Elkhart Financial Corporation

Trademark Trial and Appeal Board

Mar 20, 2019

EX (T.T.A.B. Mar. 20, 2019)

Mailed: March 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Elkhart Financial Corporation
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Serial No. 87451968
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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
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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.
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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.
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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.
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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,
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“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.
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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.
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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.
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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

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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
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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
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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).
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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-
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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

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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.