Montecito Bank & Trust

Trademark Trial and Appeal Board

Jan 16, 2020

87311596 (T.T.A.B. Jan. 16, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Montecito Bank & Trust
_____

Serial No. 87311596
_____

Jaye G. Heybl of Ferguson Case Orr Patterson LLP,
for Montecito Bank & Trust.
Kathleen H. Schwarz, Trademark Examining Attorney, Law Office 123,
Susan C. Hayash, Managing Attorney.
_____

Before Shaw, Kuczma, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Montecito Bank & Trust (“Applicant”) seeks registration on the Principal Register
of the standard character mark MB&T SIMPLEPAY for “financial services, namely,
person-to-person, mobile, and web-initiated payments services in the nature of
payment transaction processing services” in International Class 36.0F1

1 Application Serial No. 87311596 was filed on January 24, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
Serial No. 87311596
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered mark shown below

for “banking” in International Class 36,1F2 as to be likely, when used in connection with
the services identified in the application, to cause confusion, to cause mistake, or to
deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration, which was denied. Applicant and the Examining Attorney have filed
briefs.2F3 We affirm the refusal to register.
I. Record on Appeal3F4
The record on appeal includes the following materials submitted by the Examining
Attorney:

2 Registration No. 2739136 issued on July 15, 2003 to Monroe Bank & Trust (“Registrant”)
and has been renewed.
3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s public online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
4 Citations in this opinion to the application record, including the request for reconsideration,
are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).
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• TSDR records regarding the cited registration;4F5
• Dictionary definitions of the words “ampersand,” “pay,” and “simple;”5F6 and
• Third-party webpages that the Examining Attorney argues show that
banks offer, as part of banking services, payment and person-to-person,
mobile, and web-initiated payments transaction processing services in the
form of transfers.6F7
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each DuPont factor for which there is
evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d

5 April 26, 2017 Office Action at TSDR 5-6; December 7, 2017 Final Office Action at TSDR 2-
3. In both Office Actions, the Examining Attorney cited two other registrations for the mark
PAYSIMPLE in standard characters and in a stylized form, but she later withdrew these
refusals. August 17, 2018 Denial of Request for Reconsideration at TSDR 1.
6 April 26, 2017 Office Action at TSDR 11-13; December 7, 2017 Final Office Action at TSDR
18-19.
7 April 26, 2017 Office Action at TSDR 14-21; December 7, 2017 Final Office Action at TSDR
11-17, 20-48. The Examining Attorney stated in the December 7, 2017 Final Office Action
that she had “also attached evidence from the USPTO’s X-Search database consisting of a
number of third-party marks registered for use in connection with the same or similar
services as those of the applicant and registrant,” id. at TSDR 1, but the only registrations
attached to the Final Office Action are the PAYSIMPLE registrations discussed above.
Serial No. 87311596
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1160, 1162-63 (Fed. Cir. 2019). Two key factors in every Section 2(d) case are the first
two DuPont factors regarding the similarity or dissimilarity of the marks, and the
similarity or dissimilarity of the goods or services, because the “fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Applicant
addresses these two key factors, 26 TTABVUE 5-9, as well as the fourth DuPont
factor, id. at 9-10, which “considers ‘[t]he conditions under which and buyers to whom
sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting DuPont, 177 USPQ at 567).
A. Similarity or Dissimilarity of the Services and Channels of
Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these
factors is based on the identifications of services in the application and the cited
registration. Id.; Stone Lion, 110 USPQ2d at 1161-63.
It is “not necessary that the [services] be identical or even competitive to support
a finding of a likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v.
Serial No. 87311596
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Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be
found ‘if the respective [services] are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Id. (quoting 7-Eleven, 83
USPQ2d at 1724).
The services identified in the cited registration are “banking,” while the services
identified in the application are “financial services, namely, person-to-person, mobile,
and web-initiated payments services in the nature of payment transaction processing
services.” The Examining Attorney argues that “Applicant’s narrowly-drafted activity
of facilitating money transfers via website and mobile application are services that
are encompassed by registrant’s broad identification of ‘banking’, as banks
consistently and widely offer such transfers mechanism as part of their suite of
services,” and that “Applicant’s and registrant’s services may be considered legally
identical.” 30 TTABVUE 15. She argues alternatively that “substantial evidence
exists in the application prosecution record to establish that Applicant’s and
registrant’s services are closely related.” Id. at 13. She points to Internet evidence
depicting “numerous banking entities that offer person-to-person payment transfer
processing services via their website or mobile applications as a feature of their
banking services,” id., which she argues “demonstrates that the same entity
commonly provides the relevant services and markets those services under the same
mark.” Id. at 14.
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Applicant responds to the Examining Attorney’s argument that the services may
be considered to be legally identical by arguing that “the identification of goods should
be as complete and specific as possible and protection afforded by the cited
registration is limited to only the identified goods [sic] and nothing broader.” 26
TTABVUE 8. Applicant argues that the Examining Attorney’s position that
Applicant’s “‘payment transaction processing services are closely related to banking
services’ is not true” because “[s]uch an overbroad definition would grossly distort the
meaning of ‘related’ goods for purposes of assessing likelihood of confusion.” Id.
With respect to relatedness in general, Applicant argues that “Applicant’s services
and Registrant’s services address entirely different needs, would be exposed to
different personnel, and simply are not related.” Id. According to Applicant, “[t]here
is no reason that relevant individual consumers for Applicant’s services would have
any greater need for Registrant’s rather specialized business services,” id. at 8-9, and
the “same consumers are not likely to encounter the Applicant’s services and the
services of the cited applications [sic] because the respective applicants [sic] target
completely different sets of consumers.” Id. at 9.
The identification of services in the cited registration is “banking,” which is “the
business of a bank or banker.”7F8 Applicant’s claim that the definition is “overbroad,”
id. at 8, is squarely at odds both with Applicant’s identity as “Montecito Bank &

8 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on January 15,
2020). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions. See, e.g., Ricardo
Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, *6 n.8 (TTAB 2019).
Serial No. 87311596
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Trust,” and with its argument on the fourth DuPont factor that its “customers are
sophisticated and careful [because] consumers of banking services typically
carefully investigate such services before choosing a service provider . . . .” 26
TTABVUE 10 (emphasis added). By virtue of its business form and its own admission,
Applicant is engaged in “banking” and providing “banking services” when it renders
the services identified in its application.
In any event, we must accept the broad identification of Registrant’s “banking”
services at face value, In re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB
2018), and deem those services to “encompass ‘all the [services] of the nature and type
described therein . . . .’” Id. (quoting In re Jump Designs, LLC, 80 USPQ2d 1370, 1374
(TTAB 2006)). The record shows that 21st-Century “banking” encompasses a very
wide range of services, including those identified in the application. Pages from the
CitiBank website describe “Banking With Citi” as involving a host of services,
including “settl[ing] up with friends using person-to-person payment services”:
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8F
9

9 December 7, 2017 Final Office Action at TSDR 34.
Serial No. 87311596
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9F
10
A page from the Bank of America website urges customers to “Do More with
Mobile & Online Banking,” including making “Payments & Transfers”:

10 Id. at TSDR 35.
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10F
11
Pages from the Wells Fargo website describe the bank’s online banking services,
which include “transfer[ing] money to another person with Wells Fargo SurePaySM”:

11 April 26, 2017 Office Action at TSDR 14.
Serial No. 87311596
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11F
12
12F
13

12 Id. at TSDR 19.
13 Id. at TSDR 21. We have reproduced only the pertinent portion of this page.
Serial No. 87311596
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A page from the website of M&T Bank lists among the bank’s services the ability
to “[q]uickly make payments to almost anyone – all with the security of our Bill Pay
Guarantee”:
13F14
The website of BB&T bank discusses the bank’s online banking services, which
include “Payments & Transfers” of funds:

14 December 7, 2017 Final Office Action at TSDR 28.
Serial No. 87311596
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14F
15
Consistent with Applicant’s status as a bank and its admission that it is engaged
in providing “banking services” when it provides the services identified in its
application, the record shows that the broad “banking” services identified in the cited
registration encompass Applicant’s narrower “person-to-person, mobile, and web-
initiated payments services in the nature of payment transaction processing
services,” such that the services are legally identical. See, e.g., In re Integrated
Embedded, 120 USPQ2d 1504, 1514 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d

15 Id. at TSDR 45.
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1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). The second DuPont factor strongly
supports a finding of a likelihood of confusion.
With respect to the third DuPont factor, Applicant claims that its “services are
directed to a completely different consumer market” from that of Registrant, that the
“respective consumers would find the services entirely distinct and used in such
separate markets that consumers would not believe the sources to be related,” and
that its “services are different, serve different purposes and are used by different
customers.” 26 TTABVUE 10.15F16 But “because the services are legally identical, they
must be presumed to travel in the same channels of trade and be rendered or offered
to the same classes of consumers.” In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1244 (TTAB 2010) (citing Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). See also Viterra, 101 USPQ2d at 1908.
Moreover, the record shows that “banking” services of all sorts, including the
payments transaction processing services identified in the application, are offered by
banks in both online and brick-and-mortar channels of trade to members of the
general public.16F17 The third DuPont factor also strongly supports a finding of a
likelihood of confusion.

16 These arguments are contained in Applicant’s discussion of the fourth DuPont factor, 26
TTABVUE 9-10, but they also pertain to the channels of trade and classes of consumers for
the services.
17 Applicant argues that its “services are directed to individual consumers in California while
MBT is a bank in Michigan.” 26 TTABVUE 10. We cannot consider the possible
geographically separate uses of Applicant’s and Registrant’s marks under the second, third,
or fourth DuPont factors because Applicant “seeks a geographically unrestricted registration
under which it might expand throughout the United States,” Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983), and the cited
registration is also geographically unrestricted, which presumptively gives Registrant “the
Serial No. 87311596
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B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).
The proper test regarding similarity “is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721
(internal quotation marks and citation omitted)). “The proper perspective on which
the analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).17F18
Because the services here are legally identical, “the degree of similarity necessary
to support a conclusion of likely confusion declines.” Viterra, 101 USPQ2d at 1908

exclusive right to use its mark throughout the United States.” Id. See also In re Appetito
Provisions, Inc., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987).
18 As discussed above, the record shows that the average customers of Registrant’s and
Applicant’s services include members of the general public.
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(quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)).
The involved marks are the registered mark shown below:

and the applied-for mark MB&T SIMPLEPAY in standard characters. Applicant
argues that the marks “look and sound very different and provide a completely
different commercial impression.” 26 TTABVUE 5. Although both marks contain the
same letters M, B, and T, in the same order, Applicant argues that the “difference in
adding ‘&’ and SIMPLEPAY is sufficient to avoid a likelihood of confusion.” Id.
Applicant criticizes the Examining Attorney for dissecting the marks “while
overlooking the differences in the marks in their entireties . . . .” Id. at 11.
The Examining Attorney responds that “[b]ecause Applicant’s mark begins with
the acronym ‘MB&T’, letters highly similar to the whole of the wording within
registrant’s mark, consumers are more likely to become confused between the marks
as indicators of source.” 30 TTABVUE 6. The Examining Attorney further argues that
the acronyms “differ only in appearance and sound by the addition of an ampersand
‘&’, meaning ‘AND,’” id. at 7, that the design element of Registrant’s mark “is
insufficient to obviate the similarities between the marks.” id. at 8, and that the
“addition of the term ‘SIMPLEPAY’ to the acronym ‘MB&T’ is likewise insufficient to
Serial No. 87311596
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prevent consumer confusion between the parties’ marks.” Id. at 9. On the final point,
she argues that the acronym MB&T in Applicant’s mark “serves as a house mark to
identify the origin of the” SIMPLEPAY payment processing services. Id. She
concludes that “the meaning of the marks and the overall commercial impression
created thereby are highly similar” and that “[c]onsumers encountering the marks in
commerce would be likely to erroneously assume that ‘MBT’ services and services
originating from the house mark ‘MB&T’ emanate from a single source.” Id. at 11.
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue 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 consideration of the marks in
their entireties.” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). We begin by considering
whether there are particular features of the marks to which we should assign more
or less weight when we compare them.
The cited mark is a composite mark consisting of letters against a background
design. In cases involving marks “consisting of words and a design, the words are
normally accorded greater weight because they are likely to make a greater
impression upon purchasers, to be remembered by them, and to be used to request
the goods.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018)
(citing Viterra, 101 USPQ2d at 1908). The same general principle applies to composite
marks involving letters and designs because letters, like words, are more likely to be
Serial No. 87311596
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recalled than designs and to be used in verbalizing composite marks in the course of
referring to the mark owner or requesting its goods or services. Given the centrality
and visual prominence of the letters “MBT” and the fact that the simple oval
background design is merely a “carrier” for the letters, Joel Gott Wines, LLC v.
Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1430 (TTAB 2013), we find that the
letters “MBT” are the dominant portion of the cited mark. Applicant implicitly agrees
when it states that “Applicant’s mark is MB&T SIMPLEPAY and the mark in the
cited application [sic] is ‘MBT’,” and argues that “‘MB&T SIMPLEPAY’ and ‘MBT’
look and sound very different and provided a completely different commercial
impression.” 26 TTABVUE 5.
Applicant’s standard character mark consists of the letters MB&T followed by the
word SIMPLEPAY. The letters “MB&T” are the first thing that is read and heard in
the mark, and “it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also Detroit Athletic Co., 128 USPQ2d
at 1049; Palm Bay Imps., 73 USPQ2d at 1692. This general principle applies with
particular force here because the letters “MB&T” are an abbreviation of Applicant’s
corporate name “Montecito Bank & Trust” and serve as a shorthand “house” mark
that identifies the source of the identified payment processing services, and all other
services offered by Applicant.18F19

19 The letters “MBT” in the cited mark similarly abbreviate Registrant’s corporate name
“Monroe Bank & Trust,” and serve as its shorthand house mark.
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We agree with the Examining Attorney that SIMPLEPAY, the second word in
Applicant’s mark, is “suggestive of characteristics of Applicant’s payment processing
services,” 30 TTABVUE 10, namely, that they make it simple for a customer to make
payments to others using Applicant’s processing services.19F20 We also agree with the
Examining Attorney that “consumers encountering Applicant’s mark would
immediately understand that the services are ‘SIMPLEPAY’ payment processing
services provided by ‘MB&T’.” Id. The record shows that banks often offer their
services, including payment processing services, under composite marks that, like
Applicant’s mark, consist of the bank’s house mark followed by a designator of its
particular services. Examples shown above include “Wells Fargo SurePay,”20F21 “M&T
Online & Mobile Bill Pay,”21F22 “Ally eCheck Deposit” and “Ally Assist,”22F23 and “Citi Easy
Deals” and “Citi Private Pass.”23F24 These uses suggest that consumers are accustomed
to seeing composite banking marks for various services in which the first element
identifies the bank and the second element identifies one of the bank’s services.
Because the letters “MB&T” appear first in Applicant’s mark, abbreviate its full
name, and are followed by a suggestive term for the identified services, we find that
the letters “MB&T” are the dominant portion of the mark. We turn now to the

20 The word “simple” means, inter alia, “[e]asy to understand, do, or carry out.” December 7,
2017 Final Office Action at TSDR 18 (THE AMERICAN HERITAGE DICTIONARY).
21 April 26, 2017 Office Action at TSDR 19.
22 Id. at TSDR 31.
23 December 7, 2017 Final Office Action at TSDR 25.
24 Id. at TSDR 39.
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required comparison of the marks in their entireties, giving greater weight in that
comparison to the letters MBT and MB&T than to the other elements of the marks.
Although the dominant portions of both marks are nearly identical, Applicant
argues that the marks “look and sound very different and provide a completely
different commercial impression,” 26 TTABVUE 5, because of the presence in
Applicant’s mark of the ampersand in the “MBT” letter string and the suffix word
SIMPLEPAY.
With respect to appearance, because the letters MB&T and the word SIMPLEPAY
combine to form a standard character mark, they “may be used in ‘any particular font
style, size or color,’” and we must consider that they “may be presented in any font
style, size or color, including the same font, size or color as the literal portions of
[Registrant’s] mark.” Aquitaine Wine USA, 126 USPQ2d at 1186 (quoting Trademark
Rule 2.52(a), 37 C.F.R. § 2.52(a)). Accordingly, we must assume that the letter “M” in
Applicant’s mark could be displayed, as in the cited mark, in a larger font than the
letters “B&T.” Id.
Moreover, the “marks ‘must be considered . . . in light of the fallibility of human
memory’ and ‘not on the basis of side-by-side comparison,’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec.
Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)),
and many consumers “may have but dim recollections from having previously seen or
heard one or the other of the involved marks.” Neutrogena Corp. v. Bristol-Myers Co.,
410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1977). The recall of marks “among ordinary
Serial No. 87311596
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purchasers is often hazy and imperfect.” Edison Bros. Stores, Inc. v. Brutting E.B.
Sport-Int’l GmbH, 230 USPQ 530, 533 (TTAB 1986).
These principles apply with special force to letter marks, as Board has also held
several times that “marks involving letter combinations are likely to be inherently
difficult to remember and, therefore, consumers are more susceptible to confusion or
mistake than with word marks.” The B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d
1500, 1509 (TTAB 2007) (citing Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990) and Alberto Culver Co. v. F.D.C. Wholesale Corp.,
16 USPQ2d 1597 (TTAB 1990)). See also Edison Bros. Stores, 230 USPQ at 533
(holding that it is “well known that it is more difficult to remember a series of
arbitrarily arranged letters than it is to remember figures, syllables, words, or
phrases. The difficulty of remembering such lettered marks makes confusion between
such marks, when similar, more likely”) (quoting Crystal Corp. v. Manhattan Chem.
Mfg. Co., 74 F.2d 506, 25 USPQ 5, 6 (CCPA 1935)).
We find that it is very unlikely that a consumer with a general rather than a
specific impression recollection of Registrant’s MBT mark who is exposed to
Applicant’s MB&T SIMPLEPAY mark, or a consumer with a general rather than a
specific impression recollection of Applicant’s mark who is exposed to Registrant’s
mark, will recall or recognize that one of the marks contains an ampersand while the
other does not. There are differences in appearance between the marks resulting from
the presence of the design element in the cited mark and the word SIMPLEPAY in
Applicant’s mark, but these differences are outweighed by the common presence of
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the dominant first letters MBT and MB&T, which as discussed above are the key
source-identifying elements of the marks as abbreviations for the full names of the
respective service providers. The marks as a whole are similar in appearance.
With respect to sound, the dominant portions of the marks, the letters MBT and
MB&T, are likely to be spoken, heard, and remembered in a manner that makes those
elements virtually identical to the ear. In that regard, Applicant places more weight
on the ampersand in its mark than that character can reasonably bear. The
ampersand, which stands for the word “and,”24F25 may not be verbalized at all, or if it is
verbalized, it is unlikely to distinguish the marks in sound. See Weenatchee-Beebe
Orchard Co. v. H.W. Butler & Bro., Inc., 126 USPQ 296 (TTAB 1960) (finding that
applicant’s mark “‘B and B’ when spoken is substantially similar to opposer’s mark
‘BEEBE’”). There are aural differences between the marks because they contain a
different number of syllables due to the presence of the word SIMPLEPAY in
Applicant’s mark. We find, however, that those differences are outweighed by the
near aural identity of the source-identifying dominant first letters MBT and MB&T.
The marks as a whole are similar in sound.
Finally, with respect to connotation and commercial impression, the record
indicates that both marks likely will be viewed as involving a nearly identical
abbreviation of a longer trade name. The addition of the word SIMPLEPAY in
Applicant’s mark is “unlikely to change the overall commercial impression
engendered by the marks,” Detroit Athletic Co., 128 USPQ2d at 1049; to the contrary,

25 April 26, 2017 Office Action at TSDR 11 (MERRIAM-WEBSTER DICTIONARY).
Serial No. 87311596
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against the backdrop of the record, which shows that banks often combine their house
marks with service-specific words to form marks such as Wells Fargo SurePay and
M&T Online & Mobile Bill Pay, it is far more likely that the suffix SIMPLEPAY will
simply signal to consumers that the provider of banking services under the registered
MBT mark offers payments processing services. The marks as a whole are quite
similar in connotation and commercial impression.
In view of the reduced degree of similarity between the marks required for
confusion to be likely because they are used on legally identical services, we find that
the first DuPont factor strongly supports a finding of a likelihood of confusion.
C. Purchase Conditions and Purchaser Sophistication

The fourth DuPont factor “considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Stone
Lion, 110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). Applicant argues
that “it is well-settled that the likelihood of confusion is reduced where purchasers
and potential purchasers of the products or services are sophisticated.” 26 TTABVUE
9. Applicant further argues, without supporting evidence, that “neither Appellant’s
nor Registrant’s services are subject to impulse purchasing and to the contrary,
Appellant’s customers are sophisticated and careful” because “consumers of banking
services typically carefully investigate such services before choosing a service
provider and, in many cases, the selection of these services is one of the most
deliberated and careful decisions made by individuals” and the “nature of Appellant’s
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services clearly require selection with care and deliberation after significant
investigation.” Id. at 10.
As discussed above, the involved services are legally identical, and the record
shows that Applicant’s identified “person-to-person, mobile, and web-initiated
payments services in the nature of payment transaction processing services” are
provided to members of the general public. Even if some of them exercise the
heightened degree of care in selecting a provider of such services that Applicant
asserts, “Board precedent requires our decision to be based on the least sophisticated
potential purchasers,” In re FCS US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018)
(citing Stone Lion, 110 USPQ2d at 1163), and there is no evidence that the least
sophisticated purchasers here will exercise such a heightened degree of care. We find
that the fourth DuPont factor is neutral.
D. Conclusion
The services, channels of trade, and classes of purchasers are legally identical,
and the marks are quite similar, and the first, second, and third DuPont factors thus
strongly support a finding of a likelihood of confusion. The fourth factor is neutral.
We find, on the basis of the record as a whole, that consumers who are familiar with
the cited mark and who then encounter Applicant’s mark are likely to believe
mistakenly that Registrant has extended its “banking” services into the specific
payments processing services identified in the application.
Decision: The refusal to register is affirmed.