CommerceBancorp, Inc.

Trademark Trial and Appeal Board

Jul 10, 2006

No. 76127975 (T.T.A.B. Jul. 10, 2006)

Mailed: July 10, 2006

Hearing: December 20, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Commerce Bancorp, Inc.
________

Serial No. 76127975
_______

Timothy D. Pecsenye and David M. Perry of Blank Rome LLP,
for Commerce Bancorp, Inc.

David Yontef, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Walters, Rogers and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Commerce Bancorp, Inc. has appealed from the final
refusal of the examining attorney to register the following
mark on the Principal Register for “banking services” in
Class 36:1

1 Application Serial No. 76127975 was filed on September 14,
2000, and asserts a date of first use and first use in commerce
of June 29, 1973. Applicant has disclaimed the word BANK.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76127975
2

The examining attorney refused to register applicant's mark
in view of his requirement that applicant disclaim the term
COMMERCE. According to the examining attorney, the term is
merely descriptive of applicant's services. 15 U.S.C.
§ 1056(a). See also 15 U.S.C. § 1052(e)(1).
Applicant filed an appeal brief and a reply to the
Examining Attorney's brief. An oral hearing was held
before the Board on December 20, 2005.
We first address one preliminary matter before turning
to the merits of this appeal. Applicant's appeal brief
does not conform to the requirements of Trademark Rule
2.142(b)(2), 37 C.F.R. § 2.142(b)(2), in that it is twenty-
six pages long, and the rule specifically states that,
without prior leave of the Board, an appeal brief may not
exceed twenty-five pages. TBMP § 1203.01 (2d ed. rev.
2004) states that “[i]f an applicant files a brief that
exceeds the twenty-five page limit without prior leave of
the Board, the brief will not be considered, although the
failure to file a conforming brief will not be treated as a
failure to file a brief which would result in the dismissal
Serial No. 76127975
3
of the appeal.” In view of the rule and this stated
policy, we give applicant's appeal brief no consideration.2
The examining attorney argues as follows at p. 2 of
his brief:
The term COMMERCE in the proposed mark merely
describes the character, feature and/or function
of the applicant's banking services; namely, (1)
a commercial bank whose principal functions are
to receive demand deposits and to make short-term
loans and/or (2) a bank operating in interstate
commerce. As such, when consumers encounter the
words COMMERCE and BANK used with banking
services they will immediately, without the need
for conjecture, perceive the nature of the
services.

The term “commerce” means “the buying and selling
of goods, especially on a large scale, as between
cities or nations. See synonyms at business.”
The examining attorney respectfully requests that
the Board take judicial notice of the fact that
when the term “commerce” is used as a synonym for
business the term means “the exchange and
distribution of goods or commodities: laws
regulating interstate commerce,” as established
by the attached definition from The American
Heritage® Dictionary of the English Language, 4th
Ed. Houghton Mifflin Co. (2000), which is
attached as Exhibit A. A printout of a similar
definition from Merriam-Webster’s Collegiate
Dictionary is also attached for the Board’s
review. TBMP Section 704.12.

The Board is further urged to take judicial
notice of the definition of “commercial bank” as
meaning “a bank whose principal functions are to
receive demand deposits and to make short-term
loans” and “commercial” as meaning “occupied with

2 Applicant's attorney was advised during the oral hearing that
the Board would not consider applicant's appeal brief.
Applicant’s request filed after the hearing on December 27,
2005 that the Board consider the brief, or delete certain
portions of the brief, is denied.
Serial No. 76127975
4
or engaged in commerce or work intended for
commerce; of or relating to commerce,” as noted
by the attached definitions from The American
Heritage® Dictionary of the English Language, 4th
Ed., Houghton Mifflin Co. (2000) and Merriam-
Webster Online Dictionary, Merriam-Webster, Inc.
(2005) …. Printouts of similar definitions from
Merriam-Webster’s Collegiate Dictionary are also
attached for the Board’s review.

The examining attorney also relies on excerpts from news
articles taken from the Nexis database and third party
registrations which, according to him, “show common
descriptive usage of the terms COMMERCE BANK by several
banks,” mentioning Valley Commerce Bank of Phoenix, Detroit
Commerce Bank, First Commerce Bank, Texas Commerce Bank and
others. More specifically, the examining attorney notes
that Registration No. 2611416 for FIRST COMMERCE BANK
includes a disclaimer of COMMERCE BANK and Registration No.
1868580 for TEXAS COMMERCE BANK is registered under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), and
includes a disclaimer of BANK.
In its reply brief, applicant argues that “the
purpose, function, characteristic or feature upon which the
disclaimer is based must indeed be immediately recognized
as a key, primary, intended, or significant one, and that
in the instant case, the Examining Attorney fails to
appreciate the immediacy and significance requirements …,”
citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Serial No. 76127975
5
Cir. 1987); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBASSOCIATES, 180 USPQ 338 (TTAB 1973), Reply at
p. 3. Applicant notes that “[c]onnections to distal or
secondary features, purposes, characteristics, or
attributes are not sufficient to ground a determination of
descriptiveness”; and that the examining attorney has
“improperly, or at best, overzealously, misstated or
diluted the applicable law in order to support the
misplaced disclaimer requirement.” Reply at pp. 5 and 7.
Applicant also maintains that the examining attorney
relies not only on the definition of “commerce” to arrive
at his conclusion that the term is descriptive, but also
relies on the terms “business,” “commercial” and
“commercial bank,” none of which is part of applicant's
mark; that the ordinary consumer would not “think” about
“large scale buying and selling of goods” – which is part
of the cited definition of “commerce” - when perceiving the
term “commerce” in applicant's mark; and that the examining
attorney’s definition of commerce is “pertinent in the
fields of international trade or import/export businesses,
[but] is in no way primary, key, significant, or central,
when properly viewed in the context of a retail bank ….”
Further, applicant contests the propriety of the
examining attorney’s reliance on (a) a definition of
Serial No. 76127975
6
“business” merely because the dictionary definition of
"commerce" referenced above says, in part, “[s]ee synonyms
at business”; and (b) the explanation within the dictionary
entry for "business" that when the synonym "commerce" is
used, it is used to refer to "the exchange and distribution
of goods or commodities: laws regulating interstate
commerce.” According to applicant, neither the definition
nor the explanation has a connection to banking services.
Applicant also challenges the examining attorney’s
reliance on the definitions of “commercial bank” and
“commercial.” Applicant observes that its mark does not
include these terms; and that unlike the use of “commercial
bank” in a bank’s name, which indicates that the bank
receives deposits and makes loans, the use of “commerce” in
a bank’s name does not, without “additional leaps and
thoughts,” indicate that the bank makes loans.
Applicant concludes as follows:
Where “COMMERCE” says nothing immediately of
the ordinary and most significant facets of
banking services – e.g., savings account
services, checking account services, money market
account services, ATM services, certificate of
deposit services, and the like – it is suggestive
under the Trademark Act. The conclusion of
descriptiveness drawn by the Examining Attorney
is transitive and indirect in nature, and totally
lacking in the immediacy and significance
required for a descriptiveness determination
under trademark law. See In re Hutchinson Tech.
Inc., 852 F.2d 552 (Fed. Cir. 1988) ….”
Serial No. 76127975
7
In the final analysis, the leaps from
“commerce” to “business,” then to synonyms for
“business,” over to “commercial bank” and back to
“commercial,” are the very embodiments of the
imagination, thought, and perception that are the
touchstones of a suggestive – not merely
descriptive – term.” Brief at pp. 11- 12.

A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Gyulay, 3
USPQ2d at 1009; and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). Courts have long held that
to be “merely descriptive,” a term need only describe a
single significant quality or property of the goods or
services. In re Gyulay, 3 USPQ2d at 1009; Meehanite Metal
Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ
293 (CCPA 1959). It is settled that “[t]he question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316 - 1317 (TTAB
2002). See also In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990). As the Board has
explained:
Serial No. 76127975
8
… the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537
(TTAB 1998).
We agree with applicant that the examining attorney
has not established herein that the term COMMERCE as used
in applicant's mark is merely descriptive of applicant's
banking services. The definition of “commerce” cited by
the examining attorney in initially requiring a disclaimer
of “commerce,” i.e., “the buying and selling of goods,
especially on a large scale, as between cities or nations,”
does not suggest anything about an ingredient, quality,
characteristic, feature, function, purpose or use of the
services that a bank provides, defined as “an establishment
for the custody, loan, exchange, or issue of money, for the
extension of credit, and for facilitating the transmission
of funds.” See definition of “bank” and “banking,” from
Merriam Webster’s Collegiate Dictionary (10th ed.),
submitted with the examining attorney’s brief, of which we
Serial No. 76127975
9
take judicial notice.3 Such services include those services
that applicant stated it provides, i.e., “savings account
services, checking account services, money market account
services, ATM services, certificate of deposit services ….”
Reply at p. 11.
Additionally, we are not persuaded by the examining
attorney’s contention that “commerce” is a merely
descriptive term because the dictionary entry for
“commerce” includes the term “business” as a synonym for
“commerce.” See brief at p. 2. Even if we assume that the
consuming public would understand “commerce” as “business,”
the term “business” is a broad one and can include any
number of activities.4 Hence, this evidence does not
establish that “commerce” is merely descriptive of any
particular characteristic, feature and/or function of
applicant's services. In this regard, our consideration of
“commerce” in connection with applicant's banking services
is not dissimilar to the Federal Circuit’s treatment of

3 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).
4 The explanatory phrase within the definition of “business” that
refers to “commerce,” i.e., “[c]ommerce and trade refer to the
exchange and distribution of goods or commodities: laws
regulating interstate commerce,” which the examining attorney
cites, is simply too ambiguous to suggest anything regarding a
specific characteristic, feature or function of banking services.

Serial No. 76127975
10
“technologies” in connection with “etched metal electronic
components; flexible circuits; actuator bands for disk
drives; print bands; increment discs; [and] flexible
assemblies for disk drives” in the mark HUTCHINSON
TECHNOLOGIES. See In re Hutchinson Tech. Inc., 852 F.2d
552, 7 USPQ2d 1490 (Fed. Cir. 1988). In concluding that
“technologies” was not a merely descriptive term, the court
stated, “‘technology’ is a very broad term which includes
many categories of goods. The term ‘technology’ does not
convey an immediate idea of the ‘ingredients, qualities, or
characteristics of the goods’ listed in Hutchinson's
application.” Id., 7 USPQ2d at 1492.
The examining attorney has also argued that COMMERCE
is merely descriptive of “(1) a commercial bank whose
principal functions are to receive demand deposits and to
make short-term loans ….” Brief at p. 2. “Commercial” is
defined as “of or relating to commerce” - there clearly is
a relationship between the terms “commerce” and
“commercial.” However, “commercial” in the context of
banking is a term with specific significance in that it is
part of the defined phrase – “commercial bank.” See
definition of “commercial bank,” i.e., “a bank whose
principal functions are to receive demand deposits and to
make short-term loans,” submitted by the examining attorney
Serial No. 76127975
11
with his brief, of which we take judicial notice. Because
“commercial” has significance in the banking context, the
consuming public would not likely make an immediate
association between “commerce” and banking services, even
if “commercial” is a form of the word “commerce.” An
additional mental step is required to make the connection
between “commerce” and “commercial.” Hence, the examining
attorney has not established that “commerce” merely
describes a significant characteristic, feature or function
of applicant's banking services and therefore has not
established that the term is merely descriptive of such
services. See In re MBAssociates, 180 USPQ at 339.
The remaining evidence submitted by the examining
attorney also does not establish that “commerce,” as it
appears in this mark, is merely descriptive of applicant's
services. The examining attorney has entered articles from
the Nexis database into the record, with his July 3, 2003
and March 25, 2004 Office actions, that include “Commerce
Bank.” See, e.g., “Plains Commerce Bank” from Aberdeen
American News (South Dakota), March 6, 2004; “Pacific
Commerce Bank” from Los Angeles Times, November 11, 2002;
and “Seacoast Commerce Bank” from ABA Banking Journal,
March 2004. Additionally, with his April 12, 2005 Office
action, the examining attorney has submitted printouts of
Serial No. 76127975
12
web pages from banks having “commerce” in their names.
See, e.g., “Commerce Bank & Trust” from
www.bankatcommerce.com; “The Commerce Bank of Washington”
from www.tcbwa.com; “Ann Arbor Commerce Bank” from
www.annarborcommerce.com; and “Virginia Commerce Bank” from
www.vcbonline.com. Each use of “Commerce Bank” in the
examining attorney’s evidence is as a part of the name of a
bank. Such uses do not establish use of “commerce” in a
descriptive manner but rather simply demonstrate that the
term “commerce” is widely used in marks for banks. Cf. In
re Hutchinson Technologies, 7 USPQ2d at 1492 (“… the fact
that the term ‘technology’ is used in connection with
computer products does not mean that the term is
descriptive of them. … At most, all that may be concluded
from Hutchinson’s concession is that a mark including the
term ‘technology,’ which mark is used on computer products,
is a weak mark for those goods.”).
The examining attorney has also pointed out that
Registration No. 18685805 for the mark TEXAS COMMERCE BANK
including “banking services” has been registered under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), and that
Registration No. 2611416 for the mark FIRST COMMERCE BANK

5 Renewed September 1, 2005.
Serial No. 76127975
13
for “banking services” includes a disclaimer of “commerce
bank.” Both registrations were made of record with the
July 3, 2003 Office action. In turn, applicant, at pp. 13
– 14 of its reply brief, points to the following two
registrations which did not register under Section 2(f) and
which do not include a disclaimer of “commerce”:
Registration No. 2831145 for COMMERCE CHECKVIEW
for “providing customers with bank statements
containing images of their checks rather than the
actual checks”; and

Registration No. 2839401 for COMMERCE
TREASURYDIRECT for “banking services provided to
business customers ….”

Of course, we are not privy to the records of any of these
registrations and are not bound by the prior determinations
made by the Office. Each case must be decided on its own
set of facts. While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based on the record before us, whether applicant's mark is
registrable. See Jean Patou, Inc. v. Aristocrat Products
Corp., 202 USPQ 130 (TTAB 1979); and 5 J. McCarthy,
McCarthy on Trademarks & Unfair Competition §32:103 (4th
ed. database updated 2006). Even if we were to assume
identical records in these registrations, what this
evidence demonstrates at most is that there may be
Serial No. 76127975
14
conflicting practices with respect to this term within the
Office.
We have also considered the remaining arguments set
forth by the examining attorney and do not find them
persuasive of the issue involved in this appeal.
Decision: The requirement for a disclaimer of
"COMMERCE" is reversed. Applicant's current disclaimer of
“BANK” shall remain of record.