Bank of Internet USA

Trademark Trial and Appeal Board

Jul 30, 2019

85237380 (T.T.A.B. Jul. 30, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bank of Internet USA
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Serial No. 85237380

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Ann K. Ford and David M. Kramer of DLA Piper LLP (US),
for Bank of Internet USA.

Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Steven Berk, Managing Attorney.
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Before Zervas, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Bank of Internet USA (“Applicant”) seeks registration on the Supplemental
Register of the mark NETBANK, in standard character form, for services ultimately
identified as:
Checking and savings account services; bill payment services, namely,
administration of electronic processing and transmission of bill payment
data; bank card, debit card and electronic payment card services; money
transmission services, namely, electronic transfer of money; mortgage
lending services; financing of loans; arranging and provision of loans; all
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of the foregoing provided in connection with a bank,” in International
Class 36.1

The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,
mistake, or to deceive, based on two prior registrations, both owned by the same
registrant, as follows:
1. NETBANX, in standard characters, and registered on the Principal Register,
for:2
Payment processing facilities and payment service provider services to
on-line and other merchants, namely, processing payments made by
consumers to merchants through on-line computer networks, call
centers and automated telephone lines; purchaser transaction
verification for e-commerce transactions; stored-value account
processing, namely, providing consumers with an e-wallet account for
use in making secure online payments to merchants for future
purchases; currency conversion, namely, providing merchants with the
ability to convert consumers' payments in other currencies, to the
businesses' preferred currency and to inform the consumers of the
conversion rates used at point of sale; and merchant bureau services,
namely, facilitating merchants to receive payments from various
payment providers through recommending them and providing
indemnities to banks, in International Class 36

2. NETBANX CHECKOUT, in standard characters, and registered on the
Principal Register, with a disclaimer of “CHECKOUT,” for:3
Credit card payment processing services and electronic foreign exchange
payment processing services; straight-through credit card payment

1 Serial No. 85237380, filed on February 8, 2011, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), with a Statement of Use filed January 28, 2014, alleging dates of first
use and use in commerce on October 25, 2012.
2 Registration No. 4223571, issued October 16, 2012. Sections 8 and 15 affidavits accepted
and acknowledged.
3 Registration No. 5273556, issued August 29, 2017.
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processing services; electronic funds transfer services, in International
Class 36.

When the refusal was made final, Applicant filed a timely appeal.4 Both Applicant
and the Examining Attorney filed briefs. For the reasons discussed herein, we affirm
the Section 2(d) refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014). We further note that “[n]ot all of the [du Pont] factors are relevant to every
case, and only factors of significance to the particular mark need be considered.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719

4 Applicant had previously filed an appeal of other refusals, which were withdrawn by the
Examining Attorney during further prosecution. After the refusal discussed herein was
made final, the appeal was resumed.
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(Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1259 (Fed. Cir 2010)).
As noted, as grounds for the refusal, the Examining Attorney cited two previously
registered marks. Both are owned by the same registrant. We find the mark in cited
Registration No. 4223571, which is comprised solely of the term NETBANX in
standard characters, to be the most relevant for our du Pont analysis, and we proceed
accordingly. If we find a likelihood of confusion as to this registration, we need not
reach the other. On the other hand, since this is the most relevant registration, if we
find no likelihood of confusion as to this registration, we would not find it as to the
other cited registration. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
A. The Services, Trade Channels and Purchasers
We consider first the similarities or dissimilarities between the respective
services as identified in the application and the cited Registration No. 4223571. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and cited
registration compared).
When considering the similarity of the services, and keeping in mind that the
services in the application are all classified in a single class, it is not necessary that
there be similarity as to each and every one of the services identified in the
description of services. It is sufficient for a refusal based on likelihood of confusion
that relatedness is established for any one of the services identified in the class.
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Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007). In this regard, the cited Registration No. 4223571 identifies, inter alia,
“Payment processing facilities and payment service provider services to on-line and
other merchants, namely, processing payments made by consumers to merchants
through on-line computer networks, call centers and automated telephone lines.” The
application also identifies, “bill payment services, namely, administration of
electronic processing and transmission of bill payment data.” The services therefore
overlap, and are legally identical.
Applicant argues that the nature of the services offered are “different,” and that
they are in “separate and distinct fields.” 7 TTABVUE 10. It is, however, axiomatic
that we must consider the services as identified. See Octocom Sys., Inc. v. Houston
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that 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.” (citations omitted)). The services here are overlapping and
legally identical.5

5 The Examining Attorney also included evidence of the similarity of other services as listed,
respectively, in the application and in the cited Registration No. 4223571, as shown on
websites from BB&T, Citizens Bank, PNC, Regions, Suntrust, and Wells Fargo. Attached to
May 22, 2018 Final Office Action, at 2-73. We find that this further supports the similarity
of the services. By contrast, the third-party registrations submitted by the Examining
Attorney are overly broad, and we do not consider them in our analysis.
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As for the channels of trade, when as here, the respective identifications of
services are legally identical, without additional restrictions as to nature, type,
channels of trade, or classes of purchasers (and in this regard, we note that both
include online and electronic payment services), the services are presumed to travel
in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[A]bsent restrictions in the
application and registration, goods and services are presumed to travel in the same
channels of trade to the same class of purchasers.”). Thus, we must presume the trade
channels and classes of purchasers are the same or overlapping for the bill payment
and payment processing services offered by Applicant and by Registrant.
These factors weigh heavily in favor of finding a likelihood of confusion.
B. Strength of the Cited Mark
Applicant asks us to consider the weakness of the mark in cited Registration No.
4223571. In particular, Applicant refers to an “illustrative list of registered marks
coexisting on the Federal Register, which in whole or in part contained the term
‘Bank’ and/or ‘Net’ or similar variations thereof.” 5 TTABVUE 7. The list that
Applicant refers to was included in its July 2, 2013 Response to Office Action. In that
Response, Applicant asserts that:
Specifically, a review of the United States Patent and Trademark Office
(“USPTO”) records identifies numerous marks on the Principal Register
consisting of, or in part, the terms “NET” and/or “BANK” in Class 36 for
use in connection with services that are closely related to those of Cited
Marks.

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The Examining Attorney objected to the list in subsequent office actions, and
maintained the objection on brief. In order to make a third-party registration of
record, a copy of the registration, either a status copy of the paper USPTO record
showing title, or a copy taken from the electronic records of the Office should be
submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB
1998); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Merely listing
registrations is insufficient to make them of record. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n. 2 (TTAB 1998). Accordingly, we sustain the Examining Attorney’s
objection to the list, and we do not consider it in our analysis.
We note that our precedent dictates that “extensive evidence of third-party use
and registrations is ‘powerful on its face,’ even where the specific extent and impact
of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). Applicant has not, however, made
evidence of any third-party registrations or use of record in this proceeding.
We take judicial notice of the term “net” as being defined, in relevant part, as
“Internet.”6 We also take judicial notice of the dictionary definition of “bank” as being,
in relevant part, “an establishment for the custody, loan, exchange, or issue of money,
for the extension of credit, and for facilitating the transmission of funds.” There is no

6 Both definitions we cite are from Merriam-Webster.com. See, e.g., In re White Jasmine LLC,
106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online
dictionaries that exist in printed format or have regular fixed editions).
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question that these terms are, at the very least, highly suggestive of the identified
services, and indeed Applicant is seeking registration of the term NETBANK on the
Supplemental Register.
Nevertheless, to the extent Applicant is arguing that the mark in the cited
registration is merely descriptive and unprotectably weak, the mark, which is
registered on the Principal Register without a claim of acquired distinctiveness, is
entitled to a presumption of validity that cannot be challenged via this ex parte
proceeding. 15 U.S.C. § 1057(b). Therefore, while the cited mark is suggestive, and
may have some conceptual weakness, it is nevertheless well-recognized that even
weak marks are entitled to protection against a mark that is substantially similar
and is used on legally identical services, as here. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 109 (CCPA 1974).
C. The Marks
We next compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1692. 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); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here, the average purchaser
includes general consumers of payment processing and other identified services.
Applicant’s mark consists solely of the term NETBANK, in standard characters.
The mark in the cited Registration No. 4223571, is NETBANX, also in standard
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characters. Aside from arguing the weakness of the cited mark, Applicant does not
argue in its brief that the marks differ in sight, sound, connotation, or commercial
impression. We find that NETBANX is the phonetic equivalent of NET BANKS, the
plural form of Applicant’s NETBANK. See In re SnoWizard, Inc., 129 USPQ2d 1001,
1004, n.6 (TTAB 2018) (finding SNOBALLS to be the phonetic equivalent of
SNOWBALLS); In re Tapco Int’l Corp., 122 USPQ2d 1369, 1372 (TTAB 2017) (finding
KLEER to be the phonetic equivalent of CLEAR).
Although the spelling of NETBANK and NETBANX is slightly different, both
marks are highly similar in appearance, differing only in the final consonant (“k” or
“x”), and both would likely be pronounced in a very similar manner. The marks are
also likely to convey to consumers the same commercial impression of banking and
related services offered via the Internet.
Overall, we find the marks to be very similar in sight, sound, and especially in
commercial impression. Consumers are not likely to notice the slight difference of the
final letter. Alternatively, with legally identical goods, and highly similar marks,
consumers are likely to believe that the marks are variations of each other.
We find this first du Pont factor to also favor finding a likelihood of confusion.
D. Conditions of Sale
Applicant urges us to consider the sophistication and degree of purchaser care
likely to be exercised by the relevant consumers. However, there is no evidence of
record that would support finding that general consumers of payment processing and
other identified services would exercise a heightened degree of care. Rather, we must
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consider the degree of care that would be exercised by the least sophisticated
consumers, which here includes ordinary banking consumers, who are not
sophisticated purchasers, and who exercise an ordinary level of care. See Stone Lion
Capital 110 USPQ2d at 1163 (affirming that the Board properly considered all
potential purchasers for recited services, including both sophisticated and
unsophisticated investors, since precedent requires consumer care for likelihood-of-
confusion decision be based “on the least sophisticated potential purchasers”).
Overall, we find this factor to be neutral.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, even if not specifically discussed herein, we find that
the services are overlapping and legally identical, and we presume that they would
travel through some of the same channels of trade to some of the same general
consumers of payment processing and other identified services. We further find that
the marks are substantially similar in sight, sound, connotation, and especially
commercial impression. Accordingly, despite some suggestiveness of the cited mark,
NETBANX, we find a likelihood of confusion between Applicant’s mark NETBANK
and the mark in the cited Registration No. 4223571, NETBANX, for the services as
identified.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.