Citadel Federal Credit Unionv.KCG IP Holdings LLC

Trademark Trial and Appeal Board

Jul 10, 2013

No. 92055228 (T.T.A.B. Jul. 10, 2013)

coggins Mailed: July 10, 2013

Cancellation No. 92055228
Citadel Federal Credit Union
v.
KCG IP Holdings LLC

Before Cataldo, Mermelstein, and Shaw,
Administrative Trademark Judges.

By the Board:

This case comes up on respondent’s motion (filed November
2, 2012) for summary judgment.1
Background
On February 24, 2012, petitioner filed a petition for
cancellation of Registration No. 3213943 on the ground of
priority and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d).2 After receiving

1 Respondent’s change of correspondence address (filed April 29,
2013) is noted and entered.

2 Registration No. 3213943, issued February 27, 2007, under
Section 1(a), for the mark CITADEL in standard characters, in
connection with “financial services, namely, providing investment
management services, investment consultation and advice,
investment portfolio management services, investment brokerage
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92055228

2
almost six months of consented extensions of time in which to
file an answer, respondent filed an answer and shortly
thereafter filed the outstanding motion for summary judgment.
The motion for summary judgment was originally filed as a
“motion for judgment on the pleadings” seeking dismissal of
this cancellation proceeding upon respondent’s first
affirmative defense (see Answer, paragraphs 13-19) that
priority and likelihood of confusion is barred under Morehouse
Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ
715 (CCPA 1969), based on respondent’s incontestable
Registration No. 2812459.3
In a November 5, 2012 order suspending proceedings
pending disposition of respondent’s motion, the Board noted
that, inasmuch as respondent claimed that petitioner is
precluded from asserting the ground of priority and likelihood
of confusion under Morehouse, the motion relied on matters
outside of the pleadings which the Board elected not to

services, mutual fund investment services and investment of funds
for others” in Class 36.

3 Registration No. 2812459, issued February 10, 2004, under
Section 1(a), for the mark in connection with “providing
investment management services, investment consultation and
advice, investment portfolio management services, investment
brokerage services, mutual fund investment services, and
investment of funds for others” in Class 36. Sections 8 and 15
accepted on February 19, 2010. A copy of an electronic printout
of the registration from the Office’s TARR database showing its
status was attached to the Answer as Exhibit 2.

Cancellation No. 92055228

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exclude, and therefore the motion was deemed one for summary
judgment as to the Morehouse defense.
Procedural Issues
In its reply brief in support of the motion for summary
judgment, respondent argues that petitioner’s brief in
opposition contains a case-dispositive admission against
likelihood of confusion. Specifically, respondent argues that
petitioner’s statements relating to the similarity of the
parties’ services entitles respondent to summary judgment on
petitioner’s ground of priority and likelihood of confusion
under Section 2(d). We note, however, that the motion for
summary judgment is based solely on respondent’s Morehouse
defense – as respondent acknowledges at footnote 1 of its
reply. In determining the motion for summary judgment based
on respondent’s Morehouse defense, we find respondent’s
arguments regarding likelihood of confusion, brought up for
the first time in the reply brief, to be improper rebuttal and
they have not been considered. Moreover, to the extent that
respondent argues that petitioner has taken an inconsistent
position in this cancellation proceeding vis-à-vis
petitioner’s statements during the prosecution of its
trademark applications for the mark CITADEL by arguing in the
application files that its mark is not likely to be confused
with the subject registration (see reply, p. 3, and Hodgson
Declaration attached thereto), we remind respondent that “the
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doctrine of ‘file wrapper estoppel’ does not apply to
trademark cases.” Giant Food, Inc. v. Standard Terry Mills,
Inc., 229 USPQ 955, 963 (TTAB 1986).
Inasmuch as we have not considered respondent’s improper
rebuttal arguments, petitioner’s sur-reply has been given no
consideration, and petitioner’s motion (filed March 6, 2013)
for permission to file a sur-reply is denied. See Trademark
Rule 2.127(e)(1) (after the movant’s reply brief, “[t]he Board
will consider no further papers in support of or in opposition
to a motion for summary judgment”).
Motion for Summary Judgment
Summary judgment is an appropriate method of disposing of
cases in which there are no genuine disputes as to any
material facts, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). To prevail on its
motion for summary judgment on the ground that petitioner’s
claim of priority and likelihood of confusion is barred by the
Morehouse defense, respondent must show that there are no
genuine disputes of material fact that it owns a prior
registration for essentially the same mark registered in
connection with essentially the same services that are the
subject of the involved registration. See Morehouse Mfg.
Corp. v. J. Strickland & Co., 160 USPQ at 717; O-M Bread Inc.
v. United States Olympic Comm., 65 F.3d 933, 36 USPQ2d 1041,
Cancellation No. 92055228

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1045 (Fed. Cir. 1995); and Green Spot (Thailand) Ltd. v.
Vitasoy Int’l Holding Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008).
Inasmuch as petitioner does not dispute that respondent
owns Registration No. 2812459 or that the services described
in that prior registration are essentially the same services
described in the subject registration, we find no genuine
dispute as to these issues. Therefore, whether the Morehouse
defense is available to respondent depends upon whether the
mark in the subject registration is essentially the same as
the mark in the prior registration. To make such a
determination, we must compare the appearance, pronunciation,
meaning, and commercial impression of the marks. Green Spot,
86 USPQ2d at 1285. Additionally, “no part of the mark can be
ignored in comparing the marks as a whole.” O-M Bread, 36
USPQ2d at 1045 (internal citation omitted).
Respondent essentially argues that its marks convey the
same pronunciation, meaning, and commercial impression because
the dominant element of the earlier composite mark
is the word CITADEL which is the very mark at
issue in the subject registration, and that the design element
of the earlier mark does not significantly change the
pronunciation or perception of the dominant word element
CITADEL. Petitioner, on the other hand, argues that the
design element of respondent’s earlier mark is a significant
part thereof, that the two marks must be considered as a whole
Cancellation No. 92055228

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(and not dissected), that the earlier design element prevents
the two marks from being substantially identical, and that
respondent incorrectly relies on the test for mark similarity
under a likelihood of confusion analysis instead of the
“essentially the same mark” analysis required under Morehouse.
In comparing respondent’s earlier and later marks, we
find that respondent has failed to demonstrate that there are
no genuine disputes of material fact that its marks are
essentially the same. We are not persuaded by respondent’s
arguments that the design element of the earlier mark does not
change the appearance or commercial impression of the later
standard character mark. The question is whether the marks in
their entireties are essentially the same. See O-M Bread, 36
USPQ2d at 1045. See also Green Spot, 86 USPQ2d at 1287 n.9
(“[w]e note that Morehouse requires that the marks be
essentially the same rather than merely confusingly similar”).
When we consider respondent’s earlier mark as a whole, the
crenellated design element is a significant portion of the
mark which presents a bold impression not present in the
standard character mark. This element is not merely a small
difference which requires “careful inspection to detect.”
Morehouse, 160 USPQ at 717. Nor are we persuaded by
respondent’s reliance on In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997), In re Max Capital Group
Ltd., 93 USPQ2d 1243 (TTAB 2010), In re RSI Sys. LLC, 88
Cancellation No. 92055228

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USPQ2d 1445 (TTAB 2008), or In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553 (TTAB 1987), all of which involved ex
parte appeals which considered similarity of marks under a du
Pont likelihood of confusion analysis4; or reliance on Nat’l
Bakers Servs., Inc. v. Hain Pure Food Co., Inc., 207 USPQ 701
(TTAB 1980), or Cont’l Specialties Corp. v. Cont’l Connector
Corp., 192 USPQ 449, 452 (TTAB 1976). In Nat’l Bakers Servs.,
Inc., the later mark HOLLYWOOD was presented in typed form
(which is the equivalent of the standard character form of
respondent’s later mark),5 and the earlier mark HOLLYWOOD
HEALTH FOODS was presented in a stylized script without any
design element; however, in the instant case, respondent’s
earlier mark contains a significant design element which was
not present or at issue in Nat’l Bakers Servs., Inc. In
Cont’l Specialties Corp., the later mark CONTINENTAL was
presented in typed form, and the earlier marks were presented
in stylized script against interlocking background designs;
however, in the instant case, respondent’s earlier mark
contains a design element which is not merely a background
design.

4 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973).

5 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See 37 C.F.R.
2.52(a); and 68 Fed. Reg. 55,748 (Sept. 26, 2003).

Cancellation No. 92055228

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Accordingly, we find as a matter of law that respondent’s
earlier and later marks are not essentially the same, and that
the Morehouse defense is not available to respondent in this
cancellation proceeding. In view thereof, respondent’s motion
for summary judgment is denied, and respondent’s first
affirmative defense (i.e., paragraphs 13-19) is stricken from
the answer.6
Schedule
Proceedings are resumed. Dates are reset on the
following schedule.
Deadline for Discovery Conference 7/31/2013
Discovery Opens 7/31/2013
Initial Disclosures Due 8/30/2013
Expert Disclosures Due 12/28/2013
Discovery Closes 1/27/2014
Plaintiff's Pretrial Disclosures 3/13/2014
Plaintiff's 30-day Trial Period Ends 4/27/2014
Defendant's Pretrial Disclosures 5/12/2014
Defendant's 30-day Trial Period Ends 6/26/2014
Plaintiff's Rebuttal Disclosures 7/11/2014
Plaintiff's 15-day Rebuttal Period
Ends 8/10/2014

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule

6 Inasmuch as we have determined that respondent’s earlier and
later marks are not substantially the same, and we have stricken
respondent’s prior registration defense, the parties should not
address the issue at trial or in their final briefs.

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2.l25. Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.