Cardinal Financial Corp.

Trademark Trial and Appeal Board

Jul 14, 2005

No. 75514741 (T.T.A.B. Jul. 14, 2005)

Mailed: July 14, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cardinal Financial Corp.
________

Serial No. 75514741
_______

Ralph M. Tener of McCandlish & Lillard, P.C. for Cardinal
Financial Corp.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Hohein and Zervas, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Cardinal Financial Corp. has filed an application to
register on the Principal Register the mark "CARDINAL BANK," in
standard character form, for "banking services."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
mark "CARDINAL FINANCIAL COMPANY" and design, as shown below,

1 Ser. No. 75514741, filed on July 2, 1998, which is based on an
allegation of a date of first use anywhere and in commerce of June 8,
1998. The word "BANK" is disclaimed.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75514741
2
which is registered for "banking services, namely[,] mortgage
bankers,"2 as to be likely to cause confusion, or to cause
mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3
Applicant, in its initial brief, "submits that there is
no likelihood of confusion between Applicant's mark and the mark
CARDINAL FINANCIAL COMPANY [and design] because: (1) the presence
of distinguishing components in the two marks outweighs and

2 Reg. No. 2,216,820, issued on the Principal Register on January 12,
1999, which sets forth a date of first use anywhere and in commerce of
August 1, 1987; combined affidavit §§8 and 15. The words "FINANCIAL
COMPANY" are disclaimed.

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks." 192 USPQ at 29.

Ser. No. 75514741
3
overcomes the similarity between them; (2) the services for which
the Applicant uses its mark are sufficiently different from the
services for which the cited mark is used to negate any
likelihood of confusion; and (3) the absence of actual confusion
between the parties for more than five years weighs heavily
against such a finding." Turning to the first of such
contentions, applicant argues in particular that, when the
respective marks are considered in their entireties, it is
apparent that (footnote omitted; underlining in original):
[T]he Applicant's mark contains the
additional component BANK, and the cited mark
contains the additional components, FINANCIAL
COMPANY. In light of the clear and
immediately perceived differences in
appearance, sound, and meaning of these
components, a striking difference between the
overall impressions created by the two marks
arises and overcomes the similarity of the
shared component.

Distinguishing components are
particularly significant when the shared
component is a word in common English usage,
such as CARDINAL. Since the public is used
to seeing the word in other contexts, the
public tends to look with heightened
discrimination at commercial uses of the word
and the components which accompany it.

The non-shared components are unusually
strong distinguishers in the instant case
because they both refer to separate,
regulated industries which are restricted to
their respective fields. A special federal
or state charter is required for a bank, and
separate, special licensing is required for
... mortgage services. ....

Because of the longstanding regulatory
separation of the functions of banks and
mortgage services, the public readily
distinguishes between them. Virtually all
consumers are familiar with what a bank is
and does--and can readily distinguish banking
Ser. No. 75514741
4
services from mortgage services. As a
result, the distinguishing components in the
marks in question are sufficient to negate
any likelihood of confusion between the
marks.

The Examining Attorney, on the other hand, maintains
that when applicant's mark "CARDINAL BANK" and registrant's mark
"CARDINAL FINANCIAL COMPANY" are considered in their entireties,
the similarities therein "are sufficient to find a likelihood of
confusion." Specifically, the Examining Attorney insists that
because the "dominant part of each ... mark is the word
'cardinal,'" the respective marks are not only similar in sound,
appearance, meaning and commercial impression, but "[w]ith the
exception of the disclaimed portions of each ... mark and the
slight design element in the registrant's mark, the marks ... are
identical." As to applicant's argument that the disclaimed,
generic terms therein preclude any likelihood of confusion, the
Examining Attorney, citing In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997), notes that it "is well
settled law that disclaimed matter is typically less dominant
when comparing marks." Consequently, the Examining Attorney
asserts that, "[i]n the instant case, the 'cardinal' portion of
[each] ... mark is more significant in creating a commercial
impression" and that, "[i]n fact, the word 'cardinal' in ... each
... mark is the component that distinguishes the marks" in terms
of an indication of source or affiliation.
Furthermore, with respect to applicant's contention
that because the public is used to seeing the word "CARDINAL" in
other contexts, it "tends to look with heightened discrimination
Ser. No. 75514741
5
at commercial uses of the word and the components which accompany
it," the Examining Attorney points out that:
The applicant should note that when
determining whether there is a likelihood of
confusion ..., the question is not whether
people will confuse the marks, but rather
whether the marks will confuse the people
into believing that the goods they identify
emanate from the same source. In re West
Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ
558 (C.C.P.A. 1972). For that reason, the
test of likelihood of confusion is not
whether the marks can be distinguished when
subjected to a side-by-side comparison. The
question is whether the marks create the same
overall commercial impression. Visual
Information Inst., Inc. v. Vicon Indus. Inc.,
209 USPQ 179 (TTAB 1980). The focus is on
the recollection of the average purchaser who
normally retains a general rather than
specific impression of trademarks. Chemetron
Corp. v. Morris Coupling & Clamp Co., 203
USPQ 537 (TTAB 1979) .... In the financial
industry, it is customary for a bank to use
multiple entity designations to identify
several different financial services. If
consumers heard the marks "Cardinal Bank" and
"Cardinal Financial Company" used together in
one sentence, they would be likely to believe
the services they identify originate from the
same corporate entity. Because of the
tendency of the consuming public to have a
general rather than a specific recollection
of trademarks, it is more conceivable that
the "cardinal" portion of the mark[s] will be
used in calling for the services than the
words "bank" or "financial company."
Therefore, the dominant part of both ...
mark[s] is the word "cardinal." The
similarities of the marks portend a great
likelihood of confusion as to the source of
the [respective] services.

Applicant, in its reply brief, reiterates its
assertions that because the average consumer knows the difference
between a bank and a mortgage company, is aware that banks are
government regulated, and is cognizant that a company which does
Ser. No. 75514741
6
not use the word "Bank" in its name is not a bank and is not
legally permitted to provide banking services, "the component
'Bank' in a service mark differentiates the owner very strongly
from other non-bank services." Consequently, as noted
previously, applicant contends that "[t]he average consumer does
not expect the owner of a service mark that includes 'Financial
Company' but not 'Bank' to be a bank" and, thus (underlining in
original), "the non-shared components of the two marks are
unusually strong distinguishers in the instant case because they
both refer to separate, regulated industries which are restricted
to their respective fields." In addition, applicant stresses the
fact that registrant's mark "includes a bird perched in an
enlarge letter 'C', horizontal lining, stylized letters, and
three words, whereas the Applicant's mark is simply the two-word
mark CARDINAL BANK in standard character format." Applicant
urges, in view thereof, that given "the design difference and the
differing textual components, the impression created by the two
marks are significantly different."
We concur with the Examining Attorney, however, that
when considered in their entireties, the marks at issue are so
substantially similar as to be likely, if used in connection with
the same or related services, to cause confusion or mistake or
deception. While, as our principal reviewing court has noted,
the marks at issue are to be considered in their entireties,
including any design elements and/or generic matter, it is also
the case that, in articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, "there is nothing
Ser. No. 75514741
7
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided
[that] the ultimate conclusion rests on consideration of the
marks in their entireties." In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, "that a particular feature is ... generic
with respect to the involved ... services is one commonly
accepted rationale for giving less weight to a portion of a mark
...." Id. Here, the dominant and distinguishing element of both
applicant's "CARDINAL BANK" mark and registrant's "CARDINAL
FINANCIAL COMPANY" and design mark is the arbitrary or fanciful
word "CARDINAL," given the lack of source-indicative significance
inherent in, respectively, the generic terms "BANK" and
"FINANCIAL COMPANY," and the fact that the bird design in
registrant's mark is clearly recognizable as a cardinal and thus
merely serves to underscore the source-distinguishing term
"CARDINAL."4 Moreover, although consumers would no doubt know,
upon encountering applicant's mark, that the institution
rendering applicant's banking services is indeed a commercial
bank rather than some other kind of financial company, as could
be the case with the mortgage banking services rendered under
registrant's mark, it is still likely that consumers could
reasonably believe, in light of the similarities in sound,
appearance, connotation and overall commercial impression between
the respective marks due to the shared term "CARDINAL," that the

4 As shown by the specimens of use, applicant likewise uses a bird
design with its mark which is easily recognizable as a cardinal.
Ser. No. 75514741
8
respective services have a common source or sponsorship if such
services are otherwise commercially related.
Turning, therefore, to consideration of whether
applicant's "banking services" are commercially related to
registrant's "banking services, namely[,] mortgage bankers,"
applicant asserts in its initial brief that, except for "the fact
that they both fall within what is generally referred to as the
financial industry, there is little relationship" between such
services. Specifically, as previously mentioned, applicant urges
in its reply brief that:
[T]he owner of the cited mark is not
legally qualified to provide the services the
Applicant provides as a bank--and seeks
registration for. Banking services may only
be provided by chartered banks, whereas
mortgage services may only be provided by
licensed mortgage brokers. Thus, these
separate and distinct services of the
Applicant and the owner of CARDINAL FINANCIAL
COMPANY would not create source confusion.

The Examining Attorney, however, contends that the
services of the parties are commercially related "because
'banking services' and 'mortgage banking services' are offered by
the same entities." "In fact," the Examining Attorney insists,
"most banks offer mortgage banking services as a part of a wide
mix of financial services." As support therefor, the Examining
notes that he has made of record "several third[-]party
registrations in which 'banking services' and 'mortgage banking
services' appear under the same mark."

Ser. No. 75514741
9
Aside from the fact that, as identified, applicant's
"banking services" clearly encompass registrant's "banking
services, namely[,] mortgage bankers,"5 we agree with the
Examining Attorney that the evidence of record supports a finding
that such services are commercially related. In this regard, the
Examining Attorney has made of record copies of approximately 30
use-based third-party registrations in which, in each instance,
the same mark is registered for both "banking services" (or a
variant thereof such as "banking and related financial
services,"), on the one hand, and "mortgage banking services" (or
an equivalent thereof such as "mortgage banking"), on the other.
It is settled, in this regard, that while use-based third-party
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, such
registrations may nevertheless have some probative value to the
extent that they serve to suggest that the goods and/or services
listed therein are of the kinds which may emanate from a single
source. See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Here, the registrations
introduced by the Examining Attorney serve to confirm the
obvious, namely, that banking services, including mortgage
banking services, are often available from the same source.
Furthermore, applicant's advertising brochures, which were

5 While the word "bankers" in registrant's registration may be a
typographical error, it is nonetheless plain that the banking services
which "mortgage bankers" would offer are "mortgage banking services."
Registrant's identification of services will thus be so construed.
Ser. No. 75514741
10
submitted as its specimens of use of its mark, list such mortgage
banking services as "Commercial Mortgages" among the banking
services it offers its customers. The evidence of record thus
shows that the respective services at issue herein are
sufficiently related, in a commercial sense, that if rendered
under the same or similar marks, confusion as to the origin or
affiliation thereof would be likely to occur.
We accordingly conclude that consumers who are familiar
or acquainted with registrant's "CARDINAL FINANCIAL COMPANY" and
design mark for "banking services, namely[,] mortgage bankers,"
would be likely to believe, upon encountering applicant's
substantially similar "CARDINAL BANK" mark for "banking
services," that such commercially related services emanate from,
or are sponsored by or affiliated with, the same source. Even
those consumers, for example, who happen to notice or appreciate
that applicant's mark serves to identify a commercial bank while
registrant's mark identifies some other type of financial
institution could reasonably believe that registrant's mortgage
banking services are rendered by a subsidiary of, or other entity
affiliated with, the same firm which offers applicant's banking
services.
Applicant, asserting in its initial brief that its
"first use date is June 8, 1998" while, as set forth in the cited
registration, registrant's alleged "first use date is August 1,
1987," argues nevertheless that confusion is not likely because,
"[d]uring more than five years of concurrent use, the Applicant

Ser. No. 75514741
11
has not been made aware of any confusion between its services
[under its mark CARDINAL BANK] and those identified under
[registrant's mark] CARDINAL FINANCIAL COMPANY." However, as the
Examining Attorney correctly points out in his brief:
[T]he applicant has presented no evidence of
lack of [actual] confusion. The test under
Trademark Act Section 2(d) is whether there
is a likelihood of confusion. It is
unnecessary to show actual confusion in
establishing likelihood of confusion. See
Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990), and cases cited therein. ....

Moreover, even if, as urged by applicant in its initial and reply
briefs, we were to regard as a "factual admission" by registrant
the statement, in a copy made of record by applicant of an
unsigned draft of a proposed consent agreement, that "[t]he
parties are not aware of any instances of actual consumer
confusion, mistake, or deception between their respective marks"
for the services at issue herein, such would not suffice to
preclude a finding of likelihood of confusion. The reason
therefor is that while it is indeed the case that evidence of the
absence of any instances of actual confusion over a significant
period of time is a du Pont factor which is indicative of no
likelihood of confusion, such is a meaningful factor only where
the record demonstrates appreciable and continuous use by
applicant of its mark in the same markets as those served by
registrant under its mark. See, e.g., Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In particular,
there must be evidence showing that there has been an opportunity
for incidents of actual confusion to occur. See, e.g.,
Ser. No. 75514741
12
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000). Here, however, there is no such evidence.
Lastly, related to the above, applicant points to its
negotiations with registrant (Cardinal Financial Company, Limited
Partnership, composed of Cardinal Mortgage, Inc. and Cardinal
Financial Corp.) as to a possible consent agreement, arguing in
its initial brief that (underlining in original):
It is significant that Cardinal
Financial Company, L.P. has never objected to
the Applicant's use of the mark CARDINAL
BANK, but has instead requested that the
Applicant change its corporate name to delete
the word "Financial" from it. Thus, the
concern expressed by Cardinal Financial
Company, L.P. does not relate to a likelihood
of confusion between the Applicant's mark
CARDINAL BANK and any mark belonging to
Cardinal Financial Company, L.P. ....

Applicant maintains that because "the owner of [the mark]
CARDINAL FINANCIAL COMPANY has not objected to Applicant's use of
[the mark] CARDINAL BANK," such fact "weighs heavily against a
finding of likelihood of confusion."
The Examining Attorney, on the other hand, acknowledges
in his brief that, "[n]ormally, consent agreements should be
given great weight because they are executed by those most
familiar with use of the services in the marketplace and most
interested in precluding confusion." In this case, however, the
Examining Attorney argues that "[t]he applicant's unexecuted
consent agreement is tantamount to a naked consent and has no
probative value on the issue of actual confusion." In addition,
the Examining Attorney notes that "applicant concedes that its
prior settlement discussions with the registrant reached an
Ser. No. 75514741
13
impasse"; that "to date, no consent agreement has been reached";
and that, "[i]n light of these circumstance, it is possible that
the registrant may believe that source confusion is likely."
Applicant, however, further asserts in its reply brief
that, "[p]erhaps even more significantly, the [proposed] consent
agreement, as edited by counsel for the owner of the cited mark,
also states" that "[t]he parties agree that there is no
likelihood of confusion, mistake, or deception resulting from the
use and registration of their respective marks." Applicant urges
that "[t]he foregoing statement, which counsel for the owner of
the cited mark ... offered in that form for signature by the
parties, is a factual admission by the owner of the cited mark
and should be afforded the same weight as if the consent
agreement had been executed."
We disagree with applicant's contentions. As is clear
from the affidavit of applicant's counsel and the copy of the
revision to the proposed consent agreement (both of which were
submitted with applicant's request for reconsideration of the
final refusal), the so-called "factual admission" by registrant
is expressly contingent upon applicant's agreement not only to
delete the word "Financial" from its corporate name but also to
amend its application "to expressly delineate that its services
do not include 'mortgage banking services.'" Applicant, as the
record makes plain, has declined to so change its corporate name
and has not so amended its application. There consequently has
been no meeting of the minds between applicant and registrant;
there is no detailed consent agreement which has been executed by
Ser. No. 75514741
14
such parties; and there is no "factual admission" by registrant
that contemporaneous use by applicant of its substantially
similar "CARDINAL BANK" mark in connection with its commercially
related "banking services" is not likely to cause confusion with
registrant's use of its "CARDINAL FINANCIAL COMPANY" and design
mark in connection with its "banking services, namely[,] mortgage
bankers."
Decision: The refusal under Section 2(d) is affirmed.