Commerce Bancorp, Inc.v.Martell & Associates Financial Services Co.

Trademark Trial and Appeal Board

Oct 5, 2004

No. 91150981 (T.T.A.B. Oct. 5, 2004)

Hearing: Mailed:
June 2, 2004 October 5, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Commerce Bancorp, Inc.
v.
Martell & Associates
Financial Services Company
_____
Opposition No. 91124853
to application Serial No. 75542147
filed on August 25, 1998
Opposition No. 91150981
to application Serial No. 75981093
filed on August 25, 1998
Opposition No. 91151895
to application Serial No. 76172404
filed on November 29, 2000
_____
Timothy D. Pecsenye, Dennis P. McCooe, Christopher M. Turk
and Megan E. Spitz of Blank Rom LLP for Commerce Bancorp,
Inc.
G. Franklin Rothwell and Robert H. Cameron of Rothwell,
Figg, Ernst & Manbeck, P.C. for Martell & Associates
Financial Services Company
______
Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition Nos. 91124853, 91150981 and 91151895
2
Commerce Bancorp, Inc. has opposed three applications
filed by Martell & Associates Financial Services Company.
The applications are Serial No. 75542147 for COMMERCE TRUST
(with TRUST disclaimed) for “banking, and credit insurance
brokerage”;1 Serial No. 75981093 for COMMERCE TRUST (with
TRUST disclaimed) for “mortgage banking, mortgage lending,
and mortgage brokering”;2 and Serial No. 76172404 for
COMMERCE TRUST in the stylized form shown below for
“financial services, namely, mortgage banking, mortgage
lending and mortgage brokerage services” with TRUST
disclaimed).3
1 Filed August 25, 1998, based on an asserted bona fide
intention to use the mark; originally the application included
other services, but they were divided out into “child”
application Serial No. 75981093 so that applicant could file an
amendment to allege use with respect to the services in the child
application.
2 As explained above, this application was initially part of
Application Serial No. 75542147, and was subsequently divided out
into a child application. Applicant initially based the
application on a claimed intention to use the mark in commerce,
and subsequently filed an amendment to allege that the mark was
first used and first used in commerce in July 1998, which was
accepted by the USPTO on August 3, 2001.
3 Filed November 29, 2000, and asserting first use and first use
in commerce on May 15, 1999.
Opposition Nos. 91124853, 91150981 and 91151895
3
As grounds for opposition, opposer has alleged that it
has used various marks composed in whole or in part of the
word COMMERCE, namely C COMMERCE BANK (stylized), COMMERCE
CAPITAL MARKETS, COMMERCE CHECKVIEW, COMMERCE ON-LINE, THE
COMMERCE ADVANTAGE, COMMERCE!WOWZONE, COMMERCE!WOWZONE and
design, COMMERCE, COMMERCE BANK and COMMERCE NATIONAL.
Opposer has characterized these marks as “the COMMERCE
mark,” and has further alleged that it has offered a variety
of financial services under “the COMMERCE mark,” including
banking services, mortgage services, financial services in
the nature of financial planning and investment brokerage
and consultation services, insurance services, namely,
brokerage of a group personal insurance product that
includes automobile and homeowner’s insurance, and
educational services in the nature of conducting children’s
programs in the fields of banking and financial services;
that it owns various applications and registrations for “the
COMMERCE mark,” although it has identified only applications
for several of the marks enumerated above; that it has used
“the COMMERCE mark” since at least 1973; that it has
provided mortgage services in Pennsylvania under “the
COMMERCE mark” since 1989; that its use of “the COMMERCE
mark” predates the filing date of applicant’s intent-to-use
application Serial No. 75542147; that its use of “the
COMMERCE mark” predates the dates of first use alleged in
Opposition Nos. 91124853, 91150981 and 91151895
4
applicant’s application Serial Nos. 75981093 and 76172404;
and that the use of applicant’s marks for its identified
services is likely to cause confusion, mistake and
deception.
Applicant has denied the salient allegations of the
notices of opposition in its answers thereto. The
proceedings were then consolidated by the Board upon
applicant’s consented motion.
Before discussing the record, we must address opposer’s
motion to strike. Opposer seeks to exclude the exhibits
submitted under one of applicant’s notices of reliance, as
well as the 56 exhibits introduced with the testimony
deposition of applicant’s witness, Jessica M. Blydenburgh.
Opposer asserts that applicant did not produce them in
discovery in response to a document production request, and
therefore opposer asserts that applicant is precluded from
relying on them at trial. The specific discovery request
for which opposer contends these exhibits should have been
produced is, “All documents...upon which Applicant may rely
in connection with the within proceeding.”
As opposer correctly points out, properly discoverable
material that is not produced during discovery cannot be
relied upon at trial. However, a party need not specify the
evidence it intends to present in support of its case.
Polaroid Corporation v. Opto Specs, Ltd., 181 USPQ 542 (TTAB
Opposition Nos. 91124853, 91150981 and 91151895
5
1974). Applicant had no duty to disclose every document on
which it “may rely,” and therefore applicant’s failure to
produce these documents does not constitute a failure to
produce properly discoverable material. See Time Warner
Entertainment Company L.P. v. Jones, 65 USPQ2d 1650 (TTAB
2002); Charrette Corp. v. Bowater Communication Papers Inc.,
13 USPQ2d 2040 (TTAB 1989).
Nor can applicant’s response to the document production
request--“Martell will produce responsive, non-privileged
documents”--be considered a waiver of any objection to the
request. See Charrette Corp. v. Bowater, supra.
Accordingly, opposer’s motion to strike these exhibits is
denied.4
Opposer has also moved to strike Exhibit B to another
of applicant’s notices of reliance. This exhibit is an
“unpublished” decision of the Board in In re Commerce
Bancorp., Inc., involving Serial No. 75422600 for COMMERCE
CAPITAL MARKETS, one of the applications pleaded in the
notices of opposition. Opposer argues that because this
decision is marked “Not Citable as Precedent,” it should be
stricken from the record. Applicant, in opposing the
motion, has stated that it is relying on factual findings
the Board made concerning issues overlapping with the
4 In view of our finding that the document production request
was not proper, we will not burden this opinion with a discussion
of applicant’s additional arguments opposing the motion.
Opposition Nos. 91124853, 91150981 and 91151895
6
instant proceeding, and not for controlling precedent.
Applicant also stated, at the oral hearing before the Board,
that it was submitted for its collateral estoppel effect.
Although in general the Board will not consider
decisions which are marked “not citable as precedent,” there
are certain exceptions to this policy, e.g., when a party is
asserting claim preclusion or issue preclusion. In this
case, because the decision involves one of the applications
which opposer has asserted in its pleadings, the Board will
consider it for whatever probative value it may have.
Opposer’s motion to strike is denied. We would point out,
however, that merely submitting a decision having certain
findings of fact is not sufficient to establish those facts
in another case.
The record includes the pleadings; the files of the
opposed applications; the testimony, with exhibits, of
opposer’s witness Allegra Sandelli and applicant’s witness
Jessica M. Blydenburgh, and of opposer’s rebuttal witness
David M. Perry.5 Opposer has submitted, under notice of
5 The entire transcript of the Perry deposition, including all
exhibits, was filed under seal. Board proceedings are matters of
public record, and therefore only truly confidential material
should be designated as such. Although much of the transcript
involves attorney work product, in that the witness is an
attorney for opposer, and testified regarding trademark
enforcement, even the parties were aware during the deposition
that certain portions of the testimony were not confidential.
See pages 33-34 of the transcript. Moreover, we note that many
of the exhibits are publicly available documents, taken from the
records of the U.S. Patent and Trademark Office. Accordingly,
opposer is allowed thirty days from the mailing date of this
Opposition Nos. 91124853, 91150981 and 91151895
7
reliance, status and title copies of six of its
registrations and certified copies of two of its
applications. Four of the registrations were applications
at the time they were pleaded in the notice of opposition:
MARK SERVICES
THE COMMERCE ADVANTAGE Insurance services, namely,
brokerage of group personal
automobile and homeowner’s
insurance, and brokerage of
group personal automobile and
homeowner’s insurance via a
global computer network6
(Section 2(f) as to COMMERCE)
Providing an interactive web
site featuring information
for children in the fields of
banking and financial
services; educational
services in the nature of
conducting children’s
programs in the fields of
banking and financial
services, featuring school
presentations and contest
development, and guided
educational tours of bank
branches; and educational
services, namely, providing
an interactive web site
featuring educational
information, downloadable
lesson plans, and teaching
aids for educators in the
fields of banking and
finance7
decision to submit a redacted copy of the transcript, deleting
only testimony which is attorney work product or otherwise truly
confidential material, and indicating which exhibit or exhibits
should remain under seal. If opposer fails to do so, the entire
transcript, with exhibits, will be treated as a public record.
6 Registration No. 2708238, issued April 22, 2003 (Serial No.
75498020).
7 Registration No. 2680303, issued January 28, 2003 (Serial No.
76333593).
Opposition Nos. 91124853, 91150981 and 91151895
8
COMMERCEWOW!ZONE Providing an interactive web
site featuring information
for children in the fields of
banking and financial
services; educational
services in the nature of
conducting children’s
programs in the fields of
banking and financial
services, featuring school
presentations and contest
development, and guided
educational tours of bank
branches; and educational
services namely, providing an
interactive web site
featuring educational
information, downloadable
lesson plans, and teaching
aids for educators in the
fields of banking and
finance8
COMMERCE CAPITAL MARKETS
(CAPITAL MARKETS disclaimed)
Financial services in the
nature of financial planning
and investment brokerage and
consultation services9
Another of the registrations which was submitted, for
the mark COMMERCE for “insurance agencies featuring home,
accident, life, property, casualty, and business insurance”
and which had issued several years prior to the filing of
the notices of opposition, was not pleaded.10 Also not
8 Registration No. 2671666, issued January 7, 2003 (Serial No.
76333594).
9 Registration No. 2664917, issued December 24, 2002 (Serial No.
75422600).
10 Registration No. 2084001, issued July 29, 1997 (Serial No.
75156449); Section 8 affidavit accepted; Section 15 affidavit
acknowledged. This registration originally issued to Commerce
Insurance Agency, Inc., so it is possible that, at the time the
Opposition Nos. 91124853, 91150981 and 91151895
9
pleaded was a registration for a C design, shown below, for
banking services.11
At the time that the notices of opposition were filed, this
registration had not yet issued, and opposer did not claim
ownership of the application in its pleading. The
applications submitted under the notice of reliance are for
COMMERCE BANK and C design for banking services12 (shown
below), which was pleaded in the notices of opposition, and
COMMERCE COMMERCIAL LEASING and design for commercial
leasing services,13 which was not.
Although certain of the registrations were not pleaded,
we deem the pleadings to be amended under Fed. R. Civ. P.
15(b) to assert a claim of likelihood of confusion with
notices of opposition were filed, it had not yet been assigned to
opposer.
11 Registration No. 2506199, issued November 13, 2001 (Serial No.
76128099).
12 Application Serial No. 76127975, filed September 14, 2000.
13 Application Serial No. 76317350, filed September 26, 2001.
Opposition Nos. 91124853, 91150981 and 91151895
10
respect to these registered marks.14 The applications,
however, need not have been pleaded in any event, since the
ownership of an application is not a basis for a claim of
likelihood of confusion (although such ownership can
establish a party’s standing).
Opposer has also submitted, under notice of reliance,
applicant’s responses to opposer's requests for admission,
responses to certain of opposer's interrogatories, and
portions of the discovery deposition, with exhibits, of
Frank Martell.
Applicant has submitted, under notices of reliance,
dictionary definitions, copies of third-party registrations,
excerpts from yellow pages phone directories, file histories
of one of opposer’s pleaded registrations and three of its
pleaded applications, opposer’s responses to certain of
applicant’s interrogatories and requests for admission,
printed publications taken from the NEXIS database, and two
decisions by the Board, in both of which opposer was a
party.
The proceeding has been fully briefed, and both parties
were represented at an oral hearing before the Board.
Applicant has moved to strike opposer’s brief because it was
filed on Tuesday, January 20, 2004, when it was due on
14 As discussed infra, this deemed amendment to the pleadings has
no effect on our decision herein, that is, the presence or
absence of the registrations does not change the outcome.
Opposition Nos. 91124853, 91150981 and 91151895
11
Friday, January 16. At the oral hearing, opposer explained
that the late filing of its brief was due to a docketing
error. In view of the minimal delay in filing the brief,
(Monday, January 19 was a federal holiday), and because
briefs are of benefit to the Board, we have exercised our
discretion to consider the brief. Applicant's motion to
strike is therefore denied.
As to the merits of these proceedings, we find that
opposer has established its standing. It has made of record
its applications and registrations for various marks
containing the word COMMERCE, and has submitted testimony
evidence regarding its use of the mark COMMERCE BANK.
Turning to the issue of likelihood of confusion, there
is a preliminary matter we must address. Opposer has argued
in its brief that it has a family of COMMERCE marks, and
that applicant’s marks are likely to cause confusion with
this family. However, opposer never pleaded ownership of a
family in the notices of opposition. What opposer stated
was only that it “has made continuous and extensive use of
the following marks comprised in whole or in part of the
word ‘COMMERCE’ (hereafter ‘The COMMERCE Mark’)”, and then
listed various marks which include the word “commerce.”
(paragraph 2).15 We do not regard this as an allegation of
15 Opposer also used this same device, of referring to all of its
marks as just “the COMMERCE mark,” in its brief. Because it did
so, opposer never discussed the issue of priority with respect to
Opposition Nos. 91124853, 91150981 and 91151895
12
ownership of a family of marks in which COMMERCE is the
common element. Nor, from our review of the evidence
submitted at trial, can we find that this issue was ever
tried. Opposer never elicited any testimony about ownership
of a family of marks.
However, although applicant has vigorously argued
against opposer’s assertion of a family of marks, it has not
contended that this issue was neither pleaded nor tried. On
the possibility that applicant’s response indicates that
applicant believes that the issue was tried, we will address
the issue on the merits. Simply put, we find that opposer
has failed to demonstrate that it had established a family
of marks based on the common element COMMERCE prior to
applicant’s first use or constructive use of its three
marks. To demonstrate that one has a family of marks, it is
not sufficient to show that it has a number of registrations
or uses marks with a common term; rather, the plaintiff must
show that use of marks sharing a recognizable common
characteristic predates applicant's first use or
constructive use of its marks and is made in such a way as
to create recognition among the purchasing public that the
common characteristic is indicative of a common origin of
the goods. Sports Authority Michigan Inc. v. PC Authority
its individual marks, nor did it provide an analysis of the issue
of likelihood of confusion with respect to each of its marks.
Opposition Nos. 91124853, 91150981 and 91151895
13
Inc., 63 USPQ2d 1782 (TTAB 2001), citing J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d
1889 (Fed. Cir. 1991). Although opposer has submitted a few
advertisements in which more than one of its marks
containing the word COMMERCE is shown, they are not
sufficient to show that consumers would recognize the
COMMERCE marks to represent a family, let alone that they
would have recognized it as a family prior to July 1998,
when applicant first used its COMMERCE TRUST mark. We also
note that in these advertisements, the common element is not
the word COMMERCE per se, but is also the prominent C design
which is the subject of Registration No. 2506199, depicted
infra.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). Depending on the case, each of the factors may play
a dominant role. DuPont, 476 F.2d at 1361, 177 USPQ at 567.
Thus, in a particular case, a single duPont factor may be
dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 21
USPQ2d 1142, 951 F2d 330 (Fed. Cir. 1991).
Opposition Nos. 91124853, 91150981 and 91151895
14
In this case, the factor of the number and nature of
similar marks in use on similar goods or services plays a
dominant role in our decision. Applicant has made of record
materials taken from the websites of fourteen third parties
which use the words “COMMERCE” or “COMMERCE BANK” in their
names in connection with banking services. The bank names
include Commerce Bank, New Commerce Bank, Commerce Bank &
Trust, another and different Commerce Bank, and Commerce
Bank of Arizona. Although information provided in websites
is not always accurate, in this case we find the evidence
probative that there are banking services being offered
under these names. First, we see no reason why a company
would purport to use a name on its website and indicate the
services it offers if it does not offer such services under
that mark. Further, applicant’s counsel’s employee
telephoned many of these entities, and the calls were
answered with the name of the bank. In addition, many of
these entities responded to the witness’s request for
information with written materials bearing the names of the
banks.16
16 In an apparent attempt to counter the evidence of third-party
use of COMMERCE marks, opposer has submitted the rebuttal
testimony of one of its attorneys, who explained the general
efforts that are made to police opposer’s trademarks, and the
specific actions that have been taken in individual situations.
However, the question here is not whether opposer has failed to
enforce its rights, but whether, because of use of COMMERCE marks
by third parties, the public distinguishes among them based on
other elements in the marks.
Opposition Nos. 91124853, 91150981 and 91151895
15
Applicant has also submitted excerpts from yellow pages
directories which show listings or advertisements for New
Commerce Bank in the Greater Greenville (SC) directory,
Coastal Commerce Bank in the Houma (LA) directory, and
Commerce Bank & Trust in the Topeka (KS) directory.
Applicant also made of record numerous newspaper
articles, taken from the Nexis database, which mention banks
with the word “commerce” in their names. Although these
articles are not evidence of the truth of the matters
reported therein, they do show public exposure to such
usage, while the fact that a banking institution is
mentioned in the article indicates the existence of such
institution. These stories include the following
statements:
...the firm that represents Hillside’s
primary mortgagee, Commerce Bank and
Trust Co.
“Providence Journal-Bulletin” (Rhode
Island), September 12, 2002;
Worcester’s Commerce Bank & Trust Co.,
for instance, said its mortgage activity
has remained steady throughout the
recent change in rates.
“Sunday Telegram” (Massachusetts),
September 7, 2003;
Set up the city’s first bank account at
Commerce bank [sic].
“The Miami Herald,” August 24, 2003;
Tennessee Commerce Bank yesterday
reported first-quarter operating income
of $196,627....
“The Tennessean,” April 16, 2003;
Opposition Nos. 91124853, 91150981 and 91151895
16
Mr. Massad heads a group of investors
who own Commerce Bank, the same bank
where Wall Street Financial Associates
Inc. has been issued a line of credit….
“Telegram & Gazette” (Massachusetts),
August 22, 2003;
The principal lender--First Commerce
Bank, recently acquired by Granite
Falls-based Bank of Granite--approved
the deal, he said.
“Charlotte Observer” (North Carolina),
August 21, 2003;
John Fager, vice president of marketing
for Commerce Bank & Trust, said the
branch bank….
“Topeka Capital-Journal” (Kansas),
August 21, 2003;
Curphy [sic] Smith named to the
executive position of small business
specialist at Commerce Bank in Illinois.
“The Pantagraph” (Blooomington, IL),
March 2, 2003;
AFM also obtained a $2 million line of
credit through Commerce Bank of
Washington.
“Puget Sound Business Journal,”
January 24, 2003; and
Coral Gable, Fla.-based Commerce Bank,
owned by Caracas’ Mercantil Servicio
Financieros, ....
“Milwaukee Journal Sentinel,”
January 21, 2003.
In addition to the evidence of third-party use
submitted by applicant, in other contexts opposer itself has
acknowledged and, indeed, strongly asserted that there are
many third parties using the word COMMERCE in their
trademarks or names. During the prosecution of opposer’s
application for COMMERCE CAPITAL MARKETS (Serial No.
Opposition Nos. 91124853, 91150981 and 91151895
17
75422600), which matured into Registration No. 2664917, and
is one of the registrations on which opposer relies in the
instant proceedings, the Examining Attorney refused
registration, inter alia, on the ground of likelihood of
confusion with a registration for COMMERCE FUNDS and design
for “mutual fund investment services, namely the
solicitation and sale and distribution of mutual funds.” In
arguing against the refusal, opposer (as applicant therein)
stated that “a search of the Lexis/Nexis Business Name
Database shows that there are over 700 companies in the
United States that have the word ‘Commerce’ in their name,”
and that “a search of the Business and Economy Section of
the Internet Search Engine YAHOO! produced similar results.”
Request for recon, filed February 18, 2000. Copies of these
searches were attached to the submission, and the entire
file has been made of record by applicant in this
proceeding.
The Lexis/Nexis materials list such company names as
Commerce Union Bank, Commerce Bank and Trust, Commerce
Financial, Ltd., Commerce Finance Corporation, Commerce
Bank, Commerce Bank & Trust Company, Commerce Bancorp, Inc.,
and Commerce Financial Corporation. There are “active”
listings for “Bank of Commerce” in California, Tennessee
Mississippi, Texas, Wyoming, Idaho, Louisiana and Kansas.
The Yahoo materials include the following:
Opposition Nos. 91124853, 91150981 and 91151895
18
Redding Bank of Commerce--provider of
banking services to business and
professionals;
National Bank of Commerce--operates six
branches state-wide ;
Commerce Bank--online banking and
financial services for businesses and
individuals;
Bank of Commerce;
Metro Commerce Banks--services to
business clients include commercial
leasing, SBA loans, construction loans,
and deposit services;
Commerce Bank & Trust;
Commerce Bank--Midwestern United States
based commercial and retail bank; and
Western Commerce Bank--serving the New
Mexico communities of Hobbs, Turner,
Albuquerque, and Carlsbad and outlying
communities within a 150 mile radius of
each division or office.
Although the information provided in the Nexis and
Yahoo excerpts is extremely limited, because it was opposer
itself that furnished this information to show that
“commerce” is a commonly used term in connection with
financial services, and in support of its position that
“marks incorporating the word ‘Commerce’ in connection with
financial services are weak marks,” we think that such
evidence is entitled to some weight in the present
proceedings.
The Board, in deciding the appeal of the Examining
Attorney’s refusal to register opposer’s mark COMMERCE
Opposition Nos. 91124853, 91150981 and 91151895
19
CAPITAL MARKETS, was persuaded by its arguments and
evidence, and found that, because of “the widespread use of
the word ‘commerce’ in connection with various types of
financial institutions,” “consumers of financial services
have become accustomed to distinguish between marks and
trade names containing this word based upon other elements
of the marks and trade names,” and reversed the refusal of
registration that was based on likelihood of confusion in In
re Commerce Bancorp, Inc., Serial No. 75422600 (TTAB October
3, 2001). As shown by the file history submitted by
applicant of opposer's application for COMMERCE CHECKVIEW,
opposer later relied on this decision in support of its
application to register this mark for “providing customers
with bank statements containing images of their checks
rather than the actual checks.” Serial No. 76128098 (now
Registration No. 2831145).
Although a party’s statements during the prosecution of
other applications with respect to an asserted lack of a
likelihood of confusion are not binding on the Board, which
has the responsibility of deciding such an issue based on
the entire record, they are “illuminative of shade and tone
in the total picture confronting the decision maker.”
Interstate Brands Corporation v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978).
Opposition Nos. 91124853, 91150981 and 91151895
20
In addition to opposer’s prior statements regarding
third-party use of “commerce” marks, opposer has also
asserted, again in the prosecution of its applications for
other COMMERCE marks, that COMMERCE is a suggestive term for
financial services. In its application for the mark
COMMERCE CAPITAL MARKETS, opposer submitted a list of 191
registered marks that contain the word “commerce,” 39 of
which are in Class 36. In its application for COMMERCE
CHECKVIEW, opposer stated that there were 218 such
registered marks, of which 43 are in Class 36. The list of
third-party registrations that opposer (again as applicant
therein) filed showed only the registration number and mark,
without the goods or services. While such a listing would
normally not be sufficient to make those registrations of
record even in an ex parte proceeding, because it was
submitted by opposer it is appropriate to assume, in the
context of the present action, that opposer’s statements as
to the existence of the COMMERCE registrations, and
specifically the registrations in Class 36, are accurate.
Further, in addition to the list submitted by opposer,
applicant has submitted, under a notice of reliance, third-
party registrations for TEXAS COMMERCE BANK, COMMERCE ON
LINE, NEW COMMERCE, TENNESSEE COMMERCE BANK and design, and
FIRST COMMERCE BANK, all for banking services.
Opposition Nos. 91124853, 91150981 and 91151895
21
Third-party registrations may show the meaning of a
mark or a portion of a mark in the same way that
dictionaries are employed. Mead Johnson & Company v. Peter
Eckes, 195 USPQ 187 (TTAB 1977). As opposer stated in its
application for COMMERCE CAPITAL MARKETS, “suggestive marks
are accorded a lesser degree of protection than the more
distinctive arbitrary or fanciful marks,” citing Money
Station Inc. v. Cash Station, Inc., 38 USPQ2d 1150 (Fed.
Cir. 1995) and In re Shawnee Millions Co., 225 USPQ 747
(TTAB 1985). Request for recon, filed February 18, 2000.
Based on the evidence in this record, and as acknowledged by
opposer during the prosecution of its applications, COMMERCE
is at the very least a highly suggestive term for financial
services. In fact, in several of the third-party
registrations, as well as some of opposer’s own
registrations, the word “commerce” has been disclaimed, or
the registration has issued pursuant to Section 2(f) of the
Trademark Act, thus indicating that the term may be merely
descriptive. See, Reg. No. 1868580 for TEXAS COMMERCE BANK,
registered under Section 2(f), with “bank” disclaimed; Reg.
No. 2611416 for FIRST COMMERCE BANK, with “commerce bank”
disclaimed; opposer’s Reg. No. 2680303 for COMMERCE WOW!
ZONE and design, with a Section 2(f) claim as to the word
“commerce.” We also take judicial notice of the definition
of “commercial bank” as meaning “a bank whose principal
Opposition Nos. 91124853, 91150981 and 91151895
22
functions are to receive demand deposits and make short-term
loans.”17
Because opposer’s marks, in general, consist of the
highly suggestive word COMMERCE coupled with descriptive or
generic words, the scope of protection of opposer’s COMMERCE
marks is extremely limited. Essentially, opposer may use
these marks only to prevent the registration of virtually
identical marks for virtually identical services. Thus, in
determining the issue of likelihood of confusion, we focus
our attention on opposer’s rights in COMMERCE BANK or
relevant variations thereof for banking and mortgage
services. Opposer’s registered marks COMMERCE CAPITAL
MARKETS, COMMERCEWOW!ZONE and COMMERCEWOW!ZONE and design,
THE COMMERCE ADVANTAGE and COMMERCE are for services that,
in the context of the highly suggestive nature of the mark
COMMERCE, are too different from the applicant’s banking,
credit insurance brokerage and mortgage services, for us to
find a likelihood of confusion.18 In this connection, we
17 Webster’s II New College Dictionary, © 2001. This definition
is found in the dictionary excerpt submitted by applicant in
connection with the word “commerce.” The Board may take judicial
notice of dictionary definitions. University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
18 We do not imply from this statement that banking services and,
for example, financial planning services, or providing guided
educational tours of banks, or insurance services, are not
related. Rather, we say only that, in the context of the entire
circumstances presented by this record, and most particularly the
very circumscribed scope of protection accorded to opposer’s
marks, such services are not sufficiently similar to the
Opposition Nos. 91124853, 91150981 and 91151895
23
note that credit insurance brokerage, despite the inclusion
of the word insurance in that identification, is not at all
like the brokerage of automobile and homeowner’s insurance
or insurance agencies featuring home, accident, life,
property, casualty, and business insurance, that are
identified in opposer’s registrations. Nor is opposer’s “C”
design (depicted infra), registered for banking services, at
all similar to applicant’s marks.
Thus, because opposer cannot show likelihood of
confusion on the basis of its registered marks, it cannot
rely on those registrations in terms of the issue of
priority. Rather, because the key issue here is whether
opposer can show likelihood of confusion with respect to the
mark COMMERCE and/or COMMERCE BANK for banking or mortgage
or other very closely related services, we must look at what
common law rights opposer has established in those marks.
We begin this examination by noting that information
about applicant, its mark and services all come from
applicant's discovery responses that opposer has made of
record. Applicant has responded, in requests for admission,
that it did not use its COMMERCE TRUST marks before July
1998, and that its services rendered under the marks at
issue are presently limited to mortgage services. The
applicant’s identified services to support a finding of
likelihood of confusion.
Opposition Nos. 91124853, 91150981 and 91151895
24
request for admission did not state that applicant actually
began using its marks in July 1998; therefore, and because
applicant never submitted any evidence as to its first use,
the earliest date on which applicant is entitled to rely is
the August 25, 1998 filing date of its applications for
COMMERCE TRUST in typed form, and the November 29, 2000
filing date of its application for COMMERCE TRUST in
stylized form. Of Counsel Inc. v. Strictly of Counsel
Chartered, 21 USPQ2d 1555 (TTAB 1991).
The record shows that opposer was founded in 1973,
beginning with branches in New Jersey and expanding to
Pennsylvania in 1984. By the time of trial, opposer had
expanded to Delaware and, in New York, New York City and
parts of Long Island. From the beginning the mark COMMERCE
BANK C logo (the subject of Application Serial No. 76127975,
depicted infra), was used as signage on the bank branches.
In 1996 opposer entered the insurance arena, originally as
Commerce National Insurance Services and, since 2002, as
Commerce Insurance Services. Another affiliate, Commerce
Capital Markets, does personal investment, brokerage and on-
line trading. This service was offered under this mark
beginning in 1993, the company’s presence in this area
increased with the acquisition of A.H. Williams, a public
finance company, in 1998.
Opposition Nos. 91124853, 91150981 and 91151895
25
Commerce Bank is part of opposer. It provides a full
array of banking services. On the consumers side, these
include checking, savings, investment products, lending
products such as consumer loans, home equity loans, auto
loans and residential mortgages. On the business side, it
offers a full array of banking services, cash management
services, and leasing and lending services, such as real
estate and other commercial loans. Opposer’s witness
Allegra Sandelli testified that Commerce Bank’s most
significant growth occurred in the six years prior to her
testimony, and currently it has more than 300,000 customers,
245 offices, and assets approaching $20 billion.
Opposer advertises through newspapers, business and
trade publications, radio, television, direct marketing,
billboards and the like. It also gives away promotional
materials, such as pens, yoyos and bottles, and "Commerce
Bank Ballpark" appears on the stadium for the Somerset
Patriots.
Opposer has made of record numerous advertisements from
1996, 1997 and 1998 showing its use of the COMMERCE BANK C
logo in connection with its banking services, including
advertisements specifically for home equity loans and
mortgages. One advertisement (Sandelli exhibit 14) is for a
First Step Mortgage, and ran in daily newspapers in markets
with low- and moderate-income households, including the
Opposition Nos. 91124853, 91150981 and 91151895
26
“Philadelphia Inquirer.” Other ads for mortgages,
prominently displaying the COMMERCE BANK C logo, ran in
early 1998 in newspapers in the New Jersey shore region.
We find, on the basis of the evidence of record, that
opposer developed common law rights in the COMMERCE BANK C
logo for banking services, including mortgage lending
services, prior to applicant’s filing date/constructive use
date of August 25, 1998, the date of filing of its two
COMMERCE TRUST applications. (The application for COMMERCE
TRUST in stylized form was, as noted previously,
November 29, 2000.) Thus, opposer has established its
priority.
We further find that opposer’s and applicant’s services
are identical, in that opposer has shown prior use of its
COMMERCE BANK C logo for banking services, one of the
services which is identified in applicant’s Application
Serial No. 75542147, and for mortgage loan services (which,
in any event, are a type of banking service). Thus, this
duPont factor favors opposer. Further, because the services
are identical, the channels of trade and classes of
customers are identical as well. These customers include
all members of the public, since the banking services and
mortgage services are offered to everyone. These factors,
too, favor opposer.
Opposition Nos. 91124853, 91150981 and 91151895
27
With respect to the marks, they are virtually
identical. The word portion of opposer’s mark is COMMERCE
BANK; applicant’s marks are the words COMMERCE TRUST, with
one mark shown in stylized form. Obviously, the word
COMMERCE is common to both marks. Further, in each, the
word COMMERCE is followed by a generic or descriptive term
for the type of entity performing the service. In this
connection, we are not persuaded by applicant’s argument
that “trust,” which has a definition of “total confidence in
the integrity, ability and good character of another,” is
suggestive of a characteristic of applicant’s services.19
It is far more likely that, in connection with banking and
mortgage services, consumers would view the word TRUST in
applicant’s marks as referring to a “trust company,” which
is defined in the same dictionary excerpt submitted by
applicant as “a commercial bank that manages trusts.” Thus,
the connotations and commercial impression of both opposer’s
and applicant’s marks, based on their respective uses of
COMMERCE BANK and COMMERCE TRUST, is the same. We recognize
that opposer’s mark also has a prominent stylized letter
“C”, and that one of applicant's marks appears in stylized
letters. However, even considering the very narrow scope of
protection to which opposer’s mark is entitled, we find that
19 Webster’s II New College Dictionary, © 2001, submitted by
applicant under a notice of reliance.
Opposition Nos. 91124853, 91150981 and 91151895
28
these differences are too minor to distinguish the marks.
This duPont factor, too, favors opposer.
Opposer has also submitted evidence regarding extensive
advertising and increasing numbers of customers in what has
been an expanding geographic area. Although opposer has not
asserted that its mark is famous, and we do not find it to
be so, this factor does not favor applicant, and must be
considered neutral.
Applicant has argued that consumers are likely to be
careful and discriminating purchasers when it comes to
financial services. Even if we accept this as true, the
differences in the parties’ marks are so insignificant, and
the commercial impressions so highly similar, that we think
even careful purchasers are likely to be confused between
COMMERCE BANK C logo and COMMERCE TRUST for identical
services. Thus, although this duPont factor favors
applicant, it does not outweigh the duPont factors which
favor opposer.
As for the factors involving actual confusion, the
evidence on this is unclear. There was some discovery
testimony by applicant’s witness, Frank Martell, about
receiving a spate of wrong numbers and/or misdirected
telephone calls for a brief period of time. We cannot
determine from this testimony whether these calls were in
fact evidence of actual confusion. However, the lack of
Opposition Nos. 91124853, 91150981 and 91151895
29
evidence of actual confusion does not weigh against opposer,
since we have no information about any advertising or the
extent applicant has offered any services under the subject
marks. Thus, these duPont factors are neutral.
In summary, such factors as the number of similar marks
for similar services and the discrimination of purchasers
weigh in applicant’s favor. Although, because of the highly
suggestive nature of opposer’s marks, we have accorded them
a very limited scope of protection, opposer’s mark COMMERCE
BANK C logo and applicant’s COMMERCE TRUST marks are so
similar that, when used on identical services, we find that
applicant’s marks are likely to cause confusion.
Decision: The three oppositions are sustained.
(As noted in footnote 5, opposer is allowed thirty days
in which to file a redacted copy of the Perry testimony
deposition, and to designate which exhibits are
confidential, failing which the entire transcript and all
exhibits will be treated as a public record.)