Elkhart Financial CorporationDownload PDFTrademark Trial and Appeal BoardMar 20, 2019No. 87451968 (T.T.A.B. Mar. 20, 2019) Copy Citation Mailed: March 20, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Elkhart Financial Corporation _____ Serial No. 87451968 _____ Kyle D. Donnelly of Erickson Kernell IP, LLC for Elkhart Financial Corporation. Paul C. Crowley, Trademark Examining Attorney, Law Office 119, Brett J. Golden, Managing Attorney. _____ Before Bergsman, Wellington, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Elkhart Financial Corporation (“Applicant”) seeks registration on the Principal Register of the mark HEARTLAND TRI-STATE BANK (in standard characters, “Bank” disclaimed) for “banking services” in International Class 36.1 1 Application Serial No. 87451968 was filed on May 16, 2017, under Section 1(b) of the Trademark Act, based upon Applicant’s claim of a bona fide intent to use the mark in commerce. This Opinion is Not a Precedent of the TTAB Serial No. 87451968 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on the ground that Applicant’s mark is likely to be confused with the following marks, owned by two separate entities: for “banking services” in International Class 36;2 HEARTLAND FINANCIAL USA, INC. (typed, “Financial USA, Inc.” disclaimed) for “banking services” in International Class 36;3 and HEARTLAND (standard characters) for Financial services, namely, credit card, debit card, bank card, smart card and payment card transaction processing services; credit card, debit card, bank card, smart card and payment card verification services; check verification and processing services; credit card, debit card, bank card, smart card and payment card authorization services; electronic processing and transmission of payment data; providing electronic processing of credit card, debit card, bank card, smart card and payment card transactions via a proprietary and secure financial global computer network; debit card, smart card and payment card account services featuring a computer readable card; electronic funds transfer services; payroll tax debiting services; providing online financial services to retail merchants, namely, providing financial account management services and financial clearance services in the nature of clearing and settling financial transactions for merchants; providing account transaction information to merchants, namely, credit card, debit card, bank card, smart card and payment card transactions information and balances via a 2 Registration No. 2708368, issued April 22, 2003, renewed. “Financial USA, Inc.” has been disclaimed. Owned by Heartland Financial USA, Inc. 3 Registration No. 2694508, issued March 11, 2003, renewed. Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. Owned by Heartland Financial USA, Inc. Serial No. 87451968 - 3 - secure Internet website; information services, namely, financial information provided by electronic means in International Class 36.4 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Likelihood of Confusion 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, though not exclusive, 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); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). For purposes of our likelihood of confusion analysis, we focus on the most relevant registration, Registration No. 2694508, for the mark HEARTLAND FINANCIAL USA, INC. for “banking services” in Class 36. If we find a likelihood of confusion as to this registration, we need not find it as to the others. On the other hand, if we do not find a likelihood of confusion with the mark in this registration, we would not find it as to the other registrations, which as to the cited mark HEARTLAND identify 4 Registration No. 4074538, issued December 20, 2011. A Sections 8 and 15 combined declaration has been accepted and acknowledged. Owned by Heartland Payment Systems, LLC. Serial No. 87451968 - 4 - arguably less similar services, and as to the HEARTLAND FINANCIAL USA, INC. and design mark, additional visual differences. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015). A. The Services; Trade Channels; Classes of Consumers The services in Applicant’s application and Registration No. 2694508 for the mark HEARTLAND FINANCIAL USA, INC. are identical, i.e., “banking services.” Because the services are identical, we must presume that the channels of trade and classes of purchasers are the same. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical services, the channels of trade and classes of purchasers are considered to be the same). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Thus, the second and third du Pont factors heavily favor a finding of likelihood of confusion. B. The Marks We next turn to a comparison of the marks under the first du Pont factor, that is, whether Applicant’s mark HEARTLAND TRI-STATE BANK is similar or dissimilar to the registered mark in terms of its appearance, sound, connotation and overall commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. Serial No. 87451968 - 5 - 2005)). The test under the first du Pont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Since Applicant offers its banking services to the general public, the average purchaser is an ordinary consumer seeking to retain the services of a bank in order to perform financial transactions. In comparing Applicant’s mark HEARTLAND TRI-STATE BANK with the registered mark HEARTLAND FINANCIAL USA, INC. we bear in mind that the services in association with which each mark is used or intended to be used are identical: “banking services.” Accordingly, the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant argues that the Examining Attorney impermissibly dissected the marks and that they are not confusingly similar when considered in their entireties. We disagree. The marks are similar because each mark starts with the identical term, Serial No. 87451968 - 6 - “Heartland,” followed by matter that designates the source of the services as a financial institution located in the United States. That is, the inclusion of the words “TRI-STATE BANK” in Applicant’s mark suggests that Applicant is a bank that serves residents and businesses in three states. Likewise, the wording “FINANCIAL USA, INC.” in Registrant’s mark suggests that it provides nationwide financial services, an area broader than just that of three states, but rationally including tristate areas.5 In appearance and pronunciation, the marks are similar because they both start with the same suggestive term, “Heartland.” This is the term most likely to be remembered by purchasers and used to request the services. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 , 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2018) (citing Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”)). Moreover, the words following “Heartland” in each 5 The definition of “tristate” was provided by the Examining Attorney in his first Office Action, “of, relating to, or consisting of three adjoining states: the tristate area.” August 21, 2017 Office Action, TSDR 10. The fact that Applicant uses “tri-state” rather than “tristate” is immaterial. See, e.g., Charrette Corp. v. Bowater Commc'n Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (finding marks PRO-PRINT and PROPRINT identical but for hyphen and confusion likely); In re Champion Int’l Corp., 196 USPQ 48, 49 (TTAB 1977) (“[N]o distinction, vague or otherwise, can be drawn between ‘CHECK MATE’ with or without a hyphen between the words so that for purposes herein they are identical.”). Although Kansas and Iowa are not adjacent, they are quite proximate, and Registrant is located in Iowa while Applicant is in Kansas. Thus, consumers could conceptualize a tristate area which includes Kansas and Iowa, such as Kansas, Missouri and Iowa. Serial No. 87451968 - 7 - mark are a combination of similar words – descriptive of the services (banking and financial services) and suggestive of the geographical location of the source of the services (within an area comprised of three adjacent states on the one hand, within the entire United States on the other). While “it is well-established that it is improper to dissect a mark, and that marks must be viewed in their entireties,” Coach Services, 101 USPQ2d at 1721, “one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.” Id. (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, the words “Bank” and “Financial USA, Inc.” have been disclaimed in view of their descriptive connotations. Disclaimed, descriptive matter is often “less significant in creating the mark’s commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001); Nat’l Data, 224 USPQ at 751 (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.”). We also accord lesser weight to the term “Tri-State” in Applicant’s mark, given its common dictionary meaning of “three adjacent states” and the fact that its significance is to identify a geographic location, not the source of the services.6 6 Applicant argues that the Examining Attorney “acknowledged that TRI-STATE is not descriptive when he removed the disclaimer requirement.” 8 TTABVUE 3. While withdrawing the requirement may be viewed as an indication that TRI-STATE is a registrable component of the mark, even without a disclaimer the term’s commonly understood suggestive meaning nonetheless lessens its significance to distinguish source vis- à-vis the mark’s connotation and overall commercial impression. Serial No. 87451968 - 8 - For the reasons stated above, we consider the term HEARTLAND in each mark as its dominant feature. Consumers who are familiar with Registrant’s mark may, upon encountering Applicant’s HEARTLAND TRI-STATE BANK mark, mistakenly believe that Registrant’s financial services include a banking office within a “tri- state” region. The marks are similar in appearance, pronunciation, connotation and overall commercial impression. The first du Pont factor favors a finding of likelihood of confusion. C. The number and nature of similar marks in use on similar services Applicant invokes the sixth du Pont factor, which considers the number and nature of similar marks in use on similar services. du Pont, 177 USPQ at 567. The purpose of introducing evidence of third-party use is “to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between [such] marks on the bases of minute distinctions.” Omaha Steaks Int’l Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., 73 USPQ2d at 1693) (internal quotations omitted). Applicant submitted copies of registration certificates for nine marks containing the term “Heartland” for financial services, and argues that these show that the term HEARTLAND “is weak as a mark or source identifier for such services.”7 The registrations are as follows: 7 February 21, 2018 Response to Office Action, TSDR 2-12. Serial No. 87451968 - 9 - 1. Registration No. 4339003 for the mark HEARTLAND (owned by Heartland Payment Systems, Inc.) for: educational services namely, conducting online classes, workshops and courses, to merchants to further their understanding of credit card, debit card, bank card, smart card and payment card processing services and charges 2. Registration No. 4074537 – for the mark HEARTLAND (owned by Heartland Payment Systems, Inc.) for: Promoting the issuance of credit card, debit card, smart card and payment card accounts through the administration of incentive award programs, loyalty programs and affinity programs; Payroll preparation services; administration of business payroll for others; Business advisory services, consultancy and information; public advocacy to promote awareness of credit, debit and payment card processing practices 3. Registration No. 2742163 – for the mark HEARTLAND PAYMENT SYSTEMS (owned by Heartland Payment Systems, Inc.) for: Credit card, debit card and bank card processing services, credit card, debit card and bank card verification services; check verification and processing services; electronic funds transfer services 4. Registration No. 3578543 – for the mark (owned by Heartland Payment Systems, Inc.) for: Financial services, namely, credit card, debit card, bank card, smart card and payment card transaction processing services; credit card, debit card, bank card, smart card and payment card verification services; check verification and processing services; credit card, debit card, bank card, smart card and payment card authorization services; electronic processing and transmission of payment data; electronic funds transfer services; payroll tax debiting Serial No. 87451968 - 10 - services; providing online financial services to retail merchants, namely, providing financial account management services and financial clearance services in the nature of clearing and settling financial transactions for merchants; information services, namely, financial information provided by electronic means 5. Registration No. 4668138 – for the mark (owned by Heartland Payment Systems, Inc.) for, inter alia: Financial services, namely, credit card, debit card, bank card, smart card, prepaid card, stored value card, prepaid cash card, bank-issued stored value card, bank-issued prepaid cash card, stored value smart card, prepaid payment card and smart phone and mobile device payment accounts transaction processing services; credit card, debit card, bank card, smart card, prepaid card, stored value card, prepaid cash card, bank-issued stored value card, bank-issued prepaid cash card, stored value smart card, prepaid payment card and smart phone and mobile device payment accounts verification services; check verification and processing services 6. Registration No. 4682359 – for the mark HEART LAND CREDIT RESTORATION (owned by Andrew Yamilkoski) for Consumer credit consultation services, namely, providing assistance to consumers for the removal of inaccurate items appearing on consumers’ personal credit reports from three major credit bureaus, direct validation of consumers’ personal credit reports with creditors reporting to these bureaus, and establishing new credit for consumers 7. Registration No. 4330540 – for the mark (owned by Andrew Yamilkoski) for Serial No. 87451968 - 11 - Financial services, namely, credit repair and restoration 8. Registration No. 2195537 – for the mark FIRST HEARTLAND (owned by First Heartland Corporation) for Insurance brokerage services; investment brokerage services; investment consultation services 9. Registration No. 4966117 – for the mark PROUDLY SERVING AMERICA’S HEARTLAND SINCE 1955. (owned by FLEET FARM WHOLESALE SUPPLY CO. LLC) for, inter alia, Credit card services. The Examining Attorney argues that although Applicant has submitted nine registrations, because some of those registrations are owned by a single entity, the Board “must consider multiple marks owned by a single owner as indicating a single source.” 7 TTABVUE 18-19. Specifically, the Examining Attorney argues that because Heartland Payment Systems, Inc. owns five of the registrations referred to by Applicant, and Andrew Yamilkoski owns two of them, that “[e]ffectively then, in addition to the marks owned by the cited registrants, the applicant has referenced the marks of three other, third-party, registrants.” 7 TTABVUE 17. The Examining Attorney concludes that these are too few in number to show that the cited marks are weak.8 8 Applicant does not dispute the Examining Attorney’s assertion that five registrations are owned by a single entity and two of the registrations are owned by a different single entity, and discusses the ownership issue in its brief. Accordingly, we have admitted this evidence. However, the Examining Attorney’s assertion, that the owner of Registration No. 4682359, Andrew Yamilkoski, also owns Registration No. 4330540 (identified on the registration certificate as Heartland Credit Restoration, Inc.), rests on a claim of ownership of the registration appearing on the face of the registration certificate submitted by Applicant. Because the Board does not take judicial notice of registrations residing in the Office, and Serial No. 87451968 - 12 - Applicant counters that the key factor with respect to the third-party registrations is “how many different similar marks will a consumer encounter and have to differentiate between in the marketplace. The more similar third-party marks that a consumer will encounter and sort through, the weaker the similar components become.” 8 TTABVUE 4. What Applicant appears to have overlooked is that where two (or more) marks are owned by a single entity, consumers are not being deceived or trained to distinguish the marks as to their source based on any differences in the marks. They instead are being educated that, despite any differences, the marks are commonly owned. Although Applicant contends that the Examining Attorney erred in considering “how many owners of relevant third-party marks there are rather than how many actual marks there are,” Applicant affirms that “the evidence of third- party marks is considered from the viewpoint of a consumer.” Id. The marks that are commonly owned must be considered in that context. Moreover, any analysis of the effect of third-party registrations on consumer perception is necessarily incomplete, where, as here, there is no evidence of how these marks are used in the marketplace. Regardless of their ownership, Applicant’s submission of registrations alone, without evidence showing that these marks are in use for banking or related financial services, is of minimal value. In general, absent therefore does not corroborate whether the claimed prior registrations are valid or owned by the registrant, the better practice would have been to submit copies of the assignment records from the Trademark Status and Document Retrieval (TSDR) database for the claimed registration. See In re House Beer, LLC, 114 USPQ2d 1073, 1075 (TTAB 2015) (Board does not take judicial notice of files of applications or registrations residing in the USPTO); Edom Labs Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012). Serial No. 87451968 - 13 - evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973) (“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). We may look to the third-party registrations to discern whether the term “Heartland” has a commonly accepted meaning in the banking industry and therefore may be considered somewhat weak. Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). “Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National Des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). In the present case, although none of the third-party registrations include banking services, the financial services recited in the third- Serial No. 87451968 - 14 - party registrations have been shown to be related to banking services. However, the registrations themselves are not evidence that the marks are in use, and Applicant has not provided any evidence of the “Heartland” marks used in the marketplace. Moreover, the third-party registrations here are far fewer in number than that in Jack Wolfskin and Juice Generation, the latter case which addressed over twenty uses or registrations of the same phrase for restaurant services. Juice Generation, 115 USPQ2d at 1673 n.1. Thus, given the smaller number of nine registrations owned by only four different entities, the lesser degree of relevancy to the services at issue, and the lack of evidence of use in the marketplace we find the evidence for this du Pont factor is neutral. D. Degree of Consumer Care Applicant argues that the fourth du Pont factor, the conditions under which and buyers to whom sales are made, favors a finding of no likelihood of confusion because consumers of banking and financial services are sophisticated. However, neither Applicant’s nor the Registrants’ services are limited to sophisticated buyers, and there is no evidence in the record on this factor. Accordingly, we must presume that the class of purchasers for banking and financial services is all purchasers of such services, including the general public, and that all levels of sophistication would be represented therein. In this regard, the Court in Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) specifically recognized that while some consumers choose their banks with care, others do not. See also Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690 (TTAB 1986), aff’d 811 Serial No. 87451968 - 15 - F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, for purposes of determining likelihood of confusion, we do not treat bank customers as exercising more than ordinary care. Summary Having considered the evidence of record as it pertains to the relevant du Pont factors, we find that prospective consumers familiar with the Registrant’s banking services provided under the mark HEARTLAND FINANCIAL USA, INC. would be likely, when confronted with Applicant’s HEARTLAND TRI-STATE BANK banking services, to believe that the services emanate from the same company. Even if the customers were considered sophisticated, the similarity of the marks and relatedness of the services are sufficient to satisfy the du Pont analysis. Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed. Copy with citationCopy as parenthetical citation