International Class 36). Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Our focus is on
Serial No. 85128623
8
whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In the present case, applicant’s mark, BAMS, bears a
strong resemblance to the registered mark BAMpay.4
Consumers are likely to attribute less source-identifying
significance to the PAY element of the registered mark
inasmuch as it will be viewed in connection with financial
transaction or “payment” services. Consumers will
therefore focus on the initial and non-descriptive element

4 The registration’s drawing depicts the mark partially in upper-
case and lower-case lettering, as shown herein. However, we also
note that the registration describes the mark as comprising
standard characters and we therefore cannot conclude that the
mark will always appear in the upper- and lower-case lettering.
Nevertheless, applicant’s mark too is in standard character
format and we must likewise consider the possibility that both
marks will appear in the same font or stylized lettering.
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,
1349, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).

Serial No. 85128623
9
of the registered mark, BAM, which is nearly identical to
the applicant’s BAMS mark.
We have also considered applicant’s argument that BAMS
will be understood as an acronym or initialism for
applicant’s assumed name, “Bank Associates Merchant
Services.” However, this argument is not persuasive since
the evidence does not show that such a meaning is so well-
known or that customers will always make such an
association.
Applicant also argues that “extensive third party
usage of ‘BAM’ has rendered the term weak” and that “there
are 682 occurrences of the term BAM in the trademark
database.” Brief, p. 10. However, the record does not
support applicant’s contentions. There is no evidence
showing use of the term BAM by third parties, let alone in
the context of similar goods and services. We do not
therefore find the registered mark weak or otherwise
entitled to a narrower scope of protection.
Applicant’s mark, BAMS, is overall very similar to the
registered mark, BAMpay. Accordingly, this factor weighs
in favor of finding a likelihood of confusion.
Finally, applicant states that it contacted registrant
“regarding a voluntary consent agreement that would be
consummated...[had registrant’s president] not insisted on
Serial No. 85128623
10
unreasonable compensation for his time and expenses.”
Brief, p. 15. In support, applicant submitted
correspondence with registrant (or its representative).
The mere fact that a consent agreement was being
contemplated has little, if any, bearing on whether there
is a likelihood of confusion in this matter. The more
important fact is there is no consent agreement before the
Board to support a conclusion that there is no likelihood
of confusion.
In sum, after considering the record and the relevant
likelihood of confusion factors, we conclude that, should
potential purchasers encounter the marks BAMS and BAMpay
being used in connection with identical services and
otherwise related goods and services, the consumers are
likely to believe that the sources of these services and
goods are in some way related or associated. As a result,
there is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed as to Classes
9 and 36. The application will be amended to conform to
this decision; it will then be forwarded for publication
for opposition as to the remaining services in
International Class 35.