Countrywide Funding Corp.

Trademark Trial and Appeal Board

Aug 1, 1997

EX (T.T.A.B. Aug. 1, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUGUST 1, 97
Paper No. 14
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Countrywide Funding Corporation
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Serial No. 74/612,941
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Barry A. Stulberg of Samaha, Grogin & Stulberg for
Countrywide Funding Corporation
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Acting Managing Attorney)
_______
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Countrywide Funding Corporation has appealed from the
refusal of the Trademark Examining Attorney to register the
design mark, shown below, for "financial services; namely a
home equity line of credit program."1

1 Application Serial No. 74/612,941, filed December 1, 1994,
and asserting dates of first use of November 14, 1994.
Ser No. 74/612,941
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark, as used in connection with its identified
services, so resembles the design mark shown below, and
registered for "providing mortgages for the purchase of real
estate along with the usual and customary ancillary services
in providing mortgage funds,"2 as to be likely to cause
confusion or mistake or to deceive. The registered mark is
described as consisting "of a stylized dollar sign
circumscribed by a square with rounded edges; the
circumscribed dollar sign being contained within a
silhouette of a house."

Applicant and the Examining Attorney have both filed
briefs.3 An oral hearing was not requested.

2 Registration No. 1,859,957, issued October 25, 1994.
3 In his brief the Examining Attorney has objected to
consideration of third-party registrations and applications
because they were obtained from a private company's data base,
rather than from the records of the Patent and Trademark Office.
The Examining Attorney is correct that to make third-party
registrations of record a party should submit copies of the
Ser No. 74/612,941
3
In any determination of the issue of likelihood of
confusion, two key considerations are the similarity of the
marks and the goods or services. With respect to the
latter, there is no dispute that applicant's financial
services, namely a home equity line of credit program, and
the registrants' service of providing mortgages for the
purchase of real estate, and ancillary services in providing
mortgage funds, are closely related. In fact, applicant
does not even discuss this factor in arguing that confusion
is not likely.
This brings us to a consideration of the marks. Both
applicant's and the registrant's marks are designs, and it
is well established that when design marks are involved, the
case must be decided primarily on the basis of visual
similarity of the marks. In re Burndy Corporation, 300 F.2d
938, 133 USPQ 196 (CCPA 1962). It is true that here both
marks consist of a house on which a dollar symbol is
superimposed. However, the combination of the dollar symbol
and the house design are highly suggestive for both
applicant's and registrant's services, indicating as it does

registrations taken from the paper or computerized records of
the Patent and Trademark Office. However, in this case,
applicant submitted the registrations and applications both with
its response to the first Office action, and with its request
for reconsideration of the second Office action, and in neither
instance did the Examining Attorney advise applicant of any
deficiency with respect to the submissions, at a time when the
applicant could have remedied the problem. We therefore deem
the Examining Attorney to have waived any objection to the
submission of the third-party registrations and applications and
to have, by his actions, treated these materials as being of
record.
Ser No. 74/612,941
4
that, in the case of applicant's services, a consumer may
obtain money by essentially taking out a mortgage on one's
house, while in the case of registrant's services, that
money is being provided for the purchase of a house, i.e.,
that the consumer if taking out a mortgage for the purchase
of a house. The highly suggestive nature of a dollar symbol
and house for such services is borne out by the third-party
registrations and applications for marks containing the
combination of these design elements which were made of
record by applicant. Although these registrations and
applications are not competent to prove that the marks shown
therein are in use or are known to the consuming public,
they are competent to show that these elements have well-
known meanings, and that the inclusion in each mark of these
elements may be an insufficient basis upon which to
predicate a holding of a likelihood of confusion. See
Cutter Laboratories, Inc. v. Air Products and Chemicals,
Inc., 189 USPQ 108 (TTAB 19775).
Applicant has discussed at great length the differences
it perceives between its mark and that in the cited
registration. We cannot agree that consumers will notice or
remember all the points of dissimilarity enunciated by
applicant. For example, the fact that applicant's mark has
a chimney on the left side, and the registrant's on the
right, is not likely to serve to distinguish the marks.
Under actual marketing conditions consumers do not have the
luxury to make side-by-side comparisons between marks, and
Ser No. 74/612,941
5
instead they must rely on hazy past recollections. Dassler
KG v. Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
Having said this, however, we find that the marks, when
viewed in their entireties, do convey different commercial
impressions. The registered mark is a two-dimensional,
simplistic picture of a house, depicted in the manner that a
child might draw it. Further, the dollar symbol in this
drawing is unusually thick, and has the appearance of the
letter "S." That connotation is reinforced by the fact that
the registrant's name is State Financial Network. In
addition, the dollar symbol appears within a border, which
is somewhat like a letter "O."
In applicant's mark, on the other hand, the house is
shown in a three-dimensional view, and the logo has a sleek,
modern look. The dollar sign, too, is very different from
that in the cited mark. Moreover, the shadow of the dollar
sign adds an incongruous note, in that this shadow is so
oddly juxtaposed to the house that it could not be caused by
any implied light source.
We have considered the possibility that the registered
mark could be an elevation view of the side of applicant's
house, but we think it unlikely that most consumers would
see the marks in this fashion, or would make such a
connection. Consumers are not likely to mentally turn
designs on their sides and change their perspectives.
Moreover, as we noted above, the differences in the dollar
symbols also distinguish the marks.
Ser No. 74/612,941
6
The courts have long recognized that the determination
of whether design marks are sufficiently different that they
would not be likely, if in concurrent use, to cause
confusion, is a subjective opinion. See In re Burndy
Corporation, supra. Thus, prior case decisions involving
design marks are of little help in reaching a conclusion in
this case. We do note, however, that in several other cases
which involved design marks comprising arbitrary elements,
there was a finding of no likelihood of confusion because of
the differences in appearances of the designs. See, for
example, Johann Maria Farina v. Chesebrough-Pond, Inc., 470
F.2d 1385, 176 USPQ 199 (CCPA 1972) (no likelihood of
confusion found between three-petal crest design and flower
design marks); In re Anderson Electric Corporation, 370 F.2d
593, 152 USPQ 245 (CCPA 1967) (no confusion found between
two letter "A" design marks; In re Samuel M. Gertman Co.,
Inc., 180 USPQ 336 (TTAB 1973) (no confusion found between
two letter "G" design marks). We think a similar finding is
similarly justified in the present case, where the design
which comprises the marks of applicant and registrant is not
arbitrary, but highly suggestive. In this connection, we
reiterate the well-established principle of trademark law
that highly suggestive, and therefore weak marks are
entitled to a more limited scope of protection that
arbitrary marks.
Another factor supporting our finding of no likelihood
of confusion is the care with which both applicant's and
Ser No. 74/612,941
7
registrant's services would be purchased. Obtaining a
mortgage, whether for the purchase of a home or to obtain
credit through what is a mortgage on one's home, is not an
impulse purchase. Thus, we must assume that the marks would
be viewed with greater care than would be the care with an
inexpensive purchase.
Finally, we would point out that in reaching our
decision we have given no weight to applicant's assertion
that "a number of similar marks are now and have long been
in concurrent use without actual confusion." Brief, p. 9.
The third-party registrations upon which applicant relies to
support this argument are, as we stated previously, not
evidence that the marks shown therein are in use, or that
the public is aware of them.
Decision: The refusal of registration is reversed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board