Information Technology, Inc.

Trademark Trial and Appeal Board

Sep 3, 1998

No. 74733860 (T.T.A.B. Sep. 3, 1998)

Paper No. 12
RFC
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB SEPT 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Information Technology, Inc.
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Serial No. 74/733,860
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Vincent Carney for Information Technology, Inc.
Robert Lorenzo, Trademark Examining Attorney, Law Office
101 (Ellsworth Williams, Managing Attorney).
_______
Before Cissel, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 25, 1995, applicant filed the above-
referenced application to register the mark “PCBANC” on the
Principal Register for a “computer software product for the
delivery of selected banking services and functions with
personal computers to customers,” in Class 9. The
application was based on applicant’s claim of use of the
mark in commerce since August 28, 1995.
Ser. No. 74/733,860
2
In addition to requiring amendment to the
identification-of-goods clause in the application, the
Examining Attorney refused registration under Sections 2(d)
and 2(e)(1) of the Act. The mark was held to be merely
descriptive of the goods set forth in the application, and
registration was also refused because of the likelihood of
confusion with two registered marks. These marks are shown
below:
is registered1 for “computer programs and program manuals
all sold as a unit for the purpose of providing financial
institutions with information,” in Class 9; and
is registered2 for “computer programs and instructional
manuals sold as a unit for use in the finance industry,” in
Class 9.

1 Reg. No. 1,465,253, issued to Bankers Training & Consulting
Co., Inc. on November 17, 1987, and now owned by Westcott
Communications, Inc.; Combined affidavit under Sections 8 and 15
received.
2 Reg. No. 1,613,577, issued to Response, Inc. on September 18,
1990 under the provisions of Section 2(f) of the Act; Affidavit
under Sections 8 and 15 received.
Ser. No. 74/733,860
3
Responsive to the first Office Action, applicant
amended its application to state its goods as “computer
software program for use in banking via personal computer.”
Applicant also argued against both refusals to
register. Counsel contended that the mark “is not merely
descriptive and it is barely suggestive” of applicant’s
products, and argued that in view of the meaning of the
word “BANC,” “PCBANC” would “more appropriately describe a
computer program that is used for a judge’s bench.” As to
the likelihood of confusion, applicant argued that the
cited trademark registrations are for marks which look
different; that the goods are different; that the customers
and the channels of trade are different; and that the
registrants’ marks and applicant’s mark are all suggestive,
and therefore are not likely to cause confusion anyway.
The Examining Attorney was not persuaded to withdraw
either basis for refusing registration. Accompanying the
final refusal which thus issued were a copy of a dictionary
listing showing that “PC” is an abbreviation for “personal
computer” and a number of excerpts from articles retrieved
from the Nexis database of published articles. These
excerpts clearly establish that “PC banking” is a term used
for banking by means of personal computer. In addition to
these references, a couple of these excerpts show use of
Ser. No. 74/733,860
4
the term “PC bank,” to refer to banking by means of
personal computer, e.g., “Citibank, which once charged as
much as $15 a month for its PC bank service…” and “a PC
bank transaction will cost the banks even less, analysts
say…”
Applicant requested reconsideration of the refusals to
register, contending that the Examining Attorney had
refused registration not just on the grounds that confusion
is likely with the two cited registrations and that the
mark is merely descriptive, but also on the ground that the
mark “is the generic or common word for some service.”
Reponsive to the reconsideration request, the
Examining Attorney pointed out that genericness was never
a basis for refusing registration. The Examining Attorney
maintained that both refusals were proper, however, and
attached still more excerpts retrieved from the Nexis
database. On the issue of the equivalency of the terms
“bank” and “banc,” the articles excerpted show that “banc”
is commonly used in the financial industry as the
equivalent of “bank.” Also attached to the Examining
Attorney’s response to the request for reconsideration were
print-outs from the Patent and Trademark Office’s automated
search system. This evidence shows that when the term
“banc” has been used as a component of marks for banking
Ser. No. 74/733,860
5
services, it has been disclaimed in its proper spelling as
“bank.” The finality of the refusals was maintained.
Applicant timely filed a notice of appeal to the
Board. Both applicant and the Examining Attorney filed
briefs, but applicant did not request an oral hearing.
Based on the written record and the arguments of
record in this appeal, we find that although confusion is
not likely with respect to the cited registration for the
mark consisting of the stylized presentation of the name
“P.C. Banks,” confusion is likely in view of the other
cited registration, for the mark “PC/BANKER,” and we also
hold that applicant’s mark, as applied to the goods
specified in the application, is merely descriptive of
them.
We turn first to the likelihood of confusion with the
mark “P.C. Banks,” which was originally registered by
Bankers Training and Consulting Co., Inc., for “computer
programs and program manuals all sold as a unit for the
purpose of providing financial institutions with
information.” We agree with applicant that confusion is
not likely because applicant’s mark creates a different
commercial impression from the one created by this mark,
and the services specified in this registration are
distinct from those which applicant renders under its mark.
Ser. No. 74/733,860
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As to the first point, we note that the commercial
impression of the cited mark is that of a signature of a
person named “Banks” whose first and middle initials are
“P” and “C,” respectively. The style of the script in
which the mark is presented is consistent with this
impression, which is quite different from that created by
applicant’s mark, “PCBANC.” At first blush, applicant’s
mark appears to be some sort of an abbreviation or
truncated combination of “PC” and the phonetic equivalent
of the word “BANK.”
In addition to the differences in the appearances and
commercial impressions of these two marks, the differences
in the goods set forth in the application and the cited
registration bolster our conclusion that confusion is not
likely. Applicant’s software is used by bank customers to
allow them to bank by using their personal computers. The
programs specified in the cited registration, however, are
used by financial institutions to provide themselves with
information. The original registrant was a banking
consulting and training business. Its customers were not
the ordinary consumers who want to be able to bank by PC.
Rather, the customers for the programs sold under the
registered “P.C. Banks” mark are the banks themselves. As
applicant points out, the channels of trade through which
Ser. No. 74/733,860
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these products move, the customers who purchase and use
them, and the purposes for which they are used are all
different. Because of the differences in these two marks
and the differences in the products with which they are
used, confusion is unlikely.
Confusion is likely, however, with respect to the
other registered mark cited by the Examining Attorney,
which is registered for “computer programs and
instructional manuals sold as a unit for use in the finance
industry.” Applicant’s mark is similar in sound,
connotation, and overall commercial impression to this
registered mark, and the identification-of-goods clause in
this registration encompasses the goods identified in the
application.
Taking up the later point first, we note that these
goods are legally identical because computer programs for
banking by personal computer are part of the larger
category of “computer programs for use in the finance
industry.”
Turning, then, to the similarity of the marks, we note
that the rectangular border around the cited mark is not
Ser. No. 74/733,860
8
particularly unusual. It is of far less source-indicating
significance than the term “PC/BANKER” is. The record
establishes the equivalency of the words “bank” and “banc.”
Although distinctions can be made between applicant’s mark,
which is the equivalent of “PCBANK,” and the registered
mark, “PC/BANKER,” the similarities between “PCBANC” and
“PC/BANKER” far outweigh their differences. Both of these
marks connote banking by personal computer. This explains
why the “PC/BANKER” mark was registered under the
provisions of Section 2(f) of the Act. We will explain in
our discussion of the descriptiveness refusal the fact that
applicant’s “PCBANC” mark conveys the idea that applicant’s
software allows customers to bank by PC. Confusion is
likely because these two marks are similar in sound,
connotation, and commercial impression, and applicant’s
products are encompassed within the goods identified in the
registration. The refusal under Section 2(d) is therefore
affirmed with respect to Registration No. 1,613,577.
We also affirm the refusal to register under Section
2(e)(1) of the Act. A mark is merely descriptive of the
goods with which it is used if it conveys information about
a characteristic, feature, or purpose of the goods. In re
Bright-Crest, Ltd., 204 USPQ 591(TTAB 1979). The evidence
made of record by the Examining Attorney shows that “PC
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9
banking” and “PC bank” are terms which are used in the
financial field to refer to banking by personal computer,
and that “banc” is the equivalent of “bank.” Applicant’s
mark, “PCBANC,” is merely descriptive of applicant’s
computer programs because the purpose or central
characteristic of the programs is that they allow people to
PC bank, i.e., bank by PC.
Applicant’s contention that purchasers of its software
would understand the mark “PCBANC” to refer to a PC for a
judge’s bench is not well taken. As applied to programs
used for PC banking, the mark clearly refers to the nature
of the goods.
In summary, we reverse the refusal to register based
on the likelihood of confusion with the stylized signature
of “P.C. Banks,” but we affirm the refusal to register
under Section 2(d) based on the registration of the
“PC/BANKER” and design mark, and we affirm the refusal to
Ser. No. 74/733,860
10
register because the mark is merely descriptive under
Section 2(e)(1) of the Act.
R. F. Cissel
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser. No. 74/733,860
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