Crestar Financial Corp.v.Crestmark Financial Corp.

Trademark Trial and Appeal Board

Nov 19, 1998

No. 91101223 (T.T.A.B. Nov. 19, 1998)

Hearing: Paper No. 17
March 12, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 19, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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Crestar Financial Corporation
v.
Crestmark Financial Corporation
_____
Opposition No. 101,223
to application Serial No. 74/74/681,626
filed on May 30, 1995
_____
Frank P. Presta of Sixbey, Friedman, Leedom & Ferguson for
Crestar Financial Corporation
William H. Honaker of Howard & Howard Attorneys, P.C. for
Crestmark Financial Corporation
______
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Crestar Financial Corporation has opposed the
application of Crestmark Financial Corporation to register
CRESTMARK BANK, with the word “bank” disclaimed, for bank
Opposition No. 101,223
2
services.1 As grounds for opposition opposer has alleged
that it is the owner of various registrations for CRESTAR
for banking,2 securities brokerage3 and insurance agency
services,4 of CRESTAR and design,5 shown below,
and CRESTAR MAX for banking services,6 and CRESTFUNDS for
mutual fund investment services; that opposer has used its
above-listed CRESTAR marks, as well as the mark CRESTAR
BANK, since prior to the filing date of applicant’s intent-
to-use application; and that applicant’s mark CRESTMARK BANK
so resembles opposer’s CRESTAR, CRESTAR BANK, CRESTAR MAX
and CRESTFUNDS marks that, if used in connection with
applicant’s identified bank services, it would be likely to
cause confusion or mistake or to deceive.
In its answer applicant admitted that it made no use of
its mark CRESTMARK BANK prior to the filing date of its
application, and denied the remaining salient allegations of
the notice of opposition.

1 Application Serial No. 74/681,626, filed May 30, 1995, based
on an asserted bona fide intention to use the mark.
2 Registration No. 1,462,235, issued October 20, 1987; Sections
8 and 15 affidavit accepted.
3 Registration No. 1,462,234, issued October 20, 1987; Sections
8 and 15 affidavit accepted.
4 Registration No. 1,470,005, issued December 22, 1987; Sections
8 and 15 affidavit accepted.
5 Registration No. 1,467,624, issued December 1, 1987; Sections
8 and 15 affidavit accepted.
Opposition No. 101,223
3
The record consists solely of the application which is
the subject of this proceeding, and all of opposer’s pleaded
registrations except for CRESTFUNDS for mutual fund
investment services.7 The case has been fully briefed,8 and
both parties were represented at an oral hearing before this
Board.
Priority is not in issue in view of opposer’s
registrations, which are properly of record. See King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Moreover, applicant has conceded
opposer’s priority. Brief, p. 2.
Turning to the issue of likelihood of confusion, we
note that, although this is an inter partes proceeding, the
only evidence which is of record are opposer’s registrations
and applicant’s application file. Thus, our analysis is
more akin to that in an ex parte proceeding which involves
merely a citation by an Examining Attorney of a registered
mark. Accordingly, although we have considered all the

6 Registration No. 1,773,826, issued May 25, 1993.
7 Opposer made five registrations of record with its notice of
opposition by submitting status and title copies thereof.
However, opposer submitted only a “soft” copy of its registration
No. 1,758,744 for CRESTFUNDS, which was insufficient to make this
registration of record as an attachment to the pleading.
Trademark Rule 2.122(d)(1).
8 With its reply brief opposer has moved to strike certain
“factual” statements asserted by applicant in its brief, and
detailed by opposer at page 1 of its reply brief. Opposer’s
motion is granted. As previously indicated, applicant submitted
no evidence in this proceeding, and there is no evidentiary
support in the record for such assertions as its earliest date of
Opposition No. 101,223
4
duPont factors which are relevant, see E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), we
have no evidence which bears on certain of the factors.
In any determination of likelihood of confusion, two
key factors are the similarity of the marks and the
similarity of the goods or services. With respect to the
services, the banking services identified in opposer’s
registrations for CRESTAR and CRESTAR MAX must be deemed to
be identical to applicant’s bank services. Because of the
identical nature of the services, they must also be deemed
to be offered in the same channels of trade to the same
groups of consumers. Further, applicant has acknowledged
that “there is no issue concerning the identity of goods
[sic] sold under the marks. Opposer and Applicant both
provide banking and other financial services.” Brief, p. 2.
“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). This brings us to a
consideration of the parties’ marks.
Both opposer’s and applicant’s marks begin with CREST.
Applicant essentially argues that this portion would not be
as noticeable in opposer’s mark because opposer’s mark is

use, its business, the manner in which it selected its mark, and
Opposition No. 101,223
5
pronounced so that the word STAR is emphasized, that is, as
“kre STAR.” We do not agree with applicant’s position. It
has frequently been noted that there is no correct
pronunciation of a trademark which is an invented word.
Therefore, opposer’s mark may just as readily be pronounced
as “CREST ar” as “kre STAR.” Certainly, such a
pronunciation would seem logical, since CREST is a readily
recognizable English word which begins opposer’s mark, and
because many, if not most, two-syllable English words are
pronounced with an accent on the first syllable. While the
last letters of the mark do form another English word, STAR,
for the aforesaid reasons we believe that consumers are not
as likely to view the mark in this way.
CREST in applicant’s mark is also likely to be noted
and pronounced. Not only does it begin applicant’s mark,
but this portion will be recognized as a word because the
syllable is followed by another recognizable word, MARK. As
a result, it is unlikely that consumers would break up
CRESTMARK into anything other than the two words which
comprise the mark. That is, consumers are not likely to
pronounce or regard it as, for example, “kres tmark” or
“kre stmark.”
We recognize that opposer’s mark, CRESTAR, and the
first word of applicant’s mark, CRESTMARK, have more

so on. Accordingly, this material has not been considered.
Opposition No. 101,223
6
elements than the initial portion CREST. However, the
remaining portions do not convey as strong commercial
impressions as the identical first portions. “Ar” in
opposer’s mark is a mere suffix, while MARK in CRESTMARK may
be regarded as a reference to a trademark, in the same
manner as “brand.”9 Therefore, the CREST portion of both
marks is the part most likely to be noted. The additional
word BANK in applicant’s mark, which is the generic word for
applicant’s services and has, indeed, been disclaimed,
clearly does not have any source-identifying or
distinguishing significance.
Applicant has provided some creative suggestions as to
the connotations of each mark, viz., CRESTAR, with the
connotation of heraldry or the top of something “indicates a
reaching out for something, such as reaching for the
stars,”, p. 6; in CRESTMARK BANK, CREST has the connotation
of prestige and tradition, such as a family crest, while
MARK connotes a mark of excellence or quality (see footnote
9), so that the combination of the two, CRESTMARK, has “the
connotation of a prestigious bank that has a tradition of

9 Applicant asserts that “‘MARK’ connotes a mark of excellence
or quality, such as water marks on high quality paper, or
achieving high marks for continuing achievements of excellence.”
Brief, p. 6. As the term “mark” is used in applicant’s own
trademark, we think the trademark meaning of the word “mark” is
more likely to be conveyed that than of a grade for achievements.
We would also point out that a water mark is, in fact, a
trademark.
Opposition No. 101,223
7
providing banking services that comprise high standards of
quality and excellence.” Brief, p. 6.
We cannot agree that consumers will engage in the
laborious analysis applicant has made and will therefore
understand the marks to mean what applicant argues they do.
Rather, we think that it is the initial portion CREST in
each mark which will make the strongest impression on
consumers, because of the appearance and pronunciation of
the marks. Because of the lesser source-identifying value
of the additional elements, the overall meaning conveyed by
both marks relates to the word CREST.
In reaching the conclusion that opposer’s marks and
applicant’s mark engender similar commercial impressions, we
point out that we have considered the marks in their
entireties. However, it is well established that in
determining the issue of likelihood of confusion, it is
permissible, for rational reasons, to give more or less
weight to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
An additional duPont factor which favors opposer is the
fact that CRESTAR appears to be an arbitrary mark.
Certainly applicant has not made of record any evidence of
third-party use of CREST marks, or third-party registrations
containing this element. Is such evidence were of record,
Opposition No. 101,223
8
it could indicate either that the public is aware of various
parties using such marks, or that CREST has a suggestive
significance, such that opposer’s mark would not be entitled
to a broad scope of protection.
Finally, we note that the record does not include any
evidence of actual confusion. However, this factor does not
favor applicant in that we have no information regarding
either opposer’s or applicant’s use of the mark, and
therefore we cannot ascertain whether there has been an
opportunity for confusion to occur. Because applicant’s
application was based on an intention to use the mark, and
no amendment to allege use was ever filed, we cannot even
say, based on this record, that applicant has ever used its
mark.
Decision: The opposition is sustained.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board