Capitol Federal Savings Bankv.Capital Educators Federal Credit Union DBA CapEd Federal Credit Union

Trademark Trial and Appeal Board

Sep 20, 2018

No. 92064165 (T.T.A.B. Sep. 20, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
Capitol Federal Savings Bank
v.
Capital Educators Federal Credit Union
DBA CapEd Federal Credit Union
________
Opposition No. 91232037
against Serial No. 87132380

Cancellation No. 92064165
against Registration No. 4817816
_______
Cheryl L. Burbach of Hovey Williams LLP for Capitol Federal Savings Bank.
Tracy L. Wright of Hawley Troxell Ennis & Hawley LLP for Capital Educators
Federal Credit Union.
_______
Before Cataldo, Shaw, and Coggins, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Capital Educators Federal Credit Union (“Defendant”) owns a registration for the
mark CAPED CREDIT UNION1 in standard characters and seeks registration of the

1 Registration No. 4817816, issued September 22, 2015.
Opposition No. 91232037 and Cancellation No. 92064165
2
mark ,2 both for “credit union services,” in International Class 36.
“CREDIT UNION” is disclaimed from each mark.
In its petition for cancellation and notice of opposition, Capitol Federal Savings
Bank (“Plaintiff”) alleges prior use and registration of the mark CAPFED, in standard
character form, for the following services recited in the pleaded registration:3
Banking, credit card transaction processing, and related
financial services, namely, providing financial analysis,
consultation, planning and management, commercial and
consumer lending, mortgage lending, and loan financing;
debit card services, electronic processing and transmission
of bill payment data, financial information in the nature of
rates of exchange, guaranteeing loans, mortgage banking,
safety deposit box services, savings account services,
automated teller machine services, and providing
investment analysis, consultation, planning, management,
advisory, brokerage, banking, and research services with
respect to stocks, mutual funds, securities, bonds,
commodities, real estate and other instruments of
investment, in International Class 36.
Plaintiff alleges that Defendant’s marks are likely to cause confusion with Plaintiff’s
CAPFED mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
In its answers, Defendant denies the salient allegations. In the cancellation
proceeding, Defendant asserts the affirmative defenses of laches, equitable estoppel,

2 Application Serial No. 87132380, filed August 9, 2016 based on an allegation of first use and
use in commerce as of October 1, 2008, pursuant to Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a). The description of the mark states: “The mark consists of the word ‘CapEd’ in large
font with the words ‘Credit Union’ centered below in smaller, all cap, font; a thick, bold,
outline surrounds all of the letters of all words with a thin break in the outline running
horizontally across the design between the word ‘CapEd’ and the words ‘Credit Union’.” Color
is not claimed as a feature of the mark.
3 Registration No. 4104054, issued February 28, 2012. Section 8 affidavit filed and accepted.
Opposition No. 91232037 and Cancellation No. 92064165
3
and acquiescence,4 and asserts a counterclaim to cancel Plaintiff’s pleaded
registration due to nonuse or, in the alternative, abandonment. Plaintiff denies the
allegations in the counterclaim.5
I. The Record
The parties filed a joint stipulation to have this case decided by the accelerated
case resolution (“ACR”) procedure discussed in Sections 528.05(a)(2) and 702.04 of
the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) (June 2018).6
The stipulation provides that in lieu of a trial, the Board will consider the parties’
evidence submitted in support of their earlier briefing on Defendant’s second motion
for summary judgment, without the requirement of notices of reliance or the need for
accompanying testimony. The parties further stipulated that they may offer into
evidence witness testimony of facts and documentary evidence, through their
respective ACR briefs, by sworn declaration and attached exhibits. Documents
produced through discovery may also be offered into evidence without accompanying
testimony. The Board, on April 16, 2018, approved the stipulation.7
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the involved application and registrations. In
addition, pursuant to the Parties’ ACR stipulation, the parties’ admitted the following

4 The defenses of laches, equitable estoppel, and acquiescence also were pleaded in the
opposition proceeding, but were struck by order of the Board because they are not applicable
in opposition proceedings. 21 TTABVUE 4. See Nat’l Cable Television Ass’n Inc. v. Am.
Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).
5 Proceedings in the opposition and cancellation were consolidated by order of the board on
April 20, 2017.
6 27 TTABVUE.
7 28 TTABVUE.
Opposition No. 91232037 and Cancellation No. 92064165
4
evidence, inter alia, from their respective briefs on the motion for summary judgment
or from their ACR briefs.
For Plaintiff:
1. Declaration of Rebecca B. Moore, First Vice President and Director of
Marketing for Plaintiff, with exhibits.8
2. First Declaration of Cheryl L. Burbach, Counsel for Plaintiff, with exhibits
comprising internet web pages, the parties’ responses to interrogatories and
requests for production, and third party registration certificates for
banking and credit union services.9
3. Plaintiff’s Marketing Expenses.10
4. Excerpts -from Plaintiff’s web site.11
5. Second Declaration of Cheryl L. Burbach, with exhibit.12
6. Second Declaration of Rebecca B. Moore, with exhibits.13
7. Third Declaration of Cheryl L. Burbach, with exhibits.14
For Defendant:
1. Affidavit of Todd Christensen, Senior Vice President of Marketing and
Business Development for Defendant, with exhibits.15

8 16 and 17 TTABVUE.
9 18 and 19 TTABVUE.
10 30 TTABVUE 44.
11 29 TTABVUE 45-55.
12 29 TTABVUE 58-68.
13 33 TTABVUE 32-54.
14 33 TTABVUE 55-80.
15 12 TTABVUE 27-34.
Opposition No. 91232037 and Cancellation No. 92064165
5
2. Affidavit of Tracy L. Wright, Counsel for Defendant, with exhibits
comprising web pages and the parties’ objections and responses to
interrogatories and requests for production.16
3. Confidential declaration of Todd Christensen, with exhibits.17
4. Declaration of Tracy L. Wright, with exhibits.18
5. Second Declaration of Tracy L. Wright, with exhibits.19
II. Evidentiary Objections
Plaintiff objects to Defendant’s exhibits AA-1, portions of AA-2, and BB-5 on the
grounds that they are internet excerpts without the required date of download and
URL.20 Plaintiff further objects to several of Defendant’s exhibits because the web
site download dates don’t match the dates given in a supporting declaration and
because some publically-available material has improperly been designated as
confidential.21
Regarding the internet excerpts without the required date and URL, we overrule
Plaintiff’s objections. These exhibits are properly made of record by declarations
which include the URL and sufficient date information.22 With regard to the
remaining objections, we employ the standards the Board has noted before:
[T]he Board is capable of weighing the relevance and
strength or weakness of the objected-to testimony and

16 12 TTABVUE 35-508; 13 TTABVUE.
17 The confidential declaration is at 32 TTABVUE 41-44. The public exhibits are at 31
TTABVUE 43-59.
18 31 TTABVUE 60-253.
19 34 TTABVUE 15-26.
20 33 TTABVUE 7.
21 Id.
22 32 TTABVUE 42-44 and 63-65.
Opposition No. 91232037 and Cancellation No. 92064165
6
evidence, including any inherent limitations. . . . [W]e find
no basis on which to strike any testimony or other evidence.
As necessary and appropriate, we will point out any
limitations in the evidence or otherwise note that the
evidence cannot be relied upon in the manner sought. We
have considered all of the testimony and evidence
introduced into the record. In doing so, we have kept in
mind the various objections raised by the parties and we
have accorded whatever probative value the subject
testimony and evidence merit.
Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB
2017). In short, “we simply accord the evidence whatever probative value it deserves,
if any at all. . . . Ultimately, the Board is capable of weighing the relevance and
strength or weakness of the objected-to testimony and evidence in this specific case,
including any inherent limitations, and this precludes the need to strike the
testimony and evidence.” Hunt Control Sys. Inc. v. Koninkijke Philips Elec. N.V., 98
USPQ2d 1558, 1564 (TTAB 2011).
III. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1061-62 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d
360 (2015); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
187-89 (CCPA 1982) see also, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d 1340, 1344 (TTAB 2017). In order to meet the standing requirement, a
plaintiff need only show that it has a real interest, i.e., a personal stake, in the
outcome of the proceeding, and a reasonable basis for its belief of damage. See Ritchie
v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Coach
Opposition No. 91232037 and Cancellation No. 92064165
7
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727(Fed.
Cir. 2012). A belief in likely damage can be shown by establishing a direct commercial
interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000).
Plaintiff’s standing in these consolidated proceedings is established by its pleaded
registration, which the record shows to be valid and subsisting, and owned by
Plaintiff. Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v. BaseOneLabs LLC,
105 USPQ2d 1252, 1254 (TTAB 2012). In addition, as discussed infra, because
Plaintiff’s pleaded registration is of record, priority is not an issue with respect to the
services identified in Opposer’s registration. Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
Plaintiff’s opposition and cancellation proceedings endow Defendant with
standing to pursue its counterclaims to cancel Plaintiff’s pleaded registration. Finanz
St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007)
(applicant subject to opposition has inherent standing to counterclaim for
cancellation); Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d
1492, 1502 (TTAB 2005) (“Applicant, by virtue of its position as defendant in the
opposition, has standing to seek cancellation of the pleaded registrations.”) (citation
omitted).
IV. Affirmative Defenses of Laches, Equitable Estoppel, and Acquiescence
Defendant argues that the ten-month delay between registration of its mark and
the filing of the cancellation proceeding, coupled with “great economic prejudice”
Opposition No. 91232037 and Cancellation No. 92064165
8
should its mark be cancelled, “warrants the application of the affirmative defense of
laches and [Plaintiff’s] cancellation proceeding should be dismissed.”23
The equitable principle of laches is available as an affirmative defense that may
be raised in answer to a cancellation proceeding based on likelihood of confusion.
Trademark Act Section 19, 15 U.S.C. § 1069; Trademark Rule 2.106(b)(2), 37 C.F.R.
§ 2.106(b)(2); TBMP § 311.02(b). The elements of a laches defense are: (1)
unreasonable delay in assertion of one’s rights against another; and (2) material
prejudice to the latter attributable to the delay. See Bridgestone/Firestone Research
Inc. v. Automobile Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460,
1462 (Fed. Cir. 2001) (“Mere delay in asserting a trademark related right does not
necessarily result in changed conditions sufficient to support the defense of laches.
There must also have been some detriment due to the delay.”).
We first consider the element of unreasonable delay in assertion of rights. “In
determining whether a party has too long ‘slept on its rights’ it is necessary to show
that the party knew or should have known that it had a right of action, yet did not
act to assert or protect its rights.” Bridgestone/Firestone, 58 USPQ2d at 1462. “In the
absence of actual notice before the close of the opposition period, the date of
registration is the operative date for calculating laches.” Christian Broad. Network,
Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1572 (TTAB 2007). Defendant has not
alleged earlier actual notice, so we calculate the time until Plaintiff’s challenge from

23 Defendant’s Main Br., p. 27, 31 TTABVUE 35.
Opposition No. 91232037 and Cancellation No. 92064165
9
the issue date of Defendant’s registration, September 22, 2015. Plaintiff filed the
cancellation proceeding ten months later, on July 21, 2016.
A ten month delay is a relatively brief period of time. Defendant has not cited, nor
have we found, any cases supporting such a short period of time as sufficient to
support a laches claim. See Nashin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1263
(TTAB 2013) (18 months not sufficient to establish laches); Charrette Corp. v. Bowater
Commc’n Papers Inc., 13 USPQ2d 2040, 2043 (TTAB 1989) (14 month delay not
sufficient to establish laches). Nevertheless, we must also consider Defendant’s
prejudice because the two factors of unreasonable delay and prejudice must be
considered together.
Defendant argues that
[It] has spent a considerable amount of resources on
advertising and the accumulation of good will. For
example, since registering its mark, [Defendant] has spent
[millions of dollars] in advertising its mark. . . . It has
opened six new branches. . . . The mark, CapEd, is
prominently displayed on each of those locations. . . . The
mark is used on all of [Defendant’s] branding materials and
products and has been used in print advertising, direct
mailings, trade shows, and television commercials, as well
as on billboards, apparel, radio spots, the internet and
company vehicles. . . . It is an integral part of [Defendant’s]
marketing and business models. . . . Cancellation of the
mark at this time would clearly result in great economic
prejudice to [Defendant].24
Defendant’s argument that it will be prejudiced by Plaintiff’s delay is not well
taken. The testimony regarding Defendant’s advertising expenditures and six new

24 Defendant’s Main Br., p. 27, 31 TTABVUE 35.
Opposition No. 91232037 and Cancellation No. 92064165
10
branches covers the period from Defendant’s first use of its mark in 200825 not, as
Defendant argues, “since registering its mark.” In addition, Plaintiff sent Defendant
a cease and desist letter on March 9, 2016, less than six months after its mark
registered on September 22, 2015. This further reduced the time period in which
Defendant could claim it suffered material prejudice because it was not aware
Plaintiff intended to enforce its rights in its mark.
Given the mere ten month delay in the filing of the cancellation proceeding and in
light of the absence of evidence regarding prejudice attributable to the delay, we find
that Defendant has not established that Plaintiff’s claim is barred by laches. See
Bridgestone/Firestone, 58 USPQ2d at 1462 (party raising the affirmative defense of
laches has the burden of proving it).
Regarding the affirmative defenses of equitable estoppel and acquiescence,
Defendant argues that
By failing to object to [Defendant’s] mark during the
opposition period and by waiting for approximately one
year before filing its cancelation petition, [Plaintiff] lulled
[Defendant] into believing that its mark was unopposed.
This reliance caused [Defendant] to spend substantial
amounts of resources in promoting its mark, which
[Plaintiff] now contests.26
The elements required to establish the defense of equitable estoppel are (1)
misleading conduct, which may include not only statements and action but silence
and inaction, leading another to reasonably infer that rights will not be asserted
against it; (2) reliance upon this conduct; and (3) due to this reliance, material

25 Declaration of Todd Christensen, Paras. 14 and 15, 32 TTABVUE 43.
26 Defendant’s Main Br., p. 27, 31 TTABVUE 35.
Opposition No. 91232037 and Cancellation No. 92064165
11
prejudice if the delayed assertion of such rights is permitted. See Lincoln Logs Ltd. v.
Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir.
1992). “Acquiescence is a type of estoppel that is based upon the plaintiff’s conduct
that expressly or by clear implication consents to, encourages, or furthers the
activities of the defendant, that is not objected to.” Christian Broad. Network, 84
USPQ2d at 1573.
The record does not support Defendant’s assertion that it was led by Plaintiff to
infer that Plaintiff would not assert its rights in its CAPFED mark against
Defendant’s use of the CAPED CREDIT UNION mark. Rather, the record shows that
Plaintiff voiced its concerns about the CAPED CREDIT UNION mark beginning
shortly after registration. Simply put, Defendant could not have reasonably believed
that Plaintiff would consent to Defendant’s use of the CAPED CREDIT UNION mark
merely because Plaintiff did not oppose Defendant’s mark. Such an interpretation
would render the cancellation process pointless. Accordingly, Defendant has not
demonstrated that Plaintiff’s claim is barred by the doctrine of equitable estoppel or
acquiescence.
V. Defendant’s Counterclaim for Cancellation of Plaintiff’s Mark
We next turn to Defendant’s counterclaim to cancel Plaintiff’s registration for the
mark CAPFED on the grounds of non-use and abandonment. A petitioner seeking
cancellation of a registration on the ground of nonuse or abandonment bears the
burden of proving such nonuse or abandonment by a preponderance of evidence.
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
Opposition No. 91232037 and Cancellation No. 92064165
12
A. Non-use
We begin with Defendant’s allegation of nonuse of Plaintiff’s mark on the services
identified in the registration. Defendant’s counterclaim for cancellation alleges, inter
alia, that:
3. The term “CAPFED” has never been used by
[Plaintiff] as a trademark in interstate commerce for
source identification relative to the goods or services
claimed in Registration No. 4104054.
4. Rather, [Plaintiff] has used the term “CAPFED” only
intermittently, on occasion, and only textually, but not for
source identification purposes in the ordinary course of
interstate commerce.27
Based on its review of Plaintiff’s website and advertising materials, Defendant
argues that CAPFED “appears only occasionally in a nominative sense, as part of
[Plaintiff’s] phone number, or as part of a URL, but its use is textual or informational
and performs no source identification function relative to the services claimed in Reg.
No. 4,104,054.”28 In other words, Defendant is not arguing that Plaintiff is not
providing banking services, but rather that Plaintiff does not use CAPFED as a
service mark to identify these services. Plaintiff responds that its mark “is, and has
been for over 20 years, prominently displayed throughout [Plaintiff’s] marketing and
advertising materials and campaigns.”29
The statutory basis for a claim of nonuse under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), is that there was no use of the mark prior to the filing date of the

27 Defendant’s Answer and Counterclaim in Cancellation No. 92064165, 4 TTABVUE 7.
28 Defendant’s Main Br., p. 29, 31 TTABVUE 37.
29 Plaintiff’s Rebuttal Br., p. 6, 33 TTABVUE 12.
Opposition No. 91232037 and Cancellation No. 92064165
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application. See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB
2012). Use of a mark in commerce is defined by Section 45 of the Trademark Act:
[A] mark shall be deemed to be in use in commerce—
* * *
(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one State
or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection
with the services.
15 U.S.C. § 1127.
To function as a service mark, a mark must be used in a manner that creates in
the minds of potential consumers a direct association between the mark and the
services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (CCPA
1973) (“The minimum requirement is some direct association between the offer of
services and the mark sought to be registered therefor.”); In re Adver. & Mktg. Dev.,
Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (“The ‘direct
association’ test does not create an additional or more stringent requirement for
registration; it is implicit in the statutory definition of ‘a mark used * * * to identify
and distinguish the services of one person * * * from the services of others and to
indicate the source of the services.’” (Citations omitted)).
Two representative specimens from Application Serial No. 85138789, the
application underlying Plaintiff’s registration, appear below.
Opposition No. 91232037 and Cancellation No. 92064165
14
30
This specimen clearly shows use of the term CAPFED in the heading “About
CapFed” in connection with a web page touting the bank’s 115-year history. The term
CAPFED also is used in a link to “CapFed Careers” for persons seeking employment
with the bank, as well part of a heading for the bank’s contact information. The fact
that CAPFED appears as part of Plaintiff’s phone number, 1-888-8CAPFED, below
the wording “Contact CapFed,” does not diminish the trademark significance of
Plaintiff’s use of the mark because telephone numbers may be registered as marks.
Contrary to Defendant’s argument, vanity telephone numbers (that is, a telephone
number that has been partly or fully converted into words, where the words form a
mnemonic tool for remembering the number) are registrable when perceived as

30 Application Serial No. 85138789 filed on September 27, 2010, TSDR p. 5.
Opposition No. 91232037 and Cancellation No. 92064165
15
source-identifying and as more than simply a means for contacting the applicant. See
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001) (holding “1-888-MATRESS” registrable as a descriptive mark with secondary
meaning). The same is true for domain names—they can be registered if they serve
as marks. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
Cir. 2004). A second specimen from Plaintiff’s application appears below.
31

31 Id. at 6.
Opposition No. 91232037 and Cancellation No. 92064165
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This second specimen shows use of the CAPFED mark in association with “smart
ATMs.” The web page uses the heading “CapFed Smart ATMs” and advises
consumers to “Watch for signage when you visit a CapFed ATM.” These specimens
are sufficient to show that Plaintiff was using the CAPFED as a mark in association
with banking services at least as early as the filing date of the underlying application.
Relying on In re Osterberg, 83 USPQ2d 1220 (TTAB 2007), Defendant
nevertheless argues that Plaintiff “has relegated its mark to footnote status or
otherwise demoted it so that a consumer would not see it as indicating source.”32 This
reliance is misplaced. In Osterberg, applicant claimed the specimen of record was a
display associated with goods, not services. Further, the mark was “[b]uried in the
middle of the text” describing the goods. Osterberg, 83 USPQ2d at 1223. Here,
Plaintiff’s mark is used with services and, as seen supra, the mark is not “buried in
the middle of text.” We find that Plaintiff’s mark clearly performs a source identifying
function in these specimens.
Defendant’s counterclaim for cancellation on the ground of non-use is dismissed.
B. Abandonment
Defendant further alleges that even “[i]f it is determined that CAPFED was used
as a trademark at some point in the past, then it has been abandoned, per 15 U.S.C.
§ 1064(3), due to [Plaintiff’s] failure to utilize the mark . . . .”33
Section 45 of the Act, 15 U.S.C. § 1127, in pertinent part, defines “abandonment”
of a mark as follows:

32 Defendant’s Main Br., p. 30, 31 TTABVUE 38.
33 Id.
Opposition No. 91232037 and Cancellation No. 92064165
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When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
There are two elements to an abandonment claim: (1) discontinuance of use; and
(2) an intent not to resume use. A plaintiff must show both of these elements unless
it can show three years of nonuse, which prima facie establishes abandonment, in
which case the burden shifts to the defendant to show either that it has used the
mark, or that it has an intent to resume use. See Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 13 USPQ2d at 1309.
Defendant does not allege that Plaintiff abandoned its mark on any particular
date. Instead, as with its non-use claim, Defendant simply alleges that Plaintiff has
not used its CAPFED mark as a trademark, thus causing it to become abandoned:
[Plaintiff] has failed to use CAPFED in a trademark
manner. Within the material in evidence in this case,
CAPFED is relegated to footnote-status and used in a
phone number and URL. This is not bona fide trademark
use in the ordinary course of trade, and it demonstrates
[Plaintiff’s] intent is to only use CAPFED in such a way
going forward. This is the use shown by [Plaintiff] in its
evidence for its use of CAPFED for the last 3 years and
thus, under 15 U.S.C. § 1127 . . . it should be determined
that the mark has been abandoned by [Plaintiff].34
We find that Defendant has not established a prima facie showing of
abandonment. As discussed supra, Plaintiff uses its CAPFED mark to identify its
banking services and has provided numerous examples of advertising associating the

34 Id. at 30-31, 31 TTABVUE 38-39.
Opposition No. 91232037 and Cancellation No. 92064165
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mark with banking services from 1996 to the present.35 The following two examples
are representative of Plaintiff’s use of CAPFED in association with its banking
services.
36
37

35 See Moore Dec., 16 TTABVUE.
36 Moore Dec., Exh. A-3, 16 TTABVUE 119.
37 Moore Dec., Exh. A-7, 16 TTABVUE 198.
Opposition No. 91232037 and Cancellation No. 92064165
19
The first example shows use of CAPFED in association with online bank
statements or “eStatements.” The second example shows use of CAPFED in
association with a 2016 offer for a “President’s Day” certificate of deposit. These
examples establish that Plaintiff continues to use CAPFED as a service mark
associated with banking services.
Defendant’s counterclaim for cancellation on the ground of abandonment is
dismissed.
VI. Likelihood of Confusion
We turn now to Plaintiff’s claim alleging likelihood of confusion. Our
determination under Section 2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Plaintiff must
establish that there is a likelihood of confusion by a preponderance of the evidence.
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Varying
weights may be assigned to each du Pont factor depending on the evidence presented.
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir.
1993). The relevant du Pont factors in this proceeding are discussed below.
C. Similarity of the services
We begin with consideration of the parties’ respective services, noting that it is
well settled that Plaintiff’s and Defendant’s services do not have to be identical or
Opposition No. 91232037 and Cancellation No. 92064165
20
directly competitive to support a finding that there is a likelihood of confusion. On-
line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000). It is sufficient if the respective services are related in some manner and/or that
the conditions surrounding their marketing are such that they would be encountered
by the same persons under circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the mistaken belief that they
emanate from or are associated with a single source. In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993).
Defendant’s services are “credit union services.” A “credit union” is defined as “a
cooperative association that makes small loans to its members at low interest rates
and offers other banking services (such as savings and checking accounts).”38
Plaintiff provides a variety of banking services:
Banking, credit card transaction processing, and related
financial services, namely, providing financial analysis,
consultation, planning and management, commercial and
consumer lending, mortgage lending, and loan financing;
debit card services, electronic processing and transmission
of bill payment data, financial information in the nature of
rates of exchange, guaranteeing loans, mortgage banking,
safety deposit box services, savings account services,
automated teller machine services, and providing
investment analysis, consultation, planning, management,
advisory, brokerage, banking, and research services with
respect to stocks, mutual funds, securities, bonds,
commodities, real estate and other instruments of
investment.

38 Https://www.merriam-webster.com/dictionary/credit/union. The Board may take judicial
notice of dictionary definitions, including online dictionaries which exist in printed format.
See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); see also Univ. of Notre
Dame du Lac v. J. C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91232037 and Cancellation No. 92064165
21
Plaintiff argues that its banking services and Defendant’s credit union services
are identical. In support, Plaintiff introduced an excerpt from Defendant’s website
explaining the history of credit unions stating “We have 9 branches to serve all of
your banking needs and ATMs near where ever [sic] you are.”39
Plaintiff also introduced approximately thirty third-party trademark registrations
identifying both credit union services and banking services40 as well as registrations
owned by credit unions using the terms “bank” or “banking” in their marks.41
Although these third-party registrations are not evidence that the registered marks
are in use or that the public is familiar with them, they nonetheless have probative
value to the extent they are based on use in commerce and serve to suggest that the
credit union and banking services are of a kind which may emanate from a single
source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009); In re Albert Trostel, 29 USPQ2d at 1785-86. Further, the fact that a
number of credit unions use the terms “bank” or “banking” in trademarks to identify
their services suggests there is little difference between the services offered by credit
unions and banks.
Based on the foregoing evidence, we find that Defendant’s credit union services
are subsumed within Plaintiff’s banking services. That is, credit union services are a
type of banking service. Defendant nevertheless argues that the services differ
because “there are clear and important differences in the services [Defendant] and

39 Exh. B-12 to Moore Dec., www.caped.com/its-a-money-thing/why-is-it-called-a-credit-
union/, 18 TTABVUE 66-71.
40 Exh. B-13 to Moore Dec., 18 TTABVUE 72-134.
41 Exh. B-14 to Moore Dec., 18 TTABVUE 135-203.
Opposition No. 91232037 and Cancellation No. 92064165
22
[Plaintiff] provide.”42 Although we recognize that there are distinctions between
credit unions and banks, particularly the need for membership or affiliation in the
former, these differences do not affect the nature of the services provided. At a
minimum, both services provide savings and checking accounts, access to ATM’s, and
lending services. Thus it is no surprise that credit unions, including Defendant,
frequently describe themselves as providing “banking” services.
The du Pont factor relating to the similarity of the services favors a finding of a
likelihood of confusion.
D. Channels of trade and classes of consumers
In making our determination regarding the similarity or dissimilarity of the
parties’ channels of trade we look, as we must, to the services as identified in the
involved application and registrations. See Octocom Sys, Inc. v. Hous. Computs.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Here, none of the
recitations recite any restrictions as to the channels of trade in which they may be
encountered. Inasmuch as Defendant’s credit union services are subsumed within
Plaintiff’s more broadly-worded banking services, the services are in-part legally
identical and are “presumed to travel in the same channels of trade to the same class
of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

42 Defendant’s Main Br., p. 16, 31 TTABVUE 24.
Opposition No. 91232037 and Cancellation No. 92064165
23
Even assuming, arguendo, that the services are not legally identical, they
nevertheless travel in the same channels of trade to the same types of customers,
particularly because Plaintiff’s unrestricted services could include customers
affiliated with education. Both services are, in part, offered online,43 and are rendered
to members of the general public who need savings or checking accounts, access to
ATM’s, or lending services. As a result, the same classes of consumers are likely to
encounter both parties’ marks.
This du Pont factor favors a finding of likelihood of confusion.
E. Conditions of sale
We turn next to the fourth du Pont factor, the conditions under which and buyers
to whom sales are made. Citing a 2009 Rand Corporation survey of bank and credit
union consumers, Defendant argues that “consumers deliberate over the financial
institution they choose, and base their decision on specific criteria—which are
different for credit union members and bank customers.”44 We note that we must
make our determination based on the least sophisticated purchaser. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014) (likelihood-of-confusion decision must be based “on the least
sophisticated potential purchasers”). Nevertheless, we agree that even such
consumers may exercise a certain degree of care in financial matters. On the other
hand, it is well settled that “human memories even of discriminating purchasers . . .
are not infallible. In re Research and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50

43 Exhs. B-6 and B-11 to Burbach Dec., 18 TTABVUE 44-47 and 59-65.
44 Defendant’s Main Br., p. 21, 31 TTABVUE 29.
Opposition No. 91232037 and Cancellation No. 92064165
24
(Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). Overall, we find this factor to slightly
weigh against finding a likelihood of confusion.
F. Strength of Plaintiff’s mark
We consider the strength of Plaintiff’s mark in order to evaluate the scope of
protection to which it is entitled. Defendant argues that Plaintiff’s mark “is weak, as
it has not achieved any fame in the marketplace, and therefore is entitled only to
limited protection.”45 Plaintiff maintains that “[t]he strength of the CapFed® Mark is
established by [Plaintiff’s] long-term continuous and prominent use, customer
recognition and association with [Plaintiff’s] services, and the suggestive or fanciful
nature of the CapFed® Mark.”46
The strength of a mark rests on the extent to which “a significant portion of the
relevant consuming public . . . recognizes the mark as a source indicator.” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (citing Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). A very
strong mark receives a wider latitude of legal protection in the likelihood of confusion
analysis. See Palm Bay, 73 USPQ2d at 1694 (strong marks “enjoy wide latitude of
legal protection” and are “more attractive as targets for would-be copyists”).
In determining strength of a mark, we consider both inherent or conceptual
strength, based on the nature of the mark itself, and fame or commercial strength.

45 Id. at 20, 31 TTABVUE 28.
46 Plaintiff’s Main Br., 20, 29 TTABVUE 29.
Opposition No. 91232037 and Cancellation No. 92064165
25
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”); MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. June 2018) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Plaintiff claims that its CAPFED mark evolved from customers shortening its
name: “[CAPFED] was conceived of by our customers as a ‘nick-name’ to identify us
as the source of services provided by Capitol Federal Savings Bank, and was soon
after adopted as an identifying trademark because of consumer’s steadfast
identification of our bank as CapFed.”47 The record does not show any other meaning
for the term CAPFED.
Defendant argues that the existence of twenty-seven third-party registrations48
for marks beginning with “Cap” for “banking” and “financial” services in
International Class 36 establishes that Plaintiff’s mark is “‘relatively weak,’ and
entitled only to limited protection.”49
When assessing the inherent strength of a mark, third-party registrations for
similar goods or services may be relevant to show the sense in which a mark is used

47 Moore Dec., p. 3, 16 TTABVUE 3.
48 31 TTABVUE 153-246.
49 Defendant’s Main Br., p. 24, 31 TTABVUE 32.
Opposition No. 91232037 and Cancellation No. 92064165
26
in ordinary parlance; that is, an element common to both parties’ marks may have a
normally understood and well-recognized descriptive or suggestive meaning, leading
to the conclusion that the common element is relatively weak. 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).
We find the third-party registrations do not support Defendant’s argument that
CAPFED is weak. The majority of the marks have no relevant similarity to Plaintiff’s
CAPFED mark. Some of the marks include the entire term “capital” without the term
“fed” or “federal,” e.g., CAPITAL CITY BANK and design, CAPITAL FOR CHANGE,
CAPITAL ONE, and CAPITAL WEST. Eight registrations include the word “Cape,”
such as CAPE ANN SAVINGS BANK, or CAPE COD. The few marks that use the
term “cap” combine it with other significantly different matter, e.g., CAPSTAR BANK
and CAPWEST MORTGAGE, or use it with coined term, e.g., CAPAHA BANK and
CAPACCEL. Taken as a whole, these third-party registrations are too different in
connotation and too few in number to establish that Plaintiff’s mark is relatively
weak and entitled only to limited protection.
The third-party evidence here is far less voluminous and compelling than that
found in other cases. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1673 n.1 (Fed. Cir. 2015). See also Primrose Retirement
Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB
2016) (weakness found based on, inter alia, at least 85 actual uses of ROSE-formative
marks for similar services, eight similar third-party registrations, and expert
Opposition No. 91232037 and Cancellation No. 92064165
27
testimony and other evidence regarding the common nature of ROSE-formative
marks in the industry). In light of the absence of any other meaning and the lack of
any evidence of third-party use of a combination of the terms “cap” and “fed”, we find
that Plaintiff’s CAPFED mark used in association with banking services is
conceptually strong.
Regarding the commercial strength of its mark, Plaintiff contends that “[a]s a
result of [its] advertising and marketing efforts, the CapFed® Mark has gained
tremendous strength through consumer recognition over the past 22 years.”50
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Palm Bay, 73 USPQ2d at 1694 (internal citations omitted).
Strength may be measured indirectly by the volume of sales and advertising
expenditures in connection with the services sold under the mark, and other factors
such as length of time of use of the mark; widespread critical assessments; notice by
independent sources of the services identified by the marks; and the general
reputation of the services. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109
USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as
appropriate proof of strength).
Plaintiff began using the CAPFED mark in 1996 and also uses the internet
domain www.capfed.com and the telephone number 1888-8CAPFED.51 By 2007

50 Plaintiff’s Main Br., p. 20, 29 TTABVUE 29.
51 Moore Dec., para. 7, 16 TTABVUE 3.
Opposition No. 91232037 and Cancellation No. 92064165
28
CAPFED had become Plaintiff’s primary mark.52 Plaintiff promotes its services under
the CAPFED mark and targets the general consuming public via radio, television
advertising, print advertising, Plaintiff’s website, sponsorship events, social media
outlets, and its YouTube channel, CapFed TV.53 Between 2007 and 2016, Plaintiff
spent significant sums on marketing services under the CAPFED mark.54 CAPFED
has been recognized in news stories and by awards for the quality of its banking
services.55
Based on foregoing, we find CAPFED to be both conceptually strong and
commercially strong. The CAPFED mark is therefore entitled to a broad scope of
protection. Palm Bay, 73 USPQ2d at 1694
G. Absence of actual confusion
Defendant argues that despite ten years of concurrent use of the parties’ marks
along with millions of dollars spent in advertising, “no one has reported any
confusion, whatsoever, regarding the source of services offered under the marks. In
light of such evidence, lack of actual confusion should carry substantial weight in
determining there is no likelihood of confusion with respect to the marks in
question.”56
Defendant’s reliance on the lack of actual confusion is misplaced. “The absence of
any reported instances of confusion is meaningful only if the record indicates

52 Second Moore Dec., para. 7, 33 TTABVUE 33.
53 Moore Dec., para. 19, 16 TTABVUE 4.
54 Id. at para. 20, 16 TTABVUE 5. Plaintiff’s marketing expenditures are confidential so we
discuss them in general terms.
55 Exhs. A-10 and A-11 to Moore Dec., 16 TTABVUE 217-25.
56 Defendant’s Main Br., p. 22, 31 TTABVUE 30.
Opposition No. 91232037 and Cancellation No. 92064165
29
appreciable and continuous use by applicant of its mark for a significant period of
time in the same markets as those served by opposer under its marks.” Citigroup Inc.
v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011). The parties admit that they have been using
their marks in different geographic areas, and there is no evidence that would allow
us to assess the extent to which there has been a meaningful opportunity for
confusion to occur.57 Defendant’s services are offered in and around the State of Idaho
and Plaintiff’s services are offered primarily in Kansas and western Missouri.
We find the absence of any actual confusion does not weigh in Defendant’s favor.
See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903
(Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if
any, probative value.”). In any event, “it is unnecessary to show actual confusion in
establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is neutral.
H. Similarity of the marks
Turning to the first du Pont factor, involving the comparison of the marks, we
consider them “in their entireties as to appearance, sound, connotation and

57 The converse, however, is not true. Plaintiff’s registration is unrestricted and national in
scope, as are Defendant’s current registration and the registration that Defendant seeks. The
parties are entitled to a presumption of exclusive right to use of their registered marks
throughout the United States under Trademark Act Section 7(b), regardless of their actual
extent of use. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
393 (Fed. Cir. 1983). Even though the parties’ actual businesses are conducted in discrete
areas of the country, we must consider whether there would be a likelihood of confusion if the
parties were to use their marks in connection with their respective services in the same area;
but this presumption does not apply in the question of lack of actual confusion.
Opposition No. 91232037 and Cancellation No. 92064165
30
commercial impression.” Palm Bay, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ
at 567). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721 (citation omitted). The appropriate emphasis is on the recollection of the average
customer, who normally retains a general rather than a specific impression of
trademarks or service marks. Spoons Rests., Inc. v. Morrison, Inc., 23 USPQ2d 1735,
1741 (TTAB 1991) (citations omitted), aff’d mem. unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). See Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
233, 234 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740
(TTAB 2014). As previously stated, the average purchasers include ordinary
consumers seeking general banking services.
Plaintiff’s mark is CAPFED in standard characters and, therefore, “could be used
in any typeface, color, or size, including the same stylization actually used . . . by the
other party, or one that minimizes the differences or emphasizes the similarities
between the marks.” Anheuser- Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1823 (TTAB 2015) (citing Citigroup, 98 USPQ2d at 1258-59).
Beginning with Defendant’s CAPED CREDIT UNION standard character mark,
we cannot help but notice the similarity in sound of the terms CAPFED and CAPED.
Both terms are nearly identical in pronunciation. Similarity in sound alone may be
sufficient to support a finding that the marks are confusingly similar. In re White
Opposition No. 91232037 and Cancellation No. 92064165
31
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see also In re 1st USA Realty Prof’ls,
Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP § 1207.01(b)(iv) (Oct. 2017).
In addition, CAPED appears first in Defendant’s mark which increases the
similarity of the marks. Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”).
Further, we consider CAPED to be the most dominant portion of Defendant’s mark
inasmuch as CAPFED is the only word in Plaintiff’s mark and because the wording
CREDIT UNION, in Defendant’s mark, is generic and disclaimed. See In re Viterra
Inc., 101 USPQ2d at 1908 (the court may place more weight on a dominant portion of
a mark, for example if another feature of the mark is descriptive or generic standing
alone, however, the ultimate conclusion nonetheless must rest on consideration of the
marks in total); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant
portion of the mark THE DELTA CAFE); In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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 consideration of the marks in their
entireties.”).
In terms of connotation and commercial impression, neither CAPFED nor CAPED
has any meaning in relation to the parties’ services. There is nothing in the record to
support a finding that the term “CAPED” in Defendant’s mark will be perceived by
Opposition No. 91232037 and Cancellation No. 92064165
32
consumers of banking and credit union services as the term “caped.” Thus consumers
will likely view them as arbitrary or coined terms. When, as here, both marks are
coined terms that look alike and sound alike, and there are no known differences in
meaning to distinguish them, the marks are often found to engender a similar
commercial impression. See Inter IKEA Sys, 110 USPQ2d at 1740 n.18.
When we look at the marks as a whole, we find that the slight difference in
pronunciation of CAPFED and CAPED, and the inclusion of the generic wording
“CREDIT UNION” in Defendant’s mark, is not sufficient to distinguish the marks.
When we compare CAPFED to Defendant’s design mark, the
analysis is much the same. Because Plaintiff’s CAPFED mark is in standard
characters, it can be displayed in a font style and size similar in appearance to
Defendant’s stylized wording. Citigroup, 98 USPQ2d at 1258-59. In addition, the
dominant wording is similar in sound, connotation, and commercial impression for
the reasons discussed, supra.
Defendant argues that the background of the mark forms a “cloud design” and “is
the dominant element of the design mark, and thus it forms the primary commercial
impression remembered by consumers.”58 We disagree. The rounding of the upper
portions of the mark to match the shape of the letters is minor when compared to the
significance of the wording. It is well settled that in the case of marks consisting of
words and a design, the words are normally accorded greater weight because the

58 Defendant’s Main Br., p. 7 n.4, 31 TTABVUE 15.
Opposition No. 91232037 and Cancellation No. 92064165
33
words are likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the goods or services. See In re Viterra,
101 USPQ2d at 1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir 1983)).
In this instance, contrary to Defendant’s argument, we find that the commercial
impact of the “cloud design” in Defendant’s marks is similar to a background “carrier”
and acts as a “frame” for the word portion of the mark. That is, the minimal shaping
of the background design adds little to consumer’s likely perception of the mark. See
In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“[C]ommon
geometric shapes such as circles, squares, rectangles, triangles and ovals, when used
as backgrounds for the display of word marks, are not regarded as trademarks for the
goods to which they are applied absent evidence of distinctiveness of the background
design alone.”); Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB
1990) (a common, geometric shape, particularly one serving as a carrier or
background design element is not usually considered distinctive).
For the foregoing reason, we find that Plaintiff’s CAPFED mark and Defendant’s
CAPED and marks to be more similar than dissimilar in overall
sound, connotation, and commercial impression.
VII. Balancing the factors
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant du Pont factors. Defendant’s CAPED
Opposition No. 91232037 and Cancellation No. 92064165
34
FEDERAL CREDIT UNION marks are similar in sound, connotation, and
commercial impression to Plaintiff’s pleaded mark CAPFED. Although the marks are
not identical, marks must be considered in light of the fallibility of memory. In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). The differences
between the marks are minor and could be overlooked or misremembered. The
services at issue are legally identical. They are marketed through some of the same
trade channels, and would be selected with only some extra care on the part of
customers. Because of the strength of the cited mark, we afford it a broad scope of
protection. We find that Defendant’s marks, as used in connection with its credit
union services, so resemble Plaintiff’s pleaded mark CAPFED as to be likely to cause
confusion or to cause mistake or to deceive.

Decision: The counterclaim for cancellation on the grounds of non-use and
abandonment is dismissed. The opposition to Application Serial No. 87132380 is
sustained and registration is refused. The petition for cancellation of Registration No.
4817816 is granted. The registration will be cancelled in due course.