Century Bancorp, Inc.v.Century Bank and Trust Corp.

Trademark Trial and Appeal Board

Mar 14, 2001

No. 92029921 (T.T.A.B. Mar. 14, 2001)

03/14/01 Paper No. 11
RLS/kk
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Century Bancorp, Inc.
v.
Century Bank and Trust Corporation
_____
Cancellation No. 29,921
_____
Treazure R. Johnson of Eckert, Seamans, Cherin & Mellott,
LLC for Century Bancorp, Inc.
Robert B. Kennedy of Kennedy, Davis & Hodge for Century Bank
and Trust Corporation.
_____
Before Simms, Cissel and Holtzman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
This case now comes up on Century Bank and Trust
Corporation’s (respondent’s) motion for summary judgment and
on Century Bancorp, Inc.’s (petitioner’s) opposition thereto
and cross-motion for summary judgment. Petitioner, after
the close of discovery, also filed a motion to extend the
discovery period.
In this proceeding petitioner, a Massachusetts
corporation, seeks cancellation of respondent’s registration
of the mark shown below
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,921
2
for commercial banking and trust services. (Registration
No. 1,887,432, issued April 4, 1995). Petitioner asserts
that since 1969, it has used the mark CENTURY BANK for
commercial and consumer banking services, and that it has
filed an application to register that mark; that since 1972
it has used the mark CENTURY BANCORP for the same services
and has filed an application to register that mark; that
since 1991 petitioner has used the mark CENTURY FINANCIAL
SERVICES for investment and brokerage services, and that it
has filed an application to register that mark; and that
respondent’s mark so resembles petitioner’s previously used
marks as to be likely to cause confusion, to cause mistake
or to deceive.
In its answer, respondent has denied the essential
allegations of the petition, but has acknowledged that
respondent first used the mark in June 1992. Respondent
also asserts certain affirmative defenses such as
acquiescence, estoppel and laches.
Essentially, respondent argues in its motion that there
is no likelihood of confusion. Among other things,
Cancellation No. 29,921
3
respondent argues that the marks differ, petitioner usually
using the “dominant feature” of a representation of a Roman
centurion (see below),
and that the meanings of the marks therefore differ, in that
petitioner’s mark suggests that it is a strong guardian of
financial assets, whereas respondent’s mark connotes a 100-
year time period. Respondent also asserts that, over the
years, there have been many other banks that have included
the word CENTURY in their marks for banking services. For
example, respondent points to the following registered mark,
against which petitioner has filed a petition for
cancellation.
Respondent also argues that petitioner’s brokerage and
investment services are specifically different from
respondent’s commercial banking and trust services.
Finally, respondent argues that there has been no actual
confusion despite concurrent use for over eight years, with
neither petitioner nor respondent even knowing of the
Cancellation No. 29,921
4
existence of the other until this proceeding. In this
regard, respondent points out that petitioner has restricted
its services to the northeast part of Massachusetts, while
respondent’s primary use has been in the state of Georgia.
Petitioner, in its opposition to respondent’s motion
and in support of its own cross-motion for summary judgment,
maintains that there are no genuine issues for trial and
that confusion is not only likely, it is inevitable in view
of the similarity of the marks and the identity of the
services. In this regard, petitioner argues that the
dominant portion of the marks at issue is the word CENTURY
and that both parties are offering commercial banking
services. With respect to the design of a Roman centurion,
petitioner maintains that this design is often, but not in
all cases, used in conjunction with petitioner’s word mark,
and that petitioner is referred to as “CENTURY” or “CENTURY
BANK” in media articles and by the public. Because
petitioner has prior use, as demonstrated by a declaration
of its chairman, president and chief executive officer, and
because of the similarities of the marks and services,
petitioner maintains that confusion is likely.
Finally, petitioner notes that neither the geographic
extent of its prior use nor the geographic remoteness of the
two businesses is relevant to the issue of likelihood of
Cancellation No. 29,921
5
confusion involved in a cancellation proceeding brought
against a federally registered mark.1
A declaration of petitioner’s officer indicates that
since its establishment in 1969, petitioner has used the
mark “CENTURY BANK” to identify its banking services; that
often, but not in all cases, the word mark is accompanied by
a representation of a Roman centurion; that as a result of
petitioner’s advertising and marketing activities,
petitioner is usually referred to and known as “CENTURY” or
“CENTURY BANK”; and that petitioner now has 16 branches with
over $900 million in assets, 40,000 consumer accounts and
4,000 commercial accounts, and is the 40th of 150 mid-sized
financial institutions, with customers in Rhode Island,
Maine, New Hampshire, Connecticut, Florida and New York.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. Fed R. Civ. P 56(c). The party moving for
summary judgment has the initial burden of demonstrating the
absence of any genuine issues of material fact. Celotex
Corp. v. Catrett, 477 U.S. 317 (1986) and Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
1 Coach House Restaurant v. Coach & Six Restaurants, Inc., 934
F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991), referring to Section
7(b) of the Lanham Act which “creates a presumption that the
registrant has the exclusive right to use its mark throughout the
United States.”
Cancellation No. 29,921
6
(Fed. Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the moving party. Opryland
USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992) and Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). The evidence must be viewed in a light most
favorable to the non-movant, and all justifiable inferences
are to be drawn in the non-movant’s favor. Lloyd’s Food
Products Inc. v. Ely’s Inc., 987 F.2d 766, 25 USPQ2d 2027
(Fed. Cir. 1993) and Opryland USA, supra. We note that, in
respondent’s reply to petitioner’s motion, it has observed
that the parties agree that there are no genuine issues of
material fact.
We also believe that there are no genuine issues of
material fact for trial. There is no dispute that
petitioner is the senior user, having previously used the
service mark CENTURY BANK (and CENTURY BANK AND TRUST
COMPANY). Also, there is no dispute that petitioner’s use
of its mark is in connection with commercial banking
services, substantially identical to the description
“commercial banking and trust services” set forth in
respondent’s registration.
Nor do we believe that there are any genuine issues
with respect to the similarity of the respective marks.
Cancellation No. 29,921
7
While respondent argues that its registered mark differs
from petitioner’s marks, we believe that these marks are
clearly substantially identical in sound, appearance and
commercial impression. In this regard, we cannot agree with
respondent that the “dominant” origin-indicating feature of
petitioner’s mark is the representation of a Roman
centurion. First, while this image appears in many uses of
petitioner, most of the examples of record do not include
the phrase “THE CENTURION SYMBOL OF STRENGTH AND
LEADERSHIP.” Accordingly, with respect to the majority of
uses by petitioner, it is not at all clear that consumers
would perceive the design of the soldier in armor as a
“centurion,” somehow affecting the significance or
connotation of petitioner’s marks CENTURY BANK and CENTURY
BANK AND TRUST COMPANY. Clearly, the dominant origin-
indicating feature is the word “CENTURY.” Moreover, as
noted, petitioner occasionally uses the phrase CENTURY BANK
AND TRUST COMPANY, almost identical to the words CENTURY
BANK & TRUST in respondent’s registered mark.
With respect to any third-party marks, respondent has
referred to another registered mark, belonging to a Colorado
bank. Aside from the fact that petitioner has a pending
cancellation petition against that mark, the existence of
that registered mark does not create a genuine issue of fact
for trial. Confusion is clearly likely if the parties use
Cancellation No. 29,921
8
their respective marks in connection with substantially
identical services.
Respondent’s motion for summary judgment is denied,
petitioner’s motion for summary judgment is granted, the
petition for cancellation is granted, and respondent’s
registration will be cancelled in due course.
Because of this disposition, petitioner’s motion to
extend discovery is moot.