DuPont Community Credit Union

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85524163 (T.T.A.B. Jun. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dupont Community Credit Union
_____

Serial No.85524163
_____

Douglas T. Johnson of Miller & Martin PLLC for Dupont Community Credit Union.

Julie Watson, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
_____

Before Holtzman, Zervas, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Dupont Community Credit Union (applicant) has appealed the final refusal of
its application for the mark SCENIC COMMUNITY (in standard characters) for
“credit union and banking services; consumer, commercial and real estate loans;
financial administration of savings accounts; demand accounts; share accounts;
share certificate accounts; and retirement accounts; credit card, charge card and
debit card services; on-line banking services”1 in Class 41 pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion

1 Application Serial No. 85524163 filed January 24, 2012, pursuant to Section 1(b) of the
Trademark Act (intent-to-use). The word “COMMUNITY” is disclaimed.
Serial No. 85524163
2

with the mark SCENICBANKING (in standard characters) for “credit and debit
card services; checking and savings account services.”2
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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities 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).
We turn first to the du Pont factor of the similarity and nature of the
services. As set forth in the Dixie Restaurants case:
Likelihood of confusion must be determined based on an
analysis of the mark as applied to the … services recited
in applicant's application vis-a-vis the … services recited
in [a] … registration, rather than what the evidence
shows the...services to be.3
In re Dixie Restaurants Inc., 41 USPQ2d at 1534, quoting Canadian Imperial Bank
v. Wells Fargo Bank, N.A. , 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Applicant’s services are “credit union and banking services; consumer,
commercial and real estate loans; financial administration of savings accounts;

2 Reg. No. 3848819, issued September 14, 2010. Mark originally registered as SCENIC
BANKING – amended to SCENICBANKING on November 8, 2011.
3 We acknowledge that the only services currently being performed are those in the cited
registration.
Serial No. 85524163
3

demand accounts; share accounts; share certificate accounts; and retirement
accounts; credit card, charge card and debit card services; on-line banking services.”
The services in the cited registration are “credit and debit card services; checking
and savings account services.” Both the application and the registration include
“credit card and debit card services.” As such, the services are in part legally
identical. Further, the “checking and savings account services” in the cited
registration are either legally identical or closely related to applicant’s “credit union
and banking services.” Moreover, likelihood of confusion must be found as to the
entire class if there is likely to be confusion with respect to any item in the
identification of goods [and services] for that class. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Accordingly, this du Pont factor favors a finding of likelihood of confusion.
While acknowledging that the services are related and in part identical,4
Applicant contends that its services would be differentiated because “membership
in Applicant’s credit union is limited to persons living in the Chattanooga
metropolitan region.”5 This information is not persuasive since the recitation of
applicant’s services does not specify that membership is limited geographically.
Moreover, even if the application included a limitation specifying that membership
is limited geographically, this would not differentiate the services since services in
the registration are unrestricted.

4 Appeal Brief, p. 9.
5 Id.
Serial No. 85524163
4

It is well established that absent restrictions in the
application and registration, [identical] goods and services
are presumed to travel in the same channels of trade to
the same class of purchasers.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012).
Because the services are in part legally identical, they are presumed to travel in the
same channels of trade to the same classes of purchasers.
Applicant also contends that “while bank customers consist of the ordinary
public…case law acknowledges [that] consumers tend to exercise a relatively high
degree of care in selecting banking services.” (citations omitted). Appeal Brief, p.
10. Applicant has not provided any evidence to support its contention and hence it
is not persuasive. Further, even if we accept that bank customers exercise a high
degree of care in selecting banking services, we are not persuaded since the fact
that “the relevant class of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between similar trademarks for
similar [services]. Human memories even of discriminating purchasers are not
infallible.” In re Research and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) (internal citation omitted).
We next determine the similarity or dissimilarity of the marks in their
entireties, keeping in mind that “[w]hen marks appear on virtually identical goods
or services, the degree of similarity necessary to support a conclusion of likelihood of
confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Serial No. 85524163
5

The examining attorney concluded that the marks are similar since they
“share the identical common term SCENIC combined with a highly descriptive or
generic term for banking services.”6 Applicant argues that in reaching this
conclusion, the examining attorney “improperly dissect[ed]” the marks and attached
greater significance to the word SCENIC.7 Applicant’s argument is unavailing.
It is a well-established principle that, 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, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985).
The marks at issue are SCENIC COMMUNITY and SCENICBANKING. The
descriptive word COMMUNITY is disclaimed in applicant’s mark. The cited mark
was registered as two words, SCENIC BANKING, with the descriptive word
BANKING disclaimed.8 It is well-settled that disclaimed, descriptive matter may
have less significance in likelihood of confusion determinations. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In
re National Data Corp., 224 USPQ at 752 (Fed. Cir. 1983) (“Regarding descriptive

6 Examining Attorney’s Brief, p.4.
7 Appeal Brief, p. 5
8 Registrant later amended the mark to one word “SCENICBANKING” and, since the
amended mark is unitary, registrant also deleted the disclaimer. Amendments to marks
are only permitted if the amendment does not materially alter the character of the mark.
Trademark Rule 2.173(d). As such, the amendment of the mark from SCENIC BANKING
to SCENICBANKING did not materially alter the character of the mark; and the term
BANKING remains descriptive of registrant’s services.
Serial No. 85524163
6

terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie
Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
Thus, the examining attorney correctly gave more weight to the word
SCENIC, which is the arbitrary and dominant element in both marks. When
comparing the marks and giving the proper emphasis to the dominant element,
SCENICBANKING and SCENIC COMMUNITY are similar in appearance and
sound. The commercial impression of SCENIC as used in connection with “banking
services, including credit and debit card services” and “credit and debit card
services; and checking and savings account services,” is the same. Moreover, the
addition of the descriptive terms “BANKING” and “COMMUNITY” does not alter
the commercial impression.
Applicant contends that the commercial impressions of the marks are
different because its mark suggests a connection with Chattanooga, Tennessee9 and
the cited mark does not. Applicant’s contention is based on the purported limitation
of its customer base to Chattanooga area residents, who are familiar with the
nickname.10 However, applicant’s services are not geographically restricted.
Moreover, while residents of the Chattanooga area may associate a mark such as
SCENIC CITY COMMUNITY with Chattanooga, there is no evidence that they will

9 Foster Decl., ¶6. (Scenic City is the official nickname of the City of Chattanooga.).
10 Foster Decl., ¶13.
Serial No. 85524163
7

associate SCENIC COMMUNITY therewith. It is just as likely that residents of the
Chattanooga area could associate the mark SCENIC COMMUNITY with a
“community that has pleasant views.11” Further, there is no evidence that
consumers, outside of the Chattanooga, Tennessee metropolitan area, are aware of
the nickname nor that consumers, even in Chattanooga will associate the mark
SCENIC COMMUNITY for credit union/banking and related services (including
credit and debit card services), with Chattanooga.
Having considered all the evidence and argument on the relevant du Pont
factors, we find that applicant’s mark SCENIC COMMUNITY for “credit union and
banking services; consumer, commercial and real estate loans; financial
administration of savings accounts; demand accounts; share accounts; share
certificate accounts; and retirement accounts; credit card, charge card and debit
card services; on-line banking services” is likely to cause confusion with the cited
registration for the mark SCENICBANKING for “credit and debit card services;
checking and savings account services.”
Decision: The refusal to register the mark is affirmed.

11 “Scenic” is defined as “constituting or affording pleasing views of natural features.” The
American Heritage® Dictionary of the English Language, 4th ed. ©2000 Houghton Mifflin
Updated in 2009. (Accessed online at www.thefreedictionary.com.) .
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 85524163
8