Charter One Financial, Inc.

Trademark Trial and Appeal Board

Sep 25, 2003

No. 76362677 (T.T.A.B. Sep. 25, 2003)

Mailed: September 25,2003
Paper No.11
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Charter One Financial, Inc.
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Serial No. 76/362,677
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Robert V. Vickers of Fay, Sharpe, Fagan, Minnich & McKee for
Charter One Financial, Inc.
Ronald McMorrow, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Charter One Financial, Inc. has filed an application to
register the mark "BUSINESS ONE REWARDS" 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 grounds
that applicant's mark, when used in connection with its services,
so resembles each of the following marks, which are owned by
different registrants, as to be likely to cause confusion, or to
1 Ser. No. 76/362,677, filed on January 25, 2002, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
words "BUSINESS" and "REWARDS" are disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/362,677
2
cause mistake, or to deceive: (i) the mark "BUSINESSONE," which
is registered for "banking services";2 and (ii) the mark
"BUSINESS REWARDS," which is registered for "banking services,
namely, loan and checking account services to small businesses."3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals 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 of the goods
and/or services and the similarity of the marks.4 Nevertheless,
in this case, it is obvious (and applicant does not contend to
the contrary) that applicant's "banking services" are identical
in their entirety to the "banking services" of one of the
registrants and are identical in part (and are otherwise closely
related) to the "banking services, namely, loan and checking
2 Reg. No. 2,249,644, issued on June 1, 1999, which sets forth a date
of first use anywhere and in commerce of March 16, 1998.
3 Reg. No. 2,259,182, issued on July 6, 1999, which sets forth a date
of first use anywhere and in commerce of October 16, 1996. The word
"BUSINESS" is disclaimed.
4 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 [and/or services] and
differences in the marks."
Ser. No. 76/362,677
3
account services to small businesses" of the other registrant.
The respective services, therefore, would in each instance be
provided through the same channels of trade to the same classes
of customers. Plainly, if rendered under the same or similar
marks, confusion as to the source or sponsorship of such services
would be likely to occur. The chief focus of our inquiry,
therefore, is on whether the marks at issue herein are so similar
in their entireties that their contemporaneous use would be
likely to cause confusion as to the source or sponsorship of the
respective banking services.
As a starting point for consideration of the marks at
issue, we note that our principal reviewing court in Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034
(1994), indicated that "[w]hen marks would appear on virtually
identical goods or services, the degree of similarity [of the
marks] necessary to support a conclusion of likely confusion
declines." Applicant argues, however, that its mark is not
likely to cause confusion with either of the cited marks because,
not only are the latter marks weak, in the sense of being highly
suggestive of banking services and in common or widespread use,5
5 Applicant also contends that the copies which it made of record of
"the Internet web pages from the web site of the owner of the BUSINESS
REWARDS registration" show that such mark "is merely descriptive ...
for goods or services involving businesses" in which "rewards are
provided to small businesses when the company's financial services are
used." However, as correctly noted by the Examining Attorney, a
contention that such mark is merely descriptive constitutes an
impermissible collateral attack on the validity of the cited
registration and will not be entertained in an ex parte appeal. See,
e.g., In re Peebles Inc., 23 USPQ2d 1795, 1797 at n. 7 (TTAB 1992);
and In re C. F. Hathaway Co., 190 USPQ 343, 345 (TTAB 1976).
Ser. No. 76/362,677
4
such that they are only entitled to a narrow scope of protection,
but its "three-word mark BUSINESS ONE REWARDS is obviously
different from the one-word mark BUSINESSONE and the two-word
mark BUSINESS REWARDS" in sound, appearance, connotation and
commercial impression.
In particular, with respect to its mark and the mark
"BUSINESSONE," applicant maintains in its initial brief that:
[T]he phrase "businessone" is ...
commonly used and therefore is weak in the
trademark sense. Internet searches were
performed via Yahoo!, Google, Lycos, as well
as Lexis/Nexis. The searches revealed over
80,000 web pages including this phrase and
thousands of articles. Referring to the
print out of the first 20 pages from Yahoo,
it is shown that several sources use the
phrase "businessone" in connection with
several types of services. The Lexis/Nexis
search had to be limited to only current day
news stories to produce less than 1,000. In
a search of stories published only on May 8,
2002, eleven stories referred to the phrase
"businessone." No one can claim exclusive
rights in the phrase "businessone." The
consumers are accustomed to seeing this
phrase in connection with many services and
many different sources of services.
Therefore, there is no likelihood of
confusion between BUSINESS ONE REWARDS and
BUSINESSONE.
Furthermore, BUSINESS ONE REWARDS
creates a different commercial impression by
inclusion of the word "rewards." As noted
above, no one can claim exclusive rights to
the words or phrase BUSINESSONE, and,
therefore, by including the word "rewards,"
BUSINESS ONE REWARDS is distinguishable from
BUSINESSONE. The word "rewards" produces a
different sight, sound, and meaning in the
mark. BUSINESS ONE REWARDS is a three word
mark, rather than the single word format of
BUSINESSONE. BUSINESS ONE REWARDS has two
additional syllables and is longer. As for
meaning, "businessone" has a meaning relating
to a business that is superior or at least
considered the best. Conversely, BUSINESS
Ser. No. 76/362,677
5
ONE REWARDS has a convoluted meaning of a
superior reward for a business using the
banking services or that a single or primary
reward is provided to the business for use of
the banking services. Accordingly, BUSINESS
ONE REWARDS is different in sight, sound and
meaning.
Similarly, as to its mark and the mark "BUSINESS
REWARDS," applicant urges that:
The phrase "business rewards" is often
used by various sources and, therefore, no
one can claim exclusive rights in this phrase
or these words. .... Searches were
performed via Yahoo! and Lycos for the phrase
"business rewards." The search[es] revealed
over 1,000 Internet web pages that include
this common phrase. Referring to the
printout of the first 20 hits from either
search, it is shown that there are many users
of the phrase "business rewards" in
connection with financial services, whereby
the users provide some sort of benefit or
reward for customers using their financial
services. The search in Lexis/Nexis revealed
over 350 stores [sic] in a 90-day period that
referred to the phrase "business rewards."
.... Furthermore, consumers, including small
business owners, are well accustomed to
seeing this phrase in connection with various
services and various sources.
Furthermore, BUSINESS ONE REWARDS is
dissimilar from BUSINESS REWARDS in sight,
sound and meaning. First, BUSINESS ONE
REWARDS is a three word mark, which includes
the word ONE between BUSINESS and REWARDS,
thus producing a different appearance, sound,
and meaning. The inclusion of ONE in the
middle of the mark breaks up the commonly
used words business and rewards, making it a
phrase not commonly used and generating a
different commercial impression. A search
was performed via Yahoo! and Google, and no
web sites were found to include the phrase
BUSINESS ONE REWARDS, further showing the
difference provided by including the word
ONE.
The phrase "business rewards" has a
commonly understood meaning, as noted above,
relating to a business customer being
Ser. No. 76/362,677
6
rewarded for using a service. By including
the word "one" between the words business and
rewards, the commonly used phrase is broken
up and becomes convoluted, such that there is
an indication of a superior reward for a
business using the service or that a single
or primary reward is provided to the business
for the use of the service.
We agree with the Examining Attorney, however, that
when the respective marks are considered in their entireties,
each of the cited marks is "very similar" to applicant's mark in
appearance, sound, connotation and commercial impression. As the
Examining Attorney points out, applicant has, in effect, "merely
added a term to the registrants' marks," but in each instance the
addition thereof "is not sufficient to overcome a likelihood of
confusion." Clearly, in the case of the cited mark "BUSINESSONE"
and applicant's mark "BUSINESS ONE REWARDS," the addition of the
descriptive term "REWARDS" (as evidenced by applicant's
disclaimer thereof) is insufficient to distinguish applicant's
mark and preclude a likelihood of confusion, given that both
marks consist of or are dominated by, respectively, the
designation "BUSINESSONE" or "BUSINESS ONE" and are used in
connection with identical services, namely, "banking services."
Similarly, as to the cited mark "BUSINESS REWARDS" and
applicant's mark "BUSINESS ONE REWARDS," the addition of the word
"ONE" plainly does not so change applicant's mark in any
significant respect as to avoid a likelihood of confusion,
inasmuch as the respective services are identical in part and are
otherwise closely related. In essence, as summarized in the
Examining Attorney's brief, "because the applicant has
appropriated each of the registered marks in their entirety and
Ser. No. 76/362,677
7
added a single [descriptive or otherwise inadequately
distinguishing] term, the marks are more than sufficiently
similar to sustain a finding of likelihood of confusion."
Furthermore, as to applicant's contentions that it has
nonetheless shown that the cited marks are weak, and therefore
are entitled to only a narrow scope of protection, due to their
suggestiveness and common use by third parties, the Examining
Attorney properly observes in his brief that:
This argument is meritless because it is not
supported by the evidence of record in this
case. Search results showing that the terms
comprising the registrants' marks may be
found in close proximity to one another on
the Internet or the Lexis-Nexis database do
not in any way establish that the marks are
weak in the relevant field. Conversely, the
evidence made of record by the previous
Examining Attorney shows that ... [the cited]
marks are the only registered marks for
[identical or closely] related services that
include the phrases BUSINESS ONE or BUSINESS
REWARDS. This evidence demonstrates that the
registrants' marks are not at all weak when
used in connection with banking services.
Moreover, even if the record did include
competent evidence showing that the
registrants' marks were weak, they would
still clearly be entitled to protection
against registration of a highly similar mark
for identical services. King Candy Co. v.
Eunice King's Kitchen, Inc.[,] 182 USPQ 108
(C.C.P.A. 1974).
In particular, we note with respect to the cited "BUSINESSONE"
mark that applicant's assertions as to the demonstration of a
plethora of third-party usages are glaringly false. For example,
of the 20 "Yahoo!" excerpts, only 15 even use the words "business
one" in that order. Of those 15, only two actually use the
phrase "Business One" in apparent reference to a business entity
(specifically, "Planet Business One" and "Welcome to Business One
Ser. No. 76/362,677
8
Inc."), although notably neither reveals any indication as to the
nature of the business. The remaining 13 simply use the word
"business" followed by the word "one" in a manner other than the
phrase "Business One" (e.g., "Home Business One to One Marketing
Distributor Opportunity"; "Two young men each launch a business.
One rises, the other falls"; and "Botswana Online Edirectory -
Business 2 Business one click at a ...." The seven "Google"
excerpts provide similar results, while none of the five
"Lexis/Nexis" excerpts show any use of the words "business one."
Such evidence clearly fails to establish, as contended by
applicant, that "[n]o one can claim exclusive rights in the
phrase 'businessone.'"
As to the cited "BUSINESS REWARDS" mark, both "Yahoo!"
and "Google" searches confirm that there are no third-party uses
of the phrase "business one rewards," which of course applicant
uses as its mark. However, while there arguably are a couple of
third-party usages, in the 20 "Yahoo!" excerpts, of the term
"business rewards" in connection with banking services (e.g.,
"City Bank e-Business Rewards Program" and "Home Bank | Business
Rewards Investment"), none of the 10 "Lycos" excerpts and none of
the nine "Lexis/Nexis" excerpts demonstrate any third-party use
of such term in connection with banking services. Instead, when
used as the phrase "business rewards," and not merely as the word
"business" followed by the word "rewards," most usages of such
phrase are in connection with credit card services, airline
mileage awards programs, or wireless calling plans. Again, such
evidence can hardly be said to demonstrate, as asserted by
Ser. No. 76/362,677
9
applicant, that "no one can claim exclusive rights in this phrase
or these words," particularly with respect to use of the term
"business rewards" in connection with banking services.
In view of the above, and in light of the fact that, as
noted by the Examining Attorney, the previous Examining Attorney
made of record evidence demonstrating that the cited marks are
the only registered marks which, for banking services, include
the phrases "BUSINESS ONE" or "BUSINESS REWARDS," it is clear
that the registrants' marks are not so weak as to merit only a
narrow scope of protection. Therefore, while there are minor
differences between applicant's mark and each of the registrants'
marks which are apparent upon a side-by-side comparison, such a
comparison is not the proper test to be used in determining the
issue of likelihood of confusion inasmuch as it is not the
ordinary way that customers will be exposed to the marks.
Instead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to
the fallibility of memory and the concomitant lack of perfect
recall, whether confusion as to source or sponsorship is likely.
The proper emphasis is accordingly on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of marks. See, e.g., Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733
(TTAB 1981); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Here, given the substantial overall
similarities in appearance, sound, connotation and commercial
Ser. No. 76/362,677
10
impression between applicant's "BUSINESS ONE REWARDS" mark for
banking services and the cited "BUSINESSONE" mark for banking
services, consumers familiar with the latter would be likely, for
instance, to believe upon encountering the former that the same
source is also providing or sponsoring a new or expanded line of
banking services with enhanced features or "rewards." Likewise,
in view of the substantial similarities, on the whole, between
applicant's "BUSINESS ONE REWARDS" mark for banking services and
the cited "BUSINESS REWARDS" mark for banking services, namely,
loan and checking account services to small businesses, in terms
of appearance, sound, connotation and commercial impression,
customers acquainted with the latter would be likely to view the
former as an additional line of expanded or full-feature banking
services which emanates from or is associated with the same
source.
Applicant, nevertheless, further argues that because
consumers of financial services, including banking services, are
sophisticated purchasers, there can be no likelihood of confusion
in these instances. Applicant asserts, in particular, that
"[f]inancial services are not purchased without reflection since
they can significantly impact many aspects of an individual's
financial security." We recognize, in this regard, that
customers for banking services have indeed been regarded as being
"expect[ed] to select their bank after long and careful
consideration." See, e.g., Amalgamated Bank of New York v.
Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305,
1308 (Fed. Cir. 1988). However, it is well established, as the
Ser. No. 76/362,677
11
Examining Attorney correctly notes, that the fact that customers
may exercise deliberation in choosing their banking services
"does not necessarily preclude their mistaking one [service mark
or] trademark for another" or that they otherwise are entirely
immune from confusion as to source or sponsorship. Wincharger
Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962). See also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983).
Decision: The refusals under Section 2(d) are
affirmed.