Mechanics Cooperative Bank

Trademark Trial and Appeal Board

Feb 1, 2013

No. 85361962 (T.T.A.B. Feb. 1, 2013)

Mailed: February 1, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mechanics Cooperative Bank
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Serial No. 85361962
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Mechanics Cooperative Bank, pro se.
David I, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
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Before Lykos, Shaw and Gorowitz, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On July 1, 2011, Mechanics Cooperative Bank (“applicant”) filed an application
to register the mark “YOUR LIFE. YOUR NEIGHBORHOOD. YOUR BANK.” in
standard character format for “banking” in International Class 36.1
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the registered mark “YOUR LIFE, YOUR
BANK” also in standard character format for “banking services, namely retail

1 Application Serial No. 85361962, filed pursuant to Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), alleging January 1, 2008 as the date of first use anywhere and in
commerce.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 85361962
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banking services, commercial banking services, mortgage banking services and
online banking services” in International Class 36,2 that when used on or in
connection with applicant’s identified services, it is likely to cause confusion or
mistake or to deceive.
For the reasons explained below, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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). These factors and the other relevant du
Pont factors are discussed below.
At the outset, we note that as identified, applicant and registrant are offering
legally identical services. This is because applicant’s banking services are recited
broadly in applicant’s recitation without any limitation as to the type of banking
services offered. As such, they necessarily encompass registrant’s more narrowly
defined “…retail banking services, commercial banking services, mortgage banking
services and online banking services.” See In re Thor Tech, Inc., 90 USPQ2d 1634,
1638-39 (TTAB 2009). In addition, because the recitations of the involved

2 Registration No. 3202960, registered on January 23, 2007, alleging August 1, 2005 as the
date of first use anywhere and November 14, 2005 as the date of first use in commerce.
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application and registration are unrestricted as to trade channels, we must presume
that both parties’ legally identical banking services travel in the same ordinary
trade and distribution channels and will be marketed to the same potential
consumers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). Thus, the
identical nature of the services and channels of trade weigh heavily in favor of
finding a likelihood of confusion.
Applicant contends that because of the geographical distance between
applicant’s and registrant’s services (Massachusetts–Pennsylvania), it is unlikely
that prospective consumers will encounter the same advertisements. This
argument is unpersuasive. Applicant seeks an unrestricted (i.e., national)
registration. Because of the presumption of exclusive right to nationwide use of the
registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), the
geographic scope of protection for registrant’s registration extends throughout the
entire United States regardless of its actual extent of use. See Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983).
Therefore, any geographical limitations regarding actual use of applicant’s and
registrant’s services are irrelevant to our likelihood of confusion determination.
Because the services are identical, the degree of similarity between the marks
that is necessary to support a finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). With this in mind, we now turn to the first du Pont likelihood of confusion
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factor regarding the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. “[T]he test is not
whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Both applicant’s and registrant’s marks consist of slogans beginning with the
phrase “YOUR LIFE.” It is well-established that prospective consumers are often
more inclined to focus on the first part of a trademark or service mark. See Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). See also Mattel Inc. v. Funline
Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered” when making purchasing decisions.”). In addition, both slogans end
with the phrase “YOUR BANK,” further reinforcing the similarities between the
two marks. We acknowledge that applicant’s applied-for mark also includes the
phrase “YOUR NEIGHBORHOOD.” Nonetheless, it is more likely that prospective
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consumers will overlook this distinction and instead confuse the marks as
identifying the same services from the same source, given that they both begin with
the phrase “YOUR LIFE” and end with the phrase “YOUR BANK.” We therefore
find that applicant’s marks and registrant’s marks are highly similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor also weighs in favor of finding a likelihood of confusion.
Applicant maintains that because it generally uses its applied-for mark in
close proximity with the name of its bank, confusion is unlikely. This argument is
not persuasive as it is the similarity of the applicant’s proposed mark and the
registrant’s mark that is at issue, not the name of the applicant’s bank.
Applicant relies on an Eighth Circuit Court of Federal Appeals decision to
argue that consumers exercise a high degree of care when selecting bank products.
We are not persuaded. Each case must be decided upon its own factual record.
Here, applicant has submitted no evidence demonstrating that consumers exercise
a high degree of care when selecting banking services. In any event, even if the
record demonstrated that such purchasers are highly sophisticated, given the
identical nature of the services and highly similar marks, sophisticated consumers
are not immune to confusion.
Applicant argues that consumer confusion is unlikely because registrant no
longer actively use its mark in commerce. In support thereof, applicant points to
reigstrant’s website which does not show use of the registered mark. Applicant also
argues that registrant has yet to file an assignment of its mark following the
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merger of registrant with another bank, as well as its Section 8 affidavit.3 Such
arguments, however, constitute an improper collateral attack against the
registration and cannot be considered during ex parte proceedings. See In re Dixie
Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re
Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007); In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992).
To the extent that there are any other relevant du Pont factors, we treat them
as neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s mark and the registered mark when used in
connection with their identified services.
DECISION: The refusal to register is affirmed.

3 The six-month grace period following the deadline has yet to expire.