Citicorpv.Morley Companies, Inc.

Trademark Trial and Appeal Board

Apr 8, 2004

No. 91113921 (T.T.A.B. Apr. 8, 2004)

Mailed: April 08, 2004
Oral Hearing date: Paper No. 25
September 16, 2003 GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Citicorp
v.
Morley Companies, Inc.
_____
Opposition No. 91113921 to application Serial No. 75428318
filed on February 3, 1998
_____
Steven M. Weinberg and Susan M. Daly of Greenberg Traurig, LLP.
for Citicorp.
Richard W. Hoffmann of Warn, Burgess & Hoffmann for Morley
Companies, Inc.
______
Before Simms, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Morley Companies, Inc. has filed an application to
register the mark "CHOICES UNLIMITED" for "debit card services".1
Citicorp has opposed registration on the ground that
applicant's mark so resembles the mark "CHOICE," which opposer
has previously used and registered for "credit card services,"2
1 Ser. No. 75428318, filed on February 3, 1998, which is based on an
allegation of a bona fide intention to use the mark in commerce.
2 Reg. No. 1,206,796, issued on August 31, 1982, which sets forth a
date of first use anywhere and in commerce of August 4, 1978; first
renewal.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91113921
2
as to be likely, when used in connection with applicant's
services, to cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, the trial
testimony, with exhibits, of Thomas Acton, senior vice president
and business manager of its Citicorp Credit Services subsidiary;
a notice of reliance on portions of opposer's discovery
deposition of Christopher Furlo, a vice president of applicant
for its award redemption services; and a notice of reliance on a
certified copy of opposer's pleaded registration showing that
such registration is subsisting and owned by opposer. The record
also includes, as applicant's case-in-chief, the trial testimony,
with exhibits, of the above-mentioned Christopher Furlo; and a
notice of reliance on (i) portions of applicant's discovery
depositions (taken of opposer pursuant to Fed. R. Civ. P.
30(b)(6)) of (a) Eileen Kennedy, in-house trademark counsel for
opposer, and (b) Thomas Kerwin, a former credit card services
executive for opposer; (ii) applicant's discovery depositions
(taken of various non-parties pursuant to Fed. R. Civ. P. 31) of
(a) Consumers Choice Credit Union, (b) Comerica Inc., (c) First
Tennessee National Corp. and (d) Central Cooperative Bank;3 (iii)
3 Although applicant's notice of reliance also refers to and includes
"[d]ocuments produced" by "Apple Bank," such evidence per se is not
proper subject matter for introduction by means of a notice of
reliance in the absence of the portion of the discovery deposition to
which it pertains. Trademark Rule 2.120(j)(3)(i) and TBMP §704.09 (2d
ed. June 2003). Nonetheless, the description of the record set forth
in opposer's main brief includes "various third[-]party documents ...
Opposition No. 91113921
3
the file history of opposer's pleaded registration; and (iv)
various third-party registrations for marks which contain the
term "CHOICE" or variants thereof. Briefs have been filed4 and
an oral hearing, attended by counsel for the parties, was held.
relied on by Applicant through Notice of Reliance" and applicant's
brief states that it "does not contest Opposer's description of the
record." Inasmuch as it is clear therefrom that the parties regard
such evidence as forming part of the record herein, the documents
assertedly produced by Apple Bank are considered to be in evidence by
stipulation of the parties pursuant to Trademark Rule 2.123(b).
4 Opposer, in its main brief, appears to reiterate the objection which
it raised to portions of applicant's trial deposition of Mr. Furlo.
Specifically, after the following testimony by Mr. Furlo, opposer's
counsel interposed an objection to a line of questioning regarding
instances of third-party use:
Q. Now, are you aware of anybody else who's using the
name choice on or in connection with debit or credit
cards?
A. Yes.
MR. WEINBERG: I'm going to object to any further
questions regarding third-party uses of marks with
choice. In Mr. Furlo's [discovery] deposition in
August 2000 he testified that he knew of no users of
choice other than himself and CitiBank.
(Furlo tr. dep. at 15.) Stating also that opposer has "repeatedly
asked the Applicant and its counsel to supplement its discovery on the
issue of whether or not there are any additional, third-party uses of
choice" (id.) and asserting that opposer has "received nothing ... but
a refusal to produce any additional documents from the Applicant" (id.
at 16), opposer's counsel contended that, "therefore, any testimony on
this issue at this time, [and] any documents related to that issue[,]
are precluded." (Id.) Applicant, however, went forward with Mr.
Furlo's trial testimony, subject to opposer's continuing objection.
Opposer maintains in its main brief that the further evidence
offered by applicant "consisted of Mr. Furlo's testimony regarding his
visit to a local credit union named Consumer's Choice Credit Union and
pages from a few web sites he had visited online for purposes of his
testimony"; and that opposer had "objected to all of this testimony
and the exhibits relating to this credit union and the web site pages
at the time of their attempted introduction on the grounds that (a) at
the time of his discovery deposition, Mr. Furlo testified that he was
unaware of any third party uses of CHOICE marks ... [and that] (b)
none of the 'evidence' he attempted to submit during his testimony
deposition was competent, since he had no personal knowledge relating
to the credit union or any of these web sites or any of the purported
uses of 'Choice' names." Noting in addition that applicant "has
Opposition No. 91113921
4
Priority of use is not in issue in this proceeding
inasmuch as opposer has proven that, as noted above, its pleaded
registration is subsisting and is owned by opposer. See King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). Opposer's ownership thereof also serves to
establish its standing to bring this proceeding. Id. Thus, the
noticed reliance on various third party documents and registrations
... as part of an argument that there are third party uses and
registration[s] of marks that contain the word CHOICE," opposer also
insists in its main brief that "all such evidence was objected to
during the Applicant's testimony on the basis that (a) Mr. Furlo did
not have any personal knowledge regarding the purported third party
evidence that Applicant was attempting to introduce ... and (b) Mr.
Furlo had testified during his discovery deposition that he was not
aware of any third party uses, but during his testimony deposition
Applicant tried to introduce third party evidence through him
notwithstanding many prior requests ... for Applicant to supplement
its discovery, which Applicant repeatedly failed to do ...."
Applicant, in its brief, claims in response that, among other
things, its [discovery] depositions and other evidence concerning
third-party use of the term "CHOICE" were provided to opposer.
Applicant also seems to argue in its brief that a portion of opposer's
trial deposition of Mr. Acton is inadmissible or otherwise
objectionable because Mr. Kerwin, the witness designated by opposer
pursuant to Fed. R. Civ. P. 30(b)(6), "disclaimed knowledge with
respect to the CHOICE mark and brand in relevant areas," while Mr.
Acton, although "never identified nor produced as a witness prior to
the trial" and "after discovery was closed," "[p]redictably ... had
substantial knowledge regarding the CHOICE mark, particularly
regarding the marketing of the CHOICE brand credit card." Such a
tactic, applicant contends, "smacks of trial by ambush" and "cannot be
condoned." In a similar vein, applicant argues that Ms. Kennedy, the
other Rule 30(b)(6) witness opposer designated for purposes of
discovery, "could not offer testimony on the connotation of Opposer's
CHOICE mark" and that, accordingly, "it would be fundamentally unfair
to allow argument from Opposer on this subject." Opposer, in its
reply brief, essentially explains that the witnesses it designated
were the best that it could produce at the time and that, when persons
more knowledgeable about such matters were later determined, it
offered to stipulate to a reopening of the discovery period to allow
for the taking of their discovery depositions, but that applicant
declined to accept such offer.
We find that since neither party has sufficiently substantiated
their objections, the objections, which in any event bear principally
on the weight or probative value of the challenged evidence rather
than the admissibility thereof, are overruled. However, even if such
evidence were to be excluded, the result herein would be the same.
Opposition No. 91113921
5
main issue to be determined in this case is whether applicant's
"CHOICES UNLIMITED" mark for "debit card services" so resembles
opposer's "CHOICE" mark for "credit card services" as to be
likely to cause confusion as to the source or sponsorship of the
parties' respective services.5
5
Applicant, in its brief, contends that this proceeding presents a
second issue, which it asserts is as follows: "[W]here Opposer has
allowed third party uses of marks including the 'choice' component,
and specifically in connection with financial and credit card
services, should opposer be allowed to oppose Applicant's [application
for] registration of the mark CHOICES UNLIMITED?" While it thus would
appear that applicant is attempting to assert defenses along the lines
that opposer either lacks standing to oppose or is guilty of unclean
hands, such were not pleaded in the answer. In any event, in its
discussion thereof, applicant refers to "a series of agreements
entered into by Opposer" and various third parties and contends that:
In each of the agreements, Opposer allowed a third party to
use a mark including the word "choice" on or in connection
with credit or debit card services. These agreements were
all made against the backdrop of Opposer's assertions that
there was a likelihood of confusion between Opposer's mark
comprising "choice" and each of the parties' respective
marks ... and the threat of filing an opposition. While
Opposer effectively precluded registration, the permitted
continued use is fatal to its position in this proceeding.
.... Thus, license agreements entered into by Opposer must
be construed in one of two ways. First, the agreements can
be a concession by Opposer that there is no likelihood of
confusion among the respective marks. Second, if there is a
likelihood of confusion among the competing marks, these
agreements must be construed as licenses granted by Opposer
to third parties to use a confusingly similar mark. Either
situation precludes Opposer from asserting the position it
has taken here.
If, in fact, there is no likelihood of confusion ...,
then third party use of marks including the "choice
component indicates that Opposer is entitled only to protect
its exact mark, i.e., the word CHOICE. The third party uses
limit Opposer's rights to the specific mark of the
registration. It cannot be expanded to include every mark
including the "choice" component.
If, in fact, the agreements are deemed to be licenses,
none of the agreements includes a quality control provision.
Thus, the licenses are naked licenses which similarly result
in loss of right for Opposer. ....
In view of these agreements, Opposer's scope of
protection is limited to the single word mark CHOICE that is
Opposition No. 91113921
6
According to the record, the marks used in connection
with credit cards play a significant role in the credit card
business due to customer loyalty to the multiple brands they
the subject of its registration. Opposer cannot expand the
protection of this registration to include any mark
including the "choice" component. Accordingly, Opposer is
not entitled to oppose Applicant's CHOICES UNLIMITED mark.
Opposer, in its reply brief, argues that there is nothing
improper in the manner in which it has enforced its rights in its
"CHOICE" mark for credit card services nor has it engaged in naked
licensing of such mark. We agree. As opposer points out, while the
record shows that "the settlement agreements allow for some third
parties to make limited non-confusing uses of the challenged marks--
albeit never directly on debit or credit cards," "what Applicant in
any event has failed to prove is that any of the parties with whom
Opposer has settled, with a single exception, actually ever used the
mark in connection with credit or debit card services." Moreover, as
opposer notes, the exception, consisting of the use by Consumers
Choice Credit Union of its name directly on the credit cards issued to
its members, is at variance with the terms of its settlement agreement
with opposer, which provides that while the credit union is allowed to
use its name on marketing materials with respect to all of the
services offered to its members, it specifically is not permitted to
use the name "Consumers Choice Credit Union" directly on credit or
debit cards and opposer retains "the right to take action should
confusion arise in the future from any uses permitted under the
Settlement Agreement." Each of the other settlement agreements of
record, furthermore, specifically acknowledges that the third party
thereto does not have the right to use or register a mark containing
the word "CHOICE" for debit or credit card services. Thus, with a
single exception (the extent of which is not known) of use directly on
credit cards, we concur with opposer that the record demonstrates that
opposer "has not permitted third party uses of a mark containing the
term 'Choice' that could result in a likelihood of confusion or
otherwise violate Opposer's rights in the CHOICE mark."
In consequence thereof, we find that to the extent that applicant
is seeking to assert as defenses either a lack of standing grounded
upon opposer's acknowledged limitations in the scope of its rights or
unclean hands based on its assertedly overzealous enforcement thereof,
applicant has failed to prove such defenses. As the Board has stated
in similar circumstances, "[t]here is nothing ... to suggest that
[opposer] has done anything other than seek to protect its rights in
its registered [mark or] marks, and preclude the registration of what
it believes to be a confusingly similar mark, a right which every
trademark owner possesses under the Lanham Act." Avia Group Int'l
Inc. v. Faraut, 25 USPQ2d 1625, 1627 (TTAB 1992). See, e.g., Time
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 at n. 4 (TTAB
2002); Cook's Pest Control, Inc. v. Sanitas Pest Control Corp., 197
USPQ 265, 268 (TTAB 1977); and 5 J. McCarthy, McCarthy on Trademarks &
Unfair Competition §§31:101-102 (4th ed. 2004).
Opposition No. 91113921
7
typically carry. On average, credit card customers carry more
than four credit cards and, in view thereof, "compartmentalize
some of their credit card purchases" based on loyalty to the
multiple brands they carry. (Acton tr. dep. at 11.) Opposer has
consequently "found that having more than one brand in a
customer's wallet is a very profitable venture" for opposer and,
thus "having more than one brand out there is a fundamental
strategy" which it has pursued. (Id.) One such brand is
opposer's "CHOICE" credit card services, which has generated
multi-million dollars (the actual figure being confidential) in
earnings for opposer in 2001 (the last full year for which
information was presented). However, in addition to competition
from other credit cards, opposer "view[s] debit cards as a
competitor to credit cards, specifically because it's a payment
mechanism." (Id. at 23.)
Opposer maintains what it considers to be a "loyal
customer base," with well over half of its customers viewing its
"CHOICE" brand as their primary credit card. (Id. at 27-28.)
Although actual figures are confidential, the average number of
active accounts for its "CHOICE" credit card services in 2001 was
in the neighborhood of a million, generating several hundred
million dollars in revenue, and its business under such mark has
been "valuable ... for a long period of time". (Id. at 49.)
Opposer seeks to increase its "CHOICE" credit card business
through both new customer accounts and transfers by its existing
customers of their account balances on other credit cards.
Opposer also offers "enhanced services" with its "CHOICE" brand,
Opposition No. 91113921
8
such as credit protection, promotional items and travel programs.
(Id. at 43.) It markets its "CHOICE" credit card services "to
all socioeconomic groups" and has cardholders "across the U.S."
(Id. at 49-50.) Being a payment mechanism, opposer's "CHOICE"
credit card can be used "anywhere any MasterCard or Visa [card]
is accepted." (Id. at 61.) While both of the latter "are
primarily known as credit [cards]," Mr. Acton noted that at
present "they are focusing on debit." (Id. at 75.)
Mr. Acton nonetheless conceded that, as of the February
28, 2002 date of his deposition, he was unaware of any instances
of actual customer confusion between applicant's use of its
"CHOICES UNLIMITED" mark and opposer's use of its "CHOICE" mark,
and that he personally was unaware of any third-party uses, in
connection with debit or credit card services, of marks which
include the word "CHOICE." Likewise, applicant's witness, Mr.
Furlo, testified that while applicant began use of its "CHOICES
UNLIMITED" mark in connection with a debit card incentive program
in May 1998, he was unaware of any instances of actual confusion
between such mark and opposer's "CHOICE" credit card services.
Moreover, while opposer admits that credit card and/or
debit card services are a separate subset or category of banking
services, opposer's objections to third-party uses of marks which
include the word "CHOICE" have been limited, for the most part,
to the actual use thereof on credit and/or debit cards and do not
encompass use of such word in connection with banking services in
general. Thus, in policing its "CHOICE" mark, opposer has
entered into a number of agreements with certain third-parties
Opposition No. 91113921
9
which, while permitting the use--as an "umbrella phrase" or
"umbrella term"--of marks which incorporate the word "CHOICE" in
connection with a variety of banking services, typically prohibit
the use and/or registration of such marks on credit cards and/or
debit cards and services specifically related thereto. (Kennedy
disc. dep. at 51, 54 and 56.) For instance, opposer's agreement
with Consumer's Choice Credit Union permits use by the latter of
such name and the mark "CONSUMER'S CHOICE" in connection with
credit union services which include credit and debit card
services, but registration thereof for credit and debit card
services is prohibited. As a result thereof, Consumer's Choice
Credit Union, which has used the mark "CONSUMER'S CHOICE" since
April 1, 1997 without any known instances of actual confusion,
further agreed to amend its pending application to register such
mark for credit union services by adding the limitation "but not
for credit card or debit card services." (Consumer's Choice
Credit Union disc. dep. at 4.)
Similarly, opposer's agreement with Comerica Inc.
authorizes use by the latter of the mark "CHOICE ACCESS" for "a
package of products for telephone and computer banking," which
Comerica claims to have used without knowledge of any actual
confusion since around 1995 or 1996. (Comerica Inc. disc. dep.
at 4.) In particular, however, the agreement, which was made in
settlement of an opposition brought by opposer to registration of
such mark, provides among other things that Comerica Inc. will
not use or file an application to register the mark "CHOICE
ACCESS" on or in connection with, respectively, credit or debit
Opposition No. 91113921
10
cards per se and credit card or debit card services, but that it
may continue to use the mark for an enhanced checking account
service that offers a credit card as a prerequisite; and that it
will amend its existing application to register the mark "to
expressly exclude credit and debit cards and services." (Id. at
9.)
Likewise, opposer's agreement with First Tennessee
National Corp. allows the latter to use the marks "PRIORITY
CHOICES for consumer deposit accounts and CHOICES for a consumer
newsletter," which it claims to have respectively used since
August 12, 1996 and December 9, 1999 without awareness of any
instances of actual confusion, and permits the registration of
the "PRIORITY CHOICES" mark for "banking services except for
credit and debit cards and credit and debit card services."
(First Tennessee National Corp. disc. dep. at 3-4.) In a similar
vein, opposer's agreement with Central Cooperative Bank permits
the latter to use and register a stylized version of the mark
"CENTRAL COOPERATIVE BANK--THE RIGHT CHOICE" for "banking
services," "excluding credit card and debit card services."
(Central Cooperative Bank disc. dep. at 3.) Central Cooperative
Bank maintains that it has used such mark for approximately seven
years, with no knowledge of any incidents of actual confusion.
The record also contains copies of 30 third-party
registrations for marks which contain the word "CHOICE" or a
variant thereof. Approximately two thirds of such registrations
involve marks for banking services or credit union services, with
over half of those containing the specific exclusion of credit
Opposition No. 91113921
11
card and debit cards and/or credit card and debit card services.
Those marks which are so registered are "CONSUMERS CHOICE,"
"CHOICE ACCESS," "APPLE CHOICE BANKING," "CHOICE CREDIT,"
"INDIVIDUAL CHOICE BANKING," "CHOICE PLAN," "PRIORITY CHOICES,"
"CUSTOMER'S CHOICE," "FIRSTCHOICE," "CHOICE CONNECTION," "OWNER'S
CHOICE," "PEOPLES CHOICE," "MONEY CHOICES," "INVESTORS CHOICE,"
"CENTURA CHOICES," "A COMMUNITY OF CHOICES," "A NEW CHOICE IN
BANKING," "CLASSIC CHOICE" and "WACHOVIA BUSINESS CHOICE
ACCOUNT." Two other third-party registrations, for the marks
"MERCHANTS' CHOICE" and "LOAN CHOICE," respectively pertain to
credit card payment processing services and to loan services
which exclude credit and debit cards and credit and debit card
services. The remaining third-party registrations, which involve
the marks "PERSONAL CHOICE ACCOUNT," "ASSET CHOICE ACCOUNT,"
"CHOICEREWARDS," "BEST CHOICE," "CUSTOM CHOICE," "MCDONALD ASSET
CHOICE," "WELLSCHOICE," "THE DEALER'S CHOICE" and "SURE CHOICE,"
cover various financial management, investment brokerage, loan,
mortgage, financing and insurance services.
With respect to its pleaded registration, the record
reveals that opposer obtained such registration by successfully
arguing that the mark "SUDDENLY, IT’S THE OBVIOUS CHOICE," which
was cited as a bar in view of the prior registration thereof for
services recited as the "extension of credit to customers who
purchase at subscribing retail establishments and making
collections from such customers through a central billing
system," was not likely to cause confusion with opposer's mark
"CHOICE" for credit card services because, inter alia:
Opposition No. 91113921
12
[A] determination of the likelihood of
confusion of CHOICE and the cited slogan
requires consideration of the marks in their
entireties, including any terms in addition
to the common one. The use of CHOICE as a
part of a slogan of many words prevents the
two marks from being similar in overall sound
and appearance.
The most palpable distinction lies in
the commercial impression created by the
cited phrase, namely that of an extended
slogan, a catchy phrase, as distinguished
from the succinct and sparse impression
created by ... [the CHOICE] mark.
An equally prominent distinction lies in
the emphasis inherent in the word SUDDENLY of
the cited phrase, a prominence elevated by
both the intrinsic impact of the word
SUDDENLY and its lead appearance in the
slogan.
(File History of Reg. No. 1,206,796: July 21, 1981 Response to
January 22, 1981 Office Action, at 2.)
As to applicant, the record shows that it runs two
awards redemption or employee performance improvement programs
for its corporate clients. The purpose of such programs, Mr.
Furlo explained, is "to motivate either sales, service, scrap
production or consumer activity to generate a benefit for our
clients by offering a reward mechanism," which typically consists
of "a travel destination and/or a merchandise item, a cash item
and/or possibly cash loaded onto a debit card." (Furlo tr. dep.
at 5.) Of the programs which it runs, one involves merchandise
while the other, which applicant operates under the mark "CHOICES
UNLIMITED," features debit cards bearing such mark. Applicant,
while deriving around $30,000 in fees from such program, does not
currently produce marketing or advertising materials therefor,
Opposition No. 91113921
13
nor does it otherwise promote its "CHOICES UNLIMITED" mark or
have any future plans for the program. Although the "CHOICES
UNLIMITED" program is mentioned by applicant in its existing
company brochures and on its website, "it's not something ...
that we're actively trying to sell," according to Mr. Furlo.
(Id. at 8.)
As of his September 5, 2002 trial deposition, Mr. Furlo
testified with respect to applicant's "CHOICES UNLIMITED" debit
card program that applicant currently is "operating award
programs for two companies, one [of which] is General Motors and
the other is TRW."6 (Id. at 6.) Applicant developed the
"CHOICES UNLIMITED" mark while "looking for a name that would
provide our clients with the ability to have something that gave
them a connotation that this award [program] could be utilized
for any purchase activity." (Id. at 7.) When applicant selected
its mark, Mr. Furlo, who has worked for applicant since 1995 and
been an officer thereof since 1997, was not aware of opposer's
use of the mark "CHOICE" in connection with credit cards.
In actual use, the mark "CHOICES UNLIMITED" appears
prominently on the front of applicant's debit cards, along with a
"MASTERCARD" logo, while the "MORLEY" portion of applicant's name
is featured on the back of such cards, together with (in very
small print) a toll-free customer service number and a caveat
stating (among other things) that: "This card is not a credit
card and use of this card by you will be your acceptance of the
6 No amendment to allege use, which as noted earlier began in May 1998,
has been filed in connection with applicant's involved application.
Opposition No. 91113921
14
terms outlined in your distributed program materials."
(Applicant's Ex. 2.) Moreover, nothing on the front of the debit
cards used in applicant's "CHOICES UNLIMITED" program tells a
vendor whether a card is a debit card or a credit card. The
cardholders participating in such program can include anyone and
are located throughout the United States, since there is no limit
as to where the debit cards can be used. The cards, in fact, may
be used wherever opposer's "CHOICE" credit cards are used. In
addition, while applicant sends cardholders a periodic statement
bearing the "CHOICES UNLIMITED" mark, its name does not appear
thereon.
Applicant offers its "CHOICES UNLIMITED" program to
persons "who would be in a purchasing or marketing or sales
activity that is looking to utilize a debit card for a reward
program." (Furlo tr. dep. at 8.) It maintains, therefore, that
the purchasers of its incentive or performance improvement
program are "[v]ery sophisticated" and know that they are dealing
with applicant rather than opposer. (Id. at 24.) In marketing
such program, applicant, unlike the case with opposer's "CHOICE"
credit card services, does not use solicitation letters to try to
increase business. Applicant, furthermore, has never used its
"CHOICES UNLIMITED" mark in connection with credit cards.
Instead, it has always used such mark exclusively in connection
with debit cards for incentive programs. In terms of the volume
of cards which applicant has had issued, Mr. Furlo testified that
"between 4,000 and 5,000 cards ... have been distributed,
Opposition No. 91113921
15
utilized and cancelled over the last four and a half years" of
the "CHOICES UNLIMITED" program; and that while applicant "just
recently reprinted another 5,000 cards," he did not know "the
exact number that are in circulation and still valid." (Id. at
14.) However, except as noted below, applicant essentially has
"no interface with the direct user" of its cards. (Id. at 26.)
In operation, an individual participant or user of
applicant's services cannot add money to a "CHOICES UNLIMITED"
debit card; rather, as pointed out by Mr. Furlo, a card is funded
through the following process:
What would happen is we would have a client
that would want to utilize a debit card as a
reward. At the end of the program period
they'll give us a list of winners, [and] the
dollar amounts to load on each debit card.
We would then ... forward that
information onto our banking partner, wire
the money to the bank. The bank will then
produce the cards and send the cards to the
individual ... winners.
At the same time we will produce a
letter and send it to the individual winners
[saying] that this card is coming, here's how
it works, here's the dollar amount you have
on the card. You're free to utilize it
anywhere MasterCard is accepted, anywhere
worldwide. And you have this limit to spend
and once you spend it its gone.
There is some instances where they have
put another line saying this is an ongoing
program, so you could win again. So hold
onto your card because the person who has
awarded this card to you from your
organization might come back to you and say
you have won again. And then they would put
additional funds onto the card.
(Id. at 9-10.) Thus, once an individual winner receives a
"CHOICES UNLIMITED" debit card as an award, such person, as the
Opposition No. 91113921
16
mark suggests, could use it for "anything under the sun." (Id.
at 13-14.) As examples thereof, Mr. Furlo noted that:
You could go buy groceries with it, you could
go buy merchandise, you could pay bills. We
wanted to convey an unlimited arena for which
you could use this award for.
(Id. at 14.)
While applicant also provides a toll-free telephone
number to answer questions from end users about their statement
balances and other aspects of its "CHOICES UNLIMITED" program,
applicant does not solicit any business from such users and has
no plans to change the manner in which its debit cards are used.
Moreover, there is nothing in either the letters or statements
which applicant sends to the end users of its debit cards which
indicates or explains that its "CHOICES UNLIMITED" program is not
related to or affiliated with opposer's "CHOICE" credit cards.
In fact, Mr. Furlo admitted that he does not know whether any of
the award winners in applicant's program also have a "CHOICE"
credit card.
Mr. Furlo also testified that, since the taking of his
discovery deposition, he had become aware of certain third-party
uses of marks which include the term "CHOICE" on or in connection
with credit card or debit card services. Such uses include some
of those previously discussed herein. In particular, Mr. Furlo
noted the use by Consumers Choice Credit Union, in the Saginaw,
Michigan area where applicant is located, of the mark "CONSUMERS
CHOICE CREDIT UNION" on the face of a "VISA" credit card being
advertised in a pamphlet he picked up in a personal visit to such
Opposition No. 91113921
17
bank. He also conducted an Internet search and discovered use by
First Tennessee National Corp. of the mark "PRIORITY CHOICES" for
a checking account which includes a no-fee debit card and a no-
fee "VISA" credit card. In addition, his Internet search led to
the discovery of use by Community Choice Credit Union of its name
as a mark for credit union services which include a debit card
and a "VISA" credit card; the use by First Choice Banks of its
name for banking services which include its "FIRST PREMIER BANK
VISA" credit card; and the use by Apple Bank of the mark "APPLE
CHOICE BANKING" in connection with banking services which include
an ATM debit card.
Mr. Furlo admitted on cross-examination, however, that
after becoming aware of the above third-party uses, he did not
speak with or have anyone contact First Tennessee National Corp.,
Community Choice Credit Union, First Choice Bank or Apple Bank
regarding their respective marks. He further conceded that his
sole purpose in downloading information such as that from the
Community Choice Credit Union website was to find other uses of
the word "CHOICE" for purposes of this litigation. He also
admitted, among other things, that he had no knowledge as to
whether Community Choice Credit Union or Apple Bank has an
agreement with opposer; and that other than the information he
located from various websites, he has no independent knowledge
about the uses shown therein. Furthermore, he acknowledged that
some credit cards have dollar amount limits and that some banks
issue both credit cards and debit cards.
Opposition No. 91113921
18
We find upon consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether there is a
likelihood of confusion that, because each of such factors either
favors opposer or is neutral and none favors applicant, confusion
is likely from the contemporaneous use of the parties' marks in
connection with their respective services. Specifically, as to
the du Pont factor concerning the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression, applicant's "CHOICES
UNLIMITED" mark is substantially similar in appearance and sound,
and virtually identical in connotation and commercial impression,
to opposer's "CHOICE" mark due to the presence in such marks of,
respectively, the plural and singular forms of the word "CHOICE."
See, e.g., Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341
(CCPA 1957) ["there is no material difference, in a trademark
sense, between the singular and the plural form of the word"];
and Calvin Klein Industries Inc. v. Calvins Pharmaceuticals Inc.,
8 USPQ2d 1269, 1271 (TTAB 1988) [addition of the letter "S" "does
little to distinguish" the mark "CALVINS" from the mark
"CALVIN"]. In addition, applicant's "CHOICES UNLIMITED" mark is
substantially similar in sound and appearance to opposer's
"CHOICE" mark since it begins with the virtually identical word
"CHOICES." See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000) ["as the Board found,
because" the marks "LASER" and "LASERSWING" both "begin with
Opposition No. 91113921
19
'laser,' they have 'consequent similarities in appearance and
pronunciation'"].
While applicant's mark also contains the word
"UNLIMITED" while opposer's mark does not, such does not
sufficiently differentiate the parties' marks inasmuch as there
is very little difference in connotation between applicant's
"CHOICES UNLIMITED" mark, which when used in connection with
debit card services obviously means a card which can be used to
purchase whatever a cardholder may choose or want, and opposer's
"CHOICE" mark, which when used for credit card services similarly
connotes a card which can be used to purchase whatever a
cardholder chooses or wants. Overall, the substantial aural and
visual similarities between the respective marks, coupled with
their virtually identical connotations, give rise to marks which
engender essentially the same commercial impressions and which,
when used in connection with debit card services and credit card
services, would be likely to cause confusion as to source or
sponsorship.
Applicant argues in its brief, however, that as shown
by the file history of the registration for opposer's "CHOICE"
mark, opposer is advancing a position which is contrary to that
which it took in obtaining its registration. In this regard,
applicant asserts that as between a mark which consists of the
word "CHOICE" and a mark which is composed thereof and any other
matter, opposer previously "took the position that [its mark and]
any mark including 'choice' as a component 'prevents' the two
marks from being similar ...." While opposer in its reply brief
Opposition No. 91113921
20
asserts that "such a statement has no evidentiary applicability
here, today," and that applicant "identifies no support for its
argument," we note that as set forth in Interstate Brands Corp.
v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154
(CCPA 1978):
That a party earlier indicated a contrary
opinion respecting the conclusion [of a
likelihood of confusion] in a similar
proceeding involving similar marks and goods
[and/or services] is a fact that may be
received in evidence as merely illuminative
of shade and tone in the total picture
confronting the decision maker. To that
limited extent, a party's earlier contrary
opinion may be considered relevant and
competent. Under no circumstances, may a
party's opinion, earlier or current, relieve
the decision maker of the burden of reaching
his own ultimate conclusion on the entire
record.
Moreover, and in any event, rather than constituting a
prior inconsistent position, what opposer actually argued in
support of the registrability of its "CHOICE" mark over the cited
"SUDDENLY, IT'S THE OBVIOUS CHOICE" mark was that, as indicated
previously, "[t]he use of CHOICE as a part of a slogan of many
words prevents the two marks from being similar ..." and that
"the commercial impression created by the cited phrase, namely
that of an extended slogan, a catchy phrase," is to be
"distinguished from the succinct and sparse impression created by
... [the CHOICE] mark" (emphasis added). In the present case,
applicant's "CHOICES UNLIMITED" mark cannot reasonably be
characterized as a "slogan of many words" or as "an extended
slogan, a catchy phrase." Rather, like opposer's "CHOICE" mark,
applicant's mark projects a "succinct and sparse impression." In
Opposition No. 91113921
21
view thereof, and in light of the similarities in sound,
appearance, connotation and commercial impression discussed
above, applicant's mark is confusingly similar to opposer's mark
when the marks are considered in their entireties.
With respect to the du Pont factors which pertain to
the similarity or dissimilarity of the services and the
similarity or dissimilarity of established, likely to continue
trade channels, such factors clearly favor opposer. In this
regard, it is well settled that the registrability of an
applicant's mark must be evaluated on the basis of the
identification of its goods and/or services as set forth in the
involved application for its mark and the identification(s) of
the goods and/or services as recited in the pleaded
registration(s) made of record by an opposer for its mark,
regardless of what the record may reveal as to the particular
nature of the respective goods and/or services, their actual
channels of trade, or the classes of purchasers to which they are
in fact directed and sold.7 See, e.g., Octocom Systems Inc. v.
7 Although not argued or cited in its brief, applicant asserted at the
oral hearing that under Kenner Parker Toys Inc. v. Rose Art Industries
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992), cert. denied, 506
U.S. 862, 113 S.Ct. 181 (1992), a limitation is implied to its "debit
card services" so as to restrict the identification of its services,
for purposes of determining the issue of likelihood of confusion, to
those which are actually rendered by applicant. While such case
provides, inter alia, that "similarity of trade dress" may be
considered where "[t]he trade dress of the marks enhances their
inherently similar commercial impression," 22 USPQ2d at 1458, it
nowhere provides authority for the proposition that an applicant's
identification of its goods and/or services is to be implicitly
limited to those in connection with which the applicant actually uses
its mark. Thus, in the present case, the fact that both applicant's
"CHOICES UNLIMITED" mark and opposer's "CHOICE" mark are prominently
displayed in slanted lettering across the top of the front of their
respective debit cards and credit cards simply enhances the virtually
Opposition No. 91113921
22
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); and Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987). It is also well established that, absent any
specific limitations or restrictions in the identification of
goods and/or services as listed in an applicant's application and
in the identification(s) of goods and/or services as set forth in
an opposer's registration(s), the issue of likelihood of
confusion must be determined in light of consideration of all
normal and usual channels of trade and methods of distribution
for the respective goods and/or services. See, e.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, as broadly identified in the respective
application and pleaded registration, applicant seeks to register
its mark for "debit card services" while opposer lists "credit
card services." The record shows that such services, which are
generally considered a category of banking services, are merely
alternative forms of payment for essentially any kind of consumer
purchases. Moreover, as identified, neither parties' services
contain any express limitation or restriction as to types of
purchasers or channels of distribution. Therefore, contrary to
applicant's arguments in its brief that the marketing of
identical commercial impression conveyed, as discussed previously, by
such marks. See Applicant's Ex. 2 and Opposer's Exs. 12 and 13A.
Opposition No. 91113921
23
opposer's services is made directly to the consuming public while
applicant's services are instead targeted "strictly to
sophisticated purchasers at major corporations as part of
incentive programs" and that it "solicits no business directly
from the end or debit card users," applicant's debit card
services must be treated as encompassing the same class of
ordinary consumers as those to whom opposer's credit card
services are focused. Applicant's debit card services must
accordingly be considered as competing with opposer's credit card
services for the same base of ordinary, reasonably prudent
consumers. Such services are so closely related in legal
contemplation, if not in fact, that if rendered under the same or
similar marks, confusion as to the origin or affiliation thereof
is likely to result.
As to the du Pont factor which concerns the conditions
under which and buyers to whom sales are made, we again note that
contrary to applicant's argument that it markets its services
only to sophisticated, highly discriminating individuals who
direct corporate employee awards or incentive programs, the
purchasers of the parties' respective services--as identified in
the involved application and pleaded registration--are simply
ordinary, reasonably prudent members of the consuming public.
Consequently, and while there certainly is nothing in the record
to indicate that either debit card services or credit card
services are purchased impulsively, neither is it the case that
the record establishes that consumer purchasers of such services
Opposition No. 91113921
24
would exercise anything more than ordinary, reasonably prudent
care in their selection of such services which are appropriate to
their financial needs. The conditions under which and buyers to
whom sales are made is thus a du Pont factor which favors opposer
instead of applicant.
With respect to the du Pont factor of the fame of the
prior mark in terms of sales, advertising and length of use,
opposer contends in its initial brief that its "CHOICE" mark is
"well known" and thus is entitled to a correspondingly broader
scope of protection than might otherwise be the case. While we
agree with applicant that the evidence of record is insufficient
to establish that opposer's mark is indeed famous, we concur with
opposer that the confidential sales and promotional figures
covering many years of continuous use suffice to demonstrate that
such mark is well known and particularly so among opposer's loyal
customer base for its "CHOICE" credit card services. As noted by
our principal reviewing court in Kenner Parker Toys Inc. v. Rose
Art Industries Inc., supra at 22 USPQ2d 1456, "the fifth duPont
factor, fame of the prior mark, plays a dominant role in cases
featuring a famous or strong mark. Famous or strong marks enjoy
a wide latitude of legal protection" (emphasis added). Thus,
notwithstanding insufficient proof that opposer's "CHOICE" mark
has obtained the status of a famous mark, such mark has been
shown on this record to be strong in that it is well known and,
as additionally indicated by the number of cardholders
transferring their balances from other credit cards to their
Opposition No. 91113921
25
"CHOICE" card, is highly regarded by customers for credit card
services. This factor therefore favors opposer.
As to the du Pont factor of the number and nature of
similar marks in use on similar goods or services, applicant
argues in its brief that evidence of "extensive third party use
of the word 'choice' weakens the claimed mark" of opposer and
that such evidence includes "several third party registrations
for marks including the 'choice' component ... for banking
services." To the extent, however, that applicant is attempting
to prove by such registrations that opposer's "CHOICE" mark is
nonetheless a weak mark for credit card services inasmuch as
consumers have become so accustomed to encountering marks which
consist of or include the word "CHOICE" for banking and other
financial services that they will look to and distinguish the
subject marks by the differences therein, the problem therewith
is that it is well settled that third-party registrations are not
evidence of what happens in the marketplace or that the public is
familiar with the use of the subject marks. See, e.g., National
Aeronautics & Space Administration v. Record Chemical Co., 185
USPQ 563, 567 (TTAB 1975). The reason therefor is that third-
party registrations simply do not show that the marks which are
the subjects of third-party registrations are actually being
used, or that the extent of their use is so great that customers
have become accustomed to seeing the marks and hence have learned
to distinguish them. See, e.g., Smith Brothers Manufacturing Co.
v. Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973); and In re Hub Distributing, Inc., 218 USPQ 284, 285-
Opposition No. 91113921
26
86 (TTAB 1983). Consequently, and aside from the fact that over
half of the third-party registrations covering banking or credit
union services in any event explicitly exclude credit and/or
debit card services, the co-existence of the third-party
registrations with opposer's pleaded registration does not
justify registration of a confusingly similar mark by applicant
since, as indicated in AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973):
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registrations is not evidence of what
happens in the market place or that customers
are familiar with them nor should the
existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake or
to deceive.
See also Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) [third-party registrations
"may not be given any weight" (emphasis in original) as to the
strength of a mark].
Moreover, to the extent that applicant is instead
arguing that, like dictionary definitions, the various third-
party registrations for marks which contain the word "CHOICE" or
a variation thereof demonstrate that opposer's mark is weak in
the sense that it is highly suggestive of banking services such
as credit card services, see, e.g., Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976),
suffice it to say that, as noted above, the mark "CHOICE" has
been shown on this record to be a strong mark in that it is well
Opposition No. 91113921
27
known in connection with credit card services. However, even if
such mark were to be regarded as weak in terms of its service
mark significance, it would not mean that opposer's mark is
entitled to protection only against the same or a virtually
identical mark. Instead, it is well established that even a weak
mark is entitled to protection against the registration of the
same or a substantially similar mark for identical and/or closely
related goods or services, such as is the case with respect to
applicant's "CHOICES UNLIMITED" mark for debit card services.
See, e.g., Plus Products v. Physicians Formula Cosmetics, Inc.,
198 USPQ 111, 114 (TTAB 1978).
Nonetheless, as applicant also points out in its brief,
there are a number of examples of actual third-party use of marks
containing the term "CHOICE" in the record. Such examples, as
specified earlier, are: the use by Consumer's Choice Credit
Union of such name and the mark "CONSUMER'S CHOICE" in connection
with credit union services which include credit and debit card
services; the use by Comerica Inc. of the mark "CHOICE ACCESS"
for a package of products for telephone and computer banking,
including an enhanced checking account service that offers a
credit card as a prerequisite; the use by First Tennessee
National Corp. of the mark "PRIORITY CHOICES" for consumer
deposit accounts which offer both debit cards and credit cards
and the mark "CHOICES" for a consumer newsletter; the use by
Central Cooperative Bank of a stylized version of the mark
"CENTRAL COOPERATIVE BANK--THE RIGHT CHOICE" for banking services
which exclude credit card and debit card services; the use by
Opposition No. 91113921
28
Community Choice Credit Union of its name as a mark for credit
union services which include a debit card and a "VISA" credit
card; the use by First Choice Banks of its name for banking
services which include its "FIRST PREMIER BANK VISA" credit card;
and the use by Apple Bank of the mark "APPLE CHOICE BANKING" in
connection with banking services which include an ATM debit card.
Applicant maintains that such "multiple third party uses of marks
including the 'choice' component negates Opposer's claim of
exclusivity in all names and marks including the 'choice'
component for financial services" and that "[t]he consuming
public has not, and cannot, come to [the] conclusion that any
mark including the 'choice' component is affiliated with any
single source."
However, and aside from the fact that there is no
evidence as to the actual extent of such third-party use, what
the record demonstrates, as indicated previously, is that in
policing its "CHOICE" mark, opposer has entered into agreements
with most of the above-mentioned third-parties which, while
permitting the use, as an "umbrella" phrase or term, of marks
which incorporate the word "CHOICE" in connection with a variety
of banking services, typically prohibit the use and/or
registration of such marks on credit cards and/or debit cards and
services specifically related thereto. Moreover, although they
otherwise appear to be unfettered uses, the record simply does
not disclose whether the use by Community Choice Credit Union of
its name as a mark for credit union services which include a
debit card and a "VISA" credit card and the use by First Choice
Opposition No. 91113921
29
Banks of its name for banking services which include its "FIRST
PREMIER BANK VISA" credit card are or are not pursuant to an
agreement with opposer; and the use by Consumer's Choice Credit
Union of its name as a mark on a "VISA" credit card clearly
appears to be in contravention of its agreement with opposer.
Accordingly, contrary to applicant's assertions, the du Pont
factor of the number and nature of similar marks in use on
similar goods or services does not favor applicant; rather, such
factor tends to favor opposer or, at a minimum, is neutral.
Finally, as to the du Pont factor of the length of time
during and conditions under which there has been "concurrent use"
without evidence of actual confusion, the record is clear that
neither opposer nor applicant is aware of any instances of actual
confusion with respect to the marks at issue and that opposer is
also unaware of any incidents of actual confusion between its
mark and any third-party uses, in connection with debit or credit
card services, of marks which include the word "CHOICE." While
acknowledging, in its brief, that opposer "need not necessarily
show actual confusion to substantiate a claim for likelihood of
confusion," applicant contends that "the failure to cite even one
instance of actual confusion indicates that confusion between the
[parties'] competing marks is unlikely." In particular,
applicant maintains that the respective marks "have been in
concurrent use for at least five years without a single incident
of actual confusion" and that "[t]his length of time of
concurrent use is persuasive evidence that there is no likelihood
of confusion."
Opposition No. 91113921
30
Although the absence of any instances of actual
confusion over a significant period of time is indeed a du Pont
factor which is indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates appreciable
and continuous use by an applicant of its mark in the same
markets as those served by an opposer under its mark. See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992); and Chemetron Corp. v. Morris Coupling & Clamp Co., 203
USPQ 537, 541 (TTAB 1979). Specifically, there must be evidence
showing that there has been an opportunity for incidents of
actual confusion to occur. See, e.g., Cunningham v. Laser Golf
Corp., supra at 55 USPQ2d 1847. In this case, the absence of any
instances of actual confusion is not considered to be a
mitigating factor favoring applicant inasmuch as, in the period
spanning the four and a half years since 1998 during which the
parties have contemporaneously used their respective marks,
applicant has had only two customers for its "CHOICES UNLIMITED"
debit card services and has had distributed, in connection with
such services, no more than 4,000 to 5,000 debit cards bearing
its mark. However, while there may indeed be some number of
award incentive winners who have received applicant's debit cards
and also happen to carry opposer's "CHOICE" credit cards, there
is absolutely no evidence that such is in fact the case and what
evidence there is indicates that applicant does not know how many
recipients of its "CHOICES UNLIMITED" debit cards additionally
are customers of opposer's "CHOICE" credit card services.
Opposition No. 91113921
31
Moreover, the record shows that in marketing its debit
card services, applicant, unlike opposer, does not use
solicitation letters to try to increase business from end users
of its cards. Applicant, in fact, currently derives only about
$30,000 in fees from its debit card services program and there is
no evidence as to the volume, in terms of either dollar amount or
frequency of use, of debit card transactions incurred by end
users of applicant's cards. Furthermore, except for the mention
thereof in its existing company brochures and on its website,
applicant does not currently produce marketing or advertising
materials for its "CHOICES UNLIMITED" debit card services
program, nor does it otherwise promote such mark or have any
future plans for the program since applicant is not actively
trying to sell it to its customers. Circumstances, in short,
have been such that the absence of any incidents of actual
confusion cannot be said to be probative of a lack of a
likelihood of confusion.
We accordingly conclude, in light of the above, that
contemporaneous use by applicant of the mark "CHOICES UNLIMITED"
in connection with debit card services is likely to cause
confusion with opposer's use of the mark "CHOICE" in connection
with credit card services.
Decision: The opposition is sustained and registration
to applicant is refused.