Continental National Bank of Miamiv.Nathan J. Morgan

Trademark Trial and Appeal Board

Mar 23, 2007

No. 91157725 (T.T.A.B. Mar. 23, 2007)

Mailed:
March 23, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Continental National Bank Of Miami
v.
Nathan J. Morgan
________

Opposition No. 91157725
against Serial No. 78167957
_______

Jeffrey H. Greger and Allan M. Lowe of Lowe Hauptman &
Berner, LLP for Continental National Bank Of Miami.

Todd E. Zenger of Kirton & McConkie for Nathan J. Morgan.
_______

Before Walters, Bucher and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Nathan J. Morgan seeks registration on the Principal
Register of the mark CONTINENTAL BANK (in standard
character format) for services recited in the application,
as “banking and financial services, namely lease finance
receivables” in International Class 36.1

1 Application Serial No. 78167957 was filed on September 25,
2002 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the use of
the word “Bank” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91157725
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Continental National Bank of Miami has opposed
registration, asserting that applicant’s mark, when used
in connection with applicant’s services, so resembles a
mark previously used and registered by opposer, as to be
likely to cause confusion, to cause mistake or to deceive
under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
Specifically, opposer alleges, inter alia, that it has
used the mark CONTINENTAL NATIONAL BANK OF MIAMI in
connection with banking services continuously since 1974
and continues to use that mark, and has had a federal
registration covering this mark since 1976.
In his answer, applicant denied the salient
allegations in the notice of opposition.
Opposer and applicant have fully briefed the case.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. In
support of its case, opposer made of record the trial
testimony of Mr. Victor Lopez de Mendoza, opposer’s senior
vice president, cashier and member of opposer’s board of
directors, along with opposer’s attached Exhibits 1 - 44;
the trial testimony of Mr. Frank T. Santana, opposer’s
vice president, SBA [Small Business Administration
Opposition No. 91157725
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(Federal)] loan officer and Internet banking product
coordinator, along with opposer’s attached Exhibits 45 –
56; the trial testimony of Ms. Nancy Llerena, opposer’s
senior vice president and commercial loan officer, along
with opposer’s attached Exhibits 57 – 61; and the trial
testimony of Mr. Guillermo Diaz-Rousselot, opposer’s
executive vice president and branch administrator, along
with opposer’s attached exhibit 62.
Opposer also filed a first notice of reliance on May
11, 2005, which made of record applicant’s interrogatory
answers and documents produced in response to the
interrogatories and referenced in applicant’s answers,
primarily consisting of Federal Deposit Insurance
Corporation (FDIC) documents, as well as a second notice
of reliance on May 23, 2005, which made of record two of
opposer’s federal trademark registrations.
As part of his case-in-chief, Nathan J. Morgan made
of record his own testimony, along with applicant’s
attached Exhibits 1 - 13.
During the testimony deposition of opposer’s witness,
Mr. Mendoza, opposer made of record its registrations by
Opposition No. 91157725
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submitting a certified copy showing status and title of
the following pleaded registration:2
CONTINENTAL NATIONAL
BANK OF MIAMI
for “bank services” in
International Class 36.3

Factual Findings
Opposer
Opposer, Continental National Bank Of Miami, began
using the mark CONTINENTAL NATIONAL BANK OF MIAMI in
1974 and has been using the mark continuously since that
time. It grew from a single location to six branches
throughout Miami-Dade County, FL. Opposer has been using
the domain name continentalbank.com in connection with its
banking business since it initiated online banking
services in 1999.4 Opposer offers “a full range of
personal and business products / services from computer
home banking and full ATM service to a complete array of

2 As discussed infra, an additional registration was
submitted, but it was not pleaded and has not been considered.
3 Registration No. 1041456 issued on June 15, 1976 based on
an application filed on July 9, 1974, claiming first use
anywhere and first use in commerce at least as early as April
1, 1974; renewed. The words “National Bank of Miami” are
disclaimed apart from the mark as shown.
4 In addition to continentalbank.com, opposer also has the
domain name continentalbank.biz. Santana Tr. pp. 7 – 8,
Exhibit 47.

Opposition No. 91157725
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real estate / construction lending services for small
builders” including the offering of SBA loans. Opposer
advertises and promotes its banking services related to
financing business equipment, specifically “rapid funding
of equipment,” “100% Financing,” “fixed payment
financing,” and affordable monthly payments. (Mendoza Tr.
at pp. 4, 11; Santana Tr. at p. 5, Exhibits 45 and 46).
According to the record, opposer offers commercial loans
to businesses and has had working relationships with
leasing companies in connection with its banking and loan
services. (Llerena Tr. at p. 17 and Diaz-Rousselot Tr. at
p. 4). Opposer claims to have offered lease finance
receivable services during the course of its thirty-three
years in the banking business, particularly in the 1980’s.
(Diaz-Rousselot Tr. at p. 4.) All of these services are
offered under its mark CONTINENTAL NATIONAL BANK OF
MIAMI.
Opposer offers banking services to the general public
including, but not limited to, the Cuban-American
population in South Florida. (Mendoza Tr. at p. 12,
Exhibits 7 – 22). Members of the relevant banking
community, including customers, vendors, and businesses,
commonly refer to opposer as simply “Continental Bank.”
Opposition No. 91157725
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(Mendoza Tr. at pp. 36 - 44, Exhibits 22 – 29). In
connection with its banking services, opposer promotes use
of the term CONTINENTAL prominently. (Mendoza Tr. at pp.
53 – 54, Exhibit 39). Opposer has also promoted its
banking loan services on radio and television. (Mendoza
Tr. at pp. 55 - 62, Exhibits 41 and 42).
Applicant’s witness agrees that opposer offers “full-
service community banking offering a wide variety of
deposit products and services, and a wide variety of
credit products and services and these would be directed
both to the retail consumer of banking services as well as
the small business owner.” (Morgan Tr. at pp. 11 - 12).
Applicant
In 2003, Mr. Morgan, chief executive officer of
Continental Bancorporation, proposed the establishment of
Continental Bank, a state chartered bank, in Salt Lake
City, UT. (Morgan Tr. Exhibits 6 & 7). According to
applicant:
[Continental Bank] was to engage in what we
refer to as wholesale banking with a very
very limited and specific focus on small
business lending providing lease finance
and business loans. It differs from the
traditional community banking model, in
that we do not advertise, we do not deal
with individuals. We deal almost
exclusively only through third parties that
Opposition No. 91157725
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introduce us to possible lease financing
opportunities and other small business loan
opportunities.

(Morgan Tr. pp. 7 – 8). According to Mr. Morgan,
“Continental Bank” is a highly-specialized, five-employee
operation whose business model focuses on extending credit
to small businesses by purchasing lease contracts from
third-party intermediaries. (Morgan Tr. pp. 8 – 11).
Mr. Morgan described three scenarios for how
applicant might come to acquire an equipment loan or lease
as a company asset. He might purchase loan
participation from another bank, in which case applicant’s
ownership may well be totally blind to the borrower. Or
a loan broker may continue to service an account where
applicant has underwritten the extension of credit from
the outset. Again, applicant may well not be known to the
borrower. A final scenario is where applicant, as the
creditor, develops a direct relationship with the
borrower, where applicant and his presence are
unmistakable in the form of coupon booklets, statements,
invoices, late notices, etc., having the name CONTINENTAL
BANK prominently placed on them. (Morgan Tr. pp. 37 –
41).
Opposition No. 91157725
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Preliminary matters
Before analyzing the merits of this case, we turn to
applicant’s objections to substantially all of opposer’s
trial testimony and evidence.
First, applicant argues that Reg. No. 1041457 for
opposer’s design mark was not pleaded in the notice of
opposition, and that all references to this registration
should be stricken.5
A certified copy of this registration showing current
status and title was first introduced on May 4, 2005,
during the testimony deposition of Mr. Victor Lopez
De Mendoza. (Mendoza Tr. at pp. 62 - 63, Exhibit 44). At
the time, applicant made no objections to its
introduction. It was introduced again with a second
notice of reliance on May 23, 2005. Applicant is correct
in arguing that this registration was not pleaded in the
original notice of opposition, and that opposer failed to
amend the notice of opposition to include this
registration as a basis for its Section 2(d) claim.

5 Registration No. 1041457 for “bank services” in
International Class 36, issued on June 15, 1976 based
on an application filed on July 9, 1974, claiming
first use anywhere and first use in commerce at least
as early as April 1, 1974; renewed. The words
“National Bank of Miami” are disclaimed apart from
the mark as shown.

Opposition No. 91157725
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Opposer argues, essentially, that inasmuch as
applicant did not object to its introduction during the
testimony deposition, we should deem the issue of
likelihood of confusion with respect to this second
registration to have been tried by the implied consent of
the parties. See Fed. R. Civ. P. § 15(b).
However, the federal rules do not require such
objections to be raised at the time of introduction during
testimony, and applicant’s objecting to this registration
in the final brief represents a timely objection. At no
point has applicant treated this registration as being of
record. Therefore, we have not considered applicant’s
actions to amount to implied consent to the inclusion of
Reg. No. 1041457 as a basis for opposer’s Section 2(d)
claim. We have given the federal registration itself no
consideration in our decision herein.
With regard to applicant’s request that the Board
exclude portions of opposer’s brief, the Board does not
generally strike a properly- and timely-filed brief, or
significant portions thereof, and we decline to do so in
this case.
As to applicant’s objection to the lack of
certification of Mr. Frank Santana’s testimony, this
Opposition No. 91157725
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objection is overruled. He was sworn to tell the truth at
the beginning of the trial deposition (Santana Tr. p. 3)
and all the other requirements of the Trademark Rules
appear to have been followed during the taking and
transcription of this deposition. 37 C.F.R. § 2.123(f);
TBMP § 703.01(k) (2d ed. rev. 2004). Therefore, we have
considered this testimony.
Applicant has also objected to printouts obtained
from opposer’s online web pages that were made of record
during the trial testimony of Mr. Santana, as well as to
portions of opposer’s brief that reference opposer’s
Internet domain name, www.continentalbank.com.
Mr. Santana is certainly competent to authenticate
any evidence he personally downloaded from the Internet,
and he testified that he personally obtained and printed
these web pages on May 3, 2005 – the same date appearing
on the bottom of all the pages of Exhibit 45. This was
one day prior to his trial testimony on May 4, 2005. He
testified that this exhibit included “printouts from pages
of our website” and that he was the person primarily
responsible for managing opposer’s online banking and
Internet presence. (Santana Tr. at pp. 5 - 28). Hence,
applicant’s objection to these documents as inadmissible
Opposition No. 91157725
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due to lack of authentication is overruled. To the extent
that applicant has also objected to this evidence as
constituting inadmissible hearsay under Fed. R. Evid. 801
– 802, applicant’s objection is overruled. While the
content of the web pages is hearsay as to the truth of the
statements contained thereon, we have considered this
evidence as indicating, at most, that some of the public
using the Internet may have been exposed to the
information contained in the excerpts. Thus, we have
considered Mr. Santana’s testimony and Exhibit 45 in the
present case.
In support of its blanket objection to many of
opposer’s exhibits, applicant argues that the specified
exhibits are inadmissible because they lack a proper
foundation, and they are irrelevant or unreliable. (See
applicant’s brief at p. 6). This objection is overruled
because applicant is required to specify those exhibits to
which it objects. The Board will not do applicant’s work
for him and review the entire record with an eye to
possible objections. Moreover, applicant’s general
objections on the basis of lack of foundation are improper
inasmuch as Mr. Victor Lopez De Mendoza, Mr. Frank T.
Santana, Ms. Nancy Llerena and Mr. Guillermo Diaz-
Opposition No. 91157725
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Rousselot each laid a foundation sufficient to admit the
exhibits introduced during his/her testimony. These
employees of opposer are competent to testify to those
matters of which they have personal knowledge, as well as
to those matters regarding company history and records
kept in the ordinary course of business, based on
knowledge attributable to their positions within the
company. On occasion during the actual taking of the
trial testimony, when applicant’s counsel objected on the
basis of an inadequate foundation, opposer’s counsel
provided additional basis for the document to be
introduced or for the proffered question. Applicant has
provided no valid argument for excluding any of opposer’s
exhibits on the basis of relevance or reliability.
Rather, we have considered the probative value of each
individual exhibit in reaching our decision herein.
As to the balance of opposer’s documentary evidence
and testimony, applicant objects to specified materials as
consisting of hearsay or as being inadmissible because of
a lack of foundation or because the materials are
irrelevant.
For example, applicant objects specifically to
Exhibits 1 - 4 on the grounds that Mr. Mendoza did not
Opposition No. 91157725
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know the specific breakdown or location of individual
customers reflected in state-by-state and foreign country
categories. This is not a basis for finding that the
these exhibits either lack a foundation for consideration
or that they are irrelevant. Applicant’s concern goes,
rather, to the probative value of the exhibits.
All further objections by applicant to the balance of
the exhibits introduced into the record during the
testimony of Mr. Mendoza on the ground that Mr. Mendoza is
incompetent to testify on such matters are unfounded in
view of the witness’ testimony that he started as a
director of Continental National Bank of Miami in 1980
(Mendoza Tr. at p. 6), that he is currently a Senior Vice
President of opposer (Mendoza Tr. at Exhibit 5), and has
personal knowledge about the scope of opposer’s
international and national banking business. (See Mendoza
Tr. at pp. 13 – 14). Given his history with the bank and
the nature of his responsibilities, he is competent to
testify about the bank transactions that were the subject
of his testimony, and Exhibits 1 through 44 are pertinent
and relevant documents kept in the ordinary course of
business.
Opposition No. 91157725
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Applicant objects to Exhibits 57 and 58 attached to
the trial transcript of Ms. Llerena on the ground that no
proper foundation was proffered for their admissibility
and that these exhibits are irrelevant and unreliable.
However, these exhibits were introduced into the record
without any objections by applicant’s counsel during that
testimony deposition. According to the Federal Rules of
Civil Procedure, any alleged defect in these exhibits
could have been easily remedied had it been raised at the
time of the deposition.6 Under the final clause of Rule
32(d)(3)(A), had opposer’s counsel been faced with a
challenge at the time of the testimony, he could have
elicited further details from this witness as to the
relevance and reliability of these documents. We find
that by failing to object in a timely manner to these
exhibits during the witness’ testimony, applicant waived
this objection. See TBMP § 707.04 (2d ed. rev. 2004); see
also Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847
(TTAB 1984) [“[W]ith respect to respondent’s objections on
the grounds of improper identification and/or

6 Fed. R. Civ. P. 32(d)(3) As to Taking of Deposition. (A)
Objections to the competency of a witness or to the competency,
relevancy, or materiality of testimony are not waived by
failure to make them before or during the taking of the
deposition, unless the ground of the objection is one which
might have been obviated or removed if presented at that time.
Opposition No. 91157725
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authentication of exhibits and/or that the exhibits were
inadmissible hearsay with no foundation laid for an
exception to the hearsay rule[,]… [i]t is our view that
all of respondent’s objections are of a type that could
have been remedied or obviated had they been made during
the taking of the deposition”].
Applicant’s hearsay objections to Ms. Llerena’s
testimony are overruled. As to her testimony that she has
heard customers referring to opposer as “banco
Continental,” these statements are not hearsay, for they
are accepted not for the truth of the statements made by
the non-witnesses to opposer’s deponent or the reasons
therefor, but rather for the mere fact that the statements
referred to in her testimony were, in fact, made to her.
Ms. Llerena can testify to the fact that she has, over the
years, heard such references.7 In a similar fashion, Mr.

7 Q [Mr. Greger]: If you could identify [Exhibit 56]?
A [Ms. Llerena]: Yeah. This is a brochure for the home
equity loans.
Q: And the title on this is what?
A: Life Improvement Loans.
Q: And in the middle of the front page, what does it say?
A: “Viva Fenomenal con el banco Continental.”
Q: And could you translate into English for us?
A: It means have a phenomenal life with Continental Bank.
Q: And is the Continental Bank portion in Spanish “banco
Continental”?
A: This is a Spanish version of Continental Bank.
Q: Do you hear your customers referring to Continental
National Bank of Miami as banco Continental?
Opposition No. 91157725
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Santana’s testimony as to customers saying to him that
they searched for “continentalbank.com” when trying to
find opposer’s online banking website (Santana Tr. pp. 9 -
10) and Mr. Mendoza’s testimony that he heard customers
refer to opposer as “Continental Bank” or “Banco
Continental” (Mendoza Tr. pp. 12 – 13) are not hearsay.
See Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346
(TTAB 1983); and Finance Co. of America Corp., 205 USPQ
1016, 1035 (TTAB 1979).
Continental National Bank Of Miami has Standing
With regard to the threshold inquiry as to the
standing of Continental National Bank Of Miami in this
opposition proceeding, opposer has alleged and proven at
trial a real commercial interest, as well as a reasonable
basis for the belief that opposer would be damaged by the
registration of applicant’s CONTINENTAL BANK mark.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999). Continental National Bank of Miami has

A: Yes
[Mr. Zenger]: Objection, hearsay.
Q [Mr. Greger]: Of your own personal knowledge, you’ve
heard people say that?
A: Yes.
[Mr. Zenger]: Objection, hearsay.
Q: Do you personally give these brochures to clients?
A: We have them displayed.

Opposition No. 91157725
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presented evidence of its ownership and validity of its
pleaded registration for the mark CONTINENTAL NATIONAL
BANK OF MIAMI.
Priority
We turn then to the issue of priority in relation to
the services set forth in opposer’s pleaded registration.
As noted above, Continental National Bank of Miami has
established its ownership of a valid and subsisting
registration for the mark CONTINENTAL NATIONAL BANK OF
MIAMI for “bank services.” Therefore, there is no issue
as to opposer’s priority. See King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); and Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
Likelihood of Confusion
Turning now to the issue of likelihood of confusion,
our determination of likelihood of confusion is based upon
our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also In re Majestic Distilling Co., Inc., 315 F.3d
Opposition No. 91157725
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1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The Marks
We consider first the du Pont factor that focuses on
the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As to connotation, applicant argues that the term
“Bank of Miami” within opposer’s mark accentuates the fact
that opposer is a Miami Bank, which applicant alleges is a
salient fact from all the evidence of record. By
contrast, applicant argues that his mark carries no such
connotation.
Opposition No. 91157725
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However, we note that opposer’s mark CONTINENTAL
NATIONAL BANK OF MIAMI and applicant’s applied-for mark
CONTINENTAL BANK share in common the identical, leading
term, CONTINENTAL. While we must compare the marks in
their entireties, opposer has disclaimed the descriptive
terminology “National Bank of Miami,” while applicant has
disclaimed the word “Bank.” Additionally, the record
establishes that opposer, its customers, vendors, and the
Miami media often refer to opposer simply as “Continental
Bank.” For example, on the occasion of its thirtieth
anniversary celebrations, a November 2004 article from
El Nuevo Herald contained the following headline:
8
Third party vendors, such as the caterers of the
Skyline Bay Club and the billing office of Selecta
magazine, who regularly do business with opposer, use the
term “Continental Bank” in invoices and letters, as
follows:

8 Mendoza Tr. Exhibit 23.
Opposition No. 91157725
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9
The record shows that many of opposer’s actual uses
of its service mark and trade name accentuate the
“Continental” portion of the mark:
10
Dozens of times in exhibits of record, we have seen
opposer’s extensive use of a special form of its mark,
namely the words “Continental National
Bank of Miami” combined with a circular
design. The word “Continental” is
displayed horizontally while the
disclaimed term “National Bank of Miami”

9 Mendoza Tr. Exhibits 24 and 27.
10 Mendoza Tr. Exhibits 32 and 56.
Opposition No. 91157725
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is presented vertically. As seen, this unique “letter C”
design is used repeatedly, both with and without the
words. In those instances where the design is larger and
the words are present, we find that this presentation
places even greater emphasis on the horizontally-oriented
word CONTINENTAL than is true for the disclaimed and
descriptive portion of the mark that is vertically
oriented. The first portion of opposer’s word mark will
generally be the dominant feature relied on and remembered
by consumers. See Presto Products v. Nice-Pak Products,
9 USPQ2d 1895, 1897 (TTAB 1998). Given the nature of the
design presentation, this leading term is accentuated even
further.
Since 1999, many times every day, opposer’s customers
have been using continentalbank.com, opposer’s Internet
domain name, to access opposer’s on-line banking services,
thus accentuating the CONTINENTAL … BANK portion of its
mark. Opposer
uses this
domain name
prominently
along with its
other service

Opposition No. 91157725
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marks in order
to promote its
online banking
services.
11
While opposer’s use of other marks and customers’
references to opposer are not directly relevant herein,
this evidence is supportive of opposer’s allegation that
the CONTINENTAL portion of its mark is dominant and would
be so perceived by the relevant public.
We agree with opposer that our focus should be placed
on the recollection of the average consumer who normally
retains a general rather than a specific impression of
trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). While we must consider the marks in
their entireties, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985) [CASH MANAGEMENT ACCOUNT found
confusingly similar to THE CASH MANAGEMENT EXCHANGE].
Applicant has agreed to disclaim the term “Bank” apart

11 Mendoza Tr. Exhibits 10 and 12.
Opposition No. 91157725
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from the mark as shown, and opposer has disclaimed the
terminology “National Bank of Miami.” Clearly, based on
the record before use, these terms are merely descriptive.
Under our precedent, less weight may be accorded to
disclaimed, merely descriptive matter in making a
determination of likelihood of confusion.
Based upon this record as a whole, there can be no
question but that the dominant and most distinctive
portion of each of the parties’ marks is the term
“Continental.”
While acknowledging that there are obvious
differences between these marks, we find, nonetheless,
that the sight, sound, connotations and commercial
impressions of the marks are substantially similar, and
hence, this du Pont factor weighs heavily in favor of
opposer.
Third parties having similar marks on related services
Applicant goes on to argue that a
“myriad of other banking institutions
utiliz[e] the term CONTINENTAL in their
marks, including federally registered marks
coexisting with [opposer] such as THE
CONTINENTAL BANK AND TRUST COMPANY, FIRST
CONTINENTAL BANK, CONTINENTAL BANK …. There are
a myriad of other banks which do or have
used the term CONTINENTAL without any
apparent complaint from [opposer]. … This
Opposition No. 91157725
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reveals that in the banking industry, the
use of other terms provides the necessary
distinction for the consumers of the
various banking products and services.”

Applicant’s brief, p. 13.
Opposer contends that this argument put forward by
applicant is misleading:
“In fact all three registrations cited by
Applicant are registrations which have been
deemed cancelled by the U.S. Patent and
Trademark Office for failure to file
required use declarations …. The mark
CONTINENTAL is not diluted on the register
or weak, it is distinctive.”

Opposer’s reply brief, pp. 8 – 9.
Indeed, these cancelled registrations have no
evidentiary value as to the scope of protection to be
afforded to opposer’s claimed mark, and opposer is correct
in noting that the record demonstrates that the three
registrations referenced by applicant were all cancelled
under Section 8 of the Lanham Act.12

12

for “banking services” in
International Class 36;
Registration No. 1307404
issued to The Continental Bank
& Trust Company on November
27, 1984 and was then
cancelled under Section 8
(six-year) of the Lanham Act
on March 6, 1991.
Opposition No. 91157725
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The services
Opposer’s registration broadly covers “bank
services,” and the evidence of record amply demonstrates
usage of opposer’s mark for full-service banking products
and services directed to retail consumers as well as small
business owners. Applicant is seeking a registration for
“banking and financial services, namely lease finance
receivables” – in short, providing financing for equipment
leases for business owners.
Based on the evidence of record, opposer offers a
broad range of services to business owners, and

for “banking services” in
International Class 36;
Registration No. 2104565
issued to First Continental
Bank on October 14, 1997 and
was then cancelled under
Section 8 (six-year) of the
Lanham Act on July 17, 2004;
and

for “providing of a full line
of banking services” in
International Class 36.
Registration No. 1818167
issued to Continental Bank
N.A. on January 25, 1994 and
was then cancelled under
Section 8 (six-year) of the
Lanham Act on February 10,
2001.

Opposition No. 91157725
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applicant’s function of financing lease receivables
clearly falls within the broad ambit of opposer’s “banking
services.” Certainly when any applicant seeks to register
a mark covering narrowly-drawn banking services, this
Board will refuse registration where a substantially
similar mark has been previously registered with broadly-
recited banking services that encompass the specified
services. See In re United California Brokers, Inc.,
222 USPQ 361 (TTAB 1984) [brokerage services related to
bank services]; Combanks Corp. v. Combank Mortgage
Funding, Ltd., 197 USPQ 296 (TTAB 1977) [mortgage services
related to retail and commercial banking services]; and
American National Bank v. Bank Building Corp., 181 USPQ
532 (TTAB 1973) [applicant’s financial construction
services related to opposer’s traditional bank services].
Accordingly, this du Pont factor too weighs in favor of
opposer.
Channels of trade and classes of customers
Applicant has attempted throughout this proceeding to
establish limitations on opposer’s actual banking
services, both in overall scope and geographically. Of
course, the involved registration imposes no such limits
on opposer’s services, customers or channels of trade.
Opposition No. 91157725
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Accordingly, we must presume that applicant and opposer
are both entitled to offer their services in all normal
trade channels for such services as recited, and to all
normal classes of customers for such services. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). Thus, because the
respective services are overlapping as identified, so too
are the classes of customers and channels of trade.
In any case, the probative evidence placed in the
record by opposer confirms that there is overlap in the
services offered under these respective marks. Opposer
has established that its customers include business
owners. Its loans are provided to, and certificates of
deposit are owned by, residents located throughout the
United States and abroad. Furthermore, applicant’s
ultimate customers/end users could well include small
business owners living in South Florida who would be
sending in payments made out to “Continental Bank”
directly to applicant. According to applicant’s
testimony, between a quarter and a half of all its debtors
(or equipment leasees) know of applicant and actually deal
directly with applicant by name (e.g., in the form of
coupon booklets, statements, invoices, late notices,
etc.). (Morgan Tr. pp. 40 – 41).
Opposition No. 91157725
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As to this critical population, we note that there is
no evidence in the record that these consumers are
sophisticated. While the financial institutions that
serve as applicant’s intermediaries may well be
sophisticated purchasers, we cannot assume the same would
be true for the small business owners who are applicant’s
ultimate customers. And even if these commercial banking
customers are likely to be more sophisticated than
ordinary individuals, when similar loan products or
secured transactions are being offered under substantially
the same service mark, even sophisticated purchasers may
be confused. See Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
In summary, we find that the trade channels and
classes of purchasers are overlapping and, to the extent
that the classes of purchasers include the population of
small business owners, such persons cannot be presumed to
be highly sophisticated customers immune from confusion
under these circumstances. Therefore this factor tends to
favor opposer or, at best, it is neutral.
Past market interface between applicant and opposer
We turn next to applicant’s arguments regarding the
alleged market interface between applicant and opposer,
Opposition No. 91157725
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under the tenth du Pont factor.13 Applicant argues that
opposer’s President and Chief Operating Officer, A.
“Buster” Castiglia, on May 19, 2005, admitted in writing
that there was no likelihood of confusion involved herein,
after having discussed this matter with applicant.
Actually, applicant drafted a letter stating that there
was no likelihood of confusion between the parties’ marks,
and sent it to opposer. Mr. Castiglia indicated his
agreement and sent the letter back to applicant. In the
letter to opposer, applicant wrote:
“Because our services are offered to
different customers and through different
trade channels than the services offered by
your bank, we do not feel that there is any
likelihood of confusion in the minds of our
customers as to the source or origin of the
services offered by our respective banks.”

(Morgan Tr., pp. 27 - 31, applicant’s exhibit 9).
However, opposer points out that Mr. Castiglia agreed
in principle to co-exist peacefully in view of applicant’s
representations that he was operating a “niche” bank in
the “intermountain west region,” and based on applicant’s

13 The tenth du Pont factor is “the market interface between
applicant and the owner of a prior mark: (a) a mere ‘consent’
to register or use; (b) agreement provisions designed to
preclude confusion, i.e., limitations on continued use of the
marks by each party; (c) assignment of mark, application,
registration and good will of the related business; (d) laches
and estoppel attributable to owner of prior mark and indicative
of lack of confusion.” du Pont, 177 USPQ at 567.
Opposition No. 91157725
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clear representations that he did not “intend to branch”
out and did “not intend to compete with [opposer] in any
of its markets.”
Opposer argues correctly that it is hardly bound to
this earlier willingness to coexist, in light of testimony
and evidence establishing, contrary to applicant’s earlier
representations of non-encroachment, that applicant is
indeed competing directly with opposer in South Florida.
Most reported decisions involving the tenth du Pont
factor have focused on factor 10(a), “a mere ‘consent’ to
register or use,” and on factor 10(b), “agreement
provisions designed to preclude confusion, i.e.,
limitations on continued use of the marks by each party.”
While a “naked” consent to register or use is
entitled to little probative weight in the likelihood of
confusion analysis, if applicant and the prior user have
entered into an agreement which evidences their business-
driven conclusion and belief that there is no likelihood
of confusion, and which includes provisions designed to
avoid any potential confusion, the existence of such an
agreement weighs heavily in favor of a finding that
confusion is not likely. See In re Four Seasons Hotels
Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993);
Opposition No. 91157725
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Bongrain Int'l (Am.) Corp. v. Delice De France, Inc.,
811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and
du Pont, supra.
We view Mr. Castiglia’s agreement to co-exist
peacefully with applicant in the context of the letter he
signed which contained applicant’s many representations –
namely, that his operation was a “niche” bank located in
the “intermountain west region” having no intentions of
competing with opposer in any of opposer’s then-existing
markets. However, the evidence of record in this
proceeding shows that applicant has, in fact expanded
beyond its description in the letter and, as noted,
competes with opposer in the same geographic region. In
view of thereof, we will not infer from this agreement
that opposer has consented or agreed to applicant’s
registration of the mark under any circumstances; nor will
we impute to opposer, for purposes of the tenth du Pont
factor, a belief that confusion is unlikely. Thus, while
the existence of the consent letter signed by both parties
would seem to favor applicant, we find that the additional
facts render this factor neutral, at best.
Opposition No. 91157725
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Conclusion
Having weighed the various relevant du Pont factors
discussed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark, CONTINENTAL BANK, and opposer’s mark,
CONTINENTAL NATIONAL BANK OF MIAMI, their contemporaneous
use on the overlapping services involved in this case is
likely to cause confusion as to the source or sponsorship
of such services.
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of
the Lanham Act, and registration to applicant is hereby
refused.