NationsBan k Corp.v.Nation One Mortgage Co., Inc.

Trademark Trial and Appeal Board

Apr 29, 1998

No. 91097660 (T.T.A.B. Apr. 29, 1998)

Hearing: Paper No. 26
May 15, 1997 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
NationsBank Corporation
v.
Nation One Mortgage Company, Inc.
_____
Opposition No. 97,660 to application Serial No. 74/480,907
filed on January 21, 1994
_____
Larry C. Jones, John L. Sullivan, Jr. and Martha Gayle Barber of
Bell, Seltzer, Park & Gibson for NationsBank Corporation
Donald C. Kupperstein of Kupperstein & Kupperstein for Nation One
Mortgage Company, Inc.
______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Nation One Mortgage Company, Inc., by change of name
from Minuteman Mortgage Company, Inc., has filed an application
to register the mark "NATIONONEMORTGAGE" for "mortgage banking
services".1
NationsBank Corporation has opposed registration on the
ground that, since long prior to the filing date of the involved

1 Ser. No. 74/480,907, filed on January 21, 1994, which alleges a bona
fide intention to use the mark in commerce.
Opposition No. 97,660
2
application, it "and its licensees have continuously engaged in
the marketing, promoting, advertising and offering of all
services connected with banking and financial services"; that
such services "include, but are not limited to, banking services,
credit card services, preapproved credit line services, loan
financing services, mortgage banking services, personalized
consumer and commercial banking services, investment advisory
services, insurance services, savings accounts, checking
accounts, and teller machine transactions"; that since long prior
to the filing date of the involved application, opposer has
continuously and extensively used and promoted its "NATIONSBANK,"
"NATIONSBANC" and "other members of its family of ’NATIONS’
marks" in connection with its various banking and related
financial services; that opposer is the owner of valid and
subsisting registrations for, inter alia:
(1) the mark "NATIONSBANK" and design,
as reproduced below,
for "banking and related financial
services";2
(2) the mark "NATIONS FUND" and design,
as illustrated below,
for "mutual fund investment services";3

2 Reg. No. 1,688,466, issued on May 19, 1992, which sets forth dates of
first use of September 1990; combined affidavit §§8 and 15.
Opposition No. 97,660
3
(3) the mark "NATIONS TRUST" for
"banking and related financial services";4
(4) the mark "NATIONS CORP." for
"banking and related financial services";5
(5) the mark "NATIONSBANC" for "banking
and related financial services";6
(6) the mark "NATIONS 24" for "automatic
teller machine banking services";7
(7) the mark "NATIONS CARD" for "banking
and related financial services";8
(8) the mark "NATIONS CREDIT" for
"consumer financial lending services,
residential mortgages, secured and unsecured
lines of credit, and inventory financing";9
and
(9) the mark "NATIONSBANK CHECKCARD" for
"banking services";10
that applicant’s mark "is confusingly similar to Opposer’s marks
and trade name"; that applicant’s services "fall within the broad

3 Reg. No. 1,766,925, issued on April 20, 1993, which sets forth dates
of first use of April 1, 1992.
4 Reg. No. 1,833,461, issued on April 26, 1994, which sets forth dates
of first use of October 26, 1993. The word "TRUST" is disclaimed.
5 Reg. No. 1,833,462, issued on April 26, 1994, which sets forth dates
of first use of October 27, 1993. The term "CORP." is disclaimed.
6 Reg. No. 1,834,877, issued on May 3, 1994, which sets forth dates of
first use of October 25, 1993.
7 Reg. No. 1,834,878, issued on May 3, 1994, which sets forth dates of
first use of October 22, 1993.
8 Reg. No. 1,834,879, issued on May 3, 1994, which sets forth dates of
first use of October 28, 1993. The word "CARD" is disclaimed.
9 Reg. No. 1,870,786, issued on December 27, 1994, which sets forth
dates of first use of February 1993. The word "CREDIT" is disclaimed.
10 Reg. No. 1,874,822, issued on January 17, 1995, which sets forth
dates of first use of June 15, 1994. The term "CHECKCARD" is
disclaimed.
Opposition No. 97,660
4
range of banking and financial services offered by Opposer" under
its marks; and that, accordingly, applicant’s "use ... of the
NATIONONEMORTAGE mark would so resemble Opposer’s marks and trade
name as to be likely to deceive or cause confusion or mistake
among members of the purchasing public ...."11
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.12
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief,
the testimony,13 with exhibits, of its assistant general counsel,
Kathryn D. Kohler.14 Opposer, as the rest of its case-in-chief,

11 Although opposer also alleges in the notice of opposition that
applicant’s "use of its mark is ... a false designation of origin,"
such a claim was neither pursued at trial nor argued in opposer’s
briefs. Consequently, no further consideration will be given thereto.
12 While applicant additionally asserted, as affirmative defenses, that
the opposition "is barred by laches" and that opposer "is estopped by
its own conduct," such defenses not only have not been properly
pleaded, in that the facts claimed to constitute laches and estoppel
have not been set forth, but in any event such defenses were neither
tried nor raised in the briefs. Accordingly, no further consideration
will be given to applicant’s putative affirmative defenses.
13 It is noted, however, that while opposer’s initial testimony period
closed on March 16, 1996, the deposition of opposer’s witness, which
was taken upon written questions pursuant to Trademark Rule 2.124, was
not actually conducted until May 15, 1996. Nevertheless, inasmuch as
opposer, in compliance with Trademark Rule 2.124(b), timely served
notice of the deposition and the written questions to be propounded to
the witness, it appears that the reason why the deposition was
conducted after the nominal close of opposer’s initial testimony
period is that the Board inadvertently failed to follow its practice,
as set forth in Trademark Rule 2.124(d)(2), of otherwise suspending
proceedings in order to allow for the orderly completion of the
deposition. In view thereof, and since applicant has raised no
objection to the deposition on the ground of its being untimely,
opposer’s initial testimony period is hereby deemed to have been
extended until May 15, 1996 for the limited purpose of completing the
deposition of its witness. See TBMP §§714.04 and 714.07.
14 Applicant, apparently in reaction to a motion to strike previously
filed by opposer with respect to all but one of the exhibits submitted
by applicant with the trial testimony of its witness, filed a motion
Opposition No. 97,660
5
submitted a notice of reliance upon certified copies of its nine
previously mentioned registrations, showing in each instance that
the registrations are subsisting and owned by opposer, and
portions of its discovery deposition, including associated
exhibits, of applicant’s vice president, chairman, co-treasurer
and secretary, Mark C. Tribuna. Applicant, as its case-in-chief,
took the testimony of its president, director and co-treasurer,
Charles C. Furtado,15 and filed a notice of reliance upon

on August 20, 1996 to strike the Kohler deposition, including Exhibits
7 through 17 thereto, on the basis that, contrary to the requirement
of Trademark Rule 2.123(g)(1), "the name of the witness is not plainly
and conspicuously written at the top of each page." Although opposer,
while conceding such a defect in the form of the deposition, timely
filed a brief in opposition, counsel for applicant at the oral hearing
of this case wisely withdrew the motion to strike. In view thereof,
and since Trademark Rule 2.125(b) plainly provides that a party, upon
notice to the adverse party, may correct a defect in the required form
of a deposition transcript, applicant’s motion to strike, as well as
opposer’s related requests that the Board enter an "appropriate"
sanction for the filing of the motion, will not be given further
consideration.
15 Opposer, on August 12, 1996, filed a motion to strike Exhibits 2
through 10 from the Furtado deposition, which was timely taken upon
written questions on June 14, 1996. As the basis for its motion,
opposer asserts that it is clear from a review of the transcript that
"Exhibit Nos. 2-10 were not identified during Mr. Furtado’s
deposition" and that they were "neither identified in any other
deposition nor otherwise authenticated in the course of this
proceeding." Applicant, in a timely response supported by an
affidavit from Mr. Furtado, argues that the motion should be denied
because, among other things, Exhibits 2 through 9, which constitute
samples of applicant’s advertising and promotional materials, were
authenticated by Mr. Furtado, who states in his affidavit that, as he
was answering the question at his deposition concerning the manner in
which applicant advertises its services, he also "reviewed each and
every one of those documents, ensuring and authenticating their
accuracy and their genuineness as being documents actually used by the
Applicant in the course of its business to advertise its services."
With respect to Exhibit 10, which is a copy of a "Trademark Search
Report" prepared by "Analyst: C. COLEMAN" of an unnamed firm,
applicant similarly contends that such exhibit was authenticated by
the witness since, as Mr. Furtado states in his affidavit, while
answering the question relating to what steps were taken by applicant
in adopting its trade name and service mark so as to avoid any
likelihood of confusion, he "reviewed the original Thomson & Thomson
Search Report ..., ensuring and authenticating its accuracy and its
Opposition No. 97,660
6
opposer’s responses to applicant’s first set of interrogatories.

genuineness as being the Report actually produced ... and relied upon
by the Applicant ...." Applicant additionally maintains that,
inasmuch as it filed the deposition as part of a notice of reliance
thereon, Exhibit 10 is admissible since such a report "is, after all,
a self-authenticating extract of the records of the U. S. Patent and
Trademark Office, the Secretaries of State Offices, ... etc." In
reply, opposer submitted an uncontested motion to strike the Furtado
affidavit, insisting that such "is a belated effort to authenticate
Applicant’s Exhibit Nos. 2-10."
To the extent that Mr. Furtado’s affidavit is an attempt to
identify or otherwise authenticate applicant’s Exhibits 2 through 10,
opposer’s motion to strike the affidavit is granted inasmuch as such
affidavit is not only untimely under Trademark Rule 2.121(a)(1), which
provides that (unless stipulated to by the parties and approved by the
Board) no testimony shall be taken except during an assigned testimony
period, but it is barred by Trademark Rule 2.123(b), which specifies
that the testimony of a witness may be submitted in the form of an
affidavit only by agreement of the parties. Moreover, and in any
event, with respect to opposer’s motion to strike applicant’s Exhibits
2 through 10, we note that while Trademark Rule 2.123(e)(2) provides
in relevant part that "[e]xhibits which are marked and identified at
the deposition will be deemed to have been offered into evidence,
without any formal offer thereof" (emphasis added), opposer is correct
that none of the exhibits in issue was specifically identified by Mr.
Furtado at his deposition. In particular, when asked to describe the
manner in which applicant’s services are advertised, Mr. Furtado
testified that: "Currently all advertising is targeted to the
wholesale market place predominately through fax and direct
solicitation and exhibits will be attached, weekly rate sheets."
(Furtado dep. at 8.) However, not only was no other testimony given
with respect to such exhibits, but in fact only Exhibits 2 through 5
are copies of applicant’s weekly rate sheets since Exhibits 6 through
9 constitute, instead, sample advertisements by applicant. As to the
search report which is marked as Exhibit 10, the following testimony
by Mr. Furtado solely described the fact that a search was conducted,
but no mention was made as to the search report itself: "In 1993 a
thorough search of conflicting names and/or marks was conducted
through the Search Service, Thomson & Thomson, Victory Road, Quincy,
Massachusetts, a professional trade name and service mark research
firm." (Id. at 10.) Except for the addition by the court reporter,
after the questions and answers were concluded, of a parenthetical
note stating that "(Stenographer marked Exhibits Two-Ten.)," there is
simply no other mention of the disputed exhibits anywhere in the
transcript. (Id.) Furthermore, as to whether the search report is
nevertheless of record by means of applicant’s notice of reliance,
opposer is again correct that a search report does not constitute a
printed publication or official record within the contemplation of
Trademark Rule 2.122(e) and therefore is not proper subject matter for
a notice of reliance. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230,
1232 (TTAB 1992). Opposer’s motion to strike is accordingly granted
and applicant’s Exhibits 2 through 9 form no part of the record
herein. We hasten to add, however, that even if such exhibits were
considered as part of the evidentiary record, they would make no
difference in the disposition of this case.
Opposition No. 97,660
7
Briefs have been filed and an oral hearing, attended by counsel
for each of the parties, was held.
Opposer’s priority of use of its pleaded "NATIONSBANK,"
"NATIONSBANC," "NATIONS CREDIT" and other registered marks
containing the term "NATIONS" is not in issue inasmuch as the
certified copies of the registrations therefor show that they are
subsisting and owned by opposer. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). The record, in any event, establishes that opposer is the
prior user at least with respect to both its "NATIONSBANK" and
"NATIONSBANC" marks and trade names.16 The only real issues to
be determined, therefore, are whether opposer, as of applicant’s
filing date, had developed a family of marks featuring the term
"NATIONS" and whether applicant’s "NATIONONEMORTGAGE" mark, when
used in connection with mortgage banking services, so resembles
one or more of opposer’s prior marks, its prior trade names
and/or a family of "NATIONS" marks for its variously associated
banking and related financial services that confusion is likely
as to the source or sponsorship of the parties’ services.
According to the record, opposer has grown to be the
fourth largest bank holding company in the United States.

16 Although, as indicated elsewhere herein, applicant began use of its
current name and its "NATION ONE MORTGAGE" mark on January 1, 1994,
for purposes of priority of use of its "NATIONONEMORTGAGE" mark, the
earliest date upon which it can rely herein is the January 21, 1994
filing date of its intent-to-use application since it is questionable
whether the earlier mark creates the same continuing commercial
impression as the concatenated format of the latter one. See, e.g.,
Zirco Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB
1991) and Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17
Opposition No. 97,660
8
Opposer was incorporated on July 5, 1968 and changed its name
from NCNB Corporation to NationsBank Corporation on December 31,
1991. However, opposer first began use of the mark and trade
name "NATIONSBANK," in the concatenated form "NationsBank," on
August 27, 1990, when one of its subsidiaries, NCNB America Bank,
began rendering credit card services and changed its name to
NationsBank National Association.
Opposer, since the formation in 1928 of one of its
subsidiaries, Citizens & Southern Holding Company, has been
engaged in both retail banking and wholesale banking. According
to its witness, Ms. Kohler, who represents opposer and its
subsidiaries on consumer credit and marketing matters and
oversees it trademarks and service marks, "retail banking" is a
term which "refers to the business of providing banking services
to consumers ... through the use of bank branches, telephones ...
or other electronic means" and includes mortgage lending services
as well as credit card services. (Kohler dep. at 5.) Since
January 1, 1992, opposer has provided, through its subsidiary
national banks (which as such are authorized to conduct business
throughout the United States17), retail banking services of all
types, including "deposit, check processing, safe deposit, trust,
consumer loan, credit card, mortgage loan, line of credit, cash
management, currency exchange, and similar services," under its

USPQ2d 1866, 1868 (Fed. Cir. 1991). Opposer, however, has shown use
prior to January 1, 1994 as to its above-noted marks and trade names.
17 Similarly, except for, respectively, Hawaii and Alaska, opposer’s
affiliated NationsCredit Commercial Corporation of America and
NationsCredit Financial Services Corporation subsidiaries are
authorized to conduct business in all of the United States, including
the District of Columbia.
Opposition No. 97,660
9
concatenated "NATIONSBANK" and design mark.18 (Id. at 7.) In
contrast, Ms. Kohler testified that "wholesale banking" is a term
which "generally refers to the business of providing banking
services to larger corporate entities or other banks." (Id. at
6.) Likewise, opposer has provided wholesale banking services
under its concatenated "NATIONSBANK" and design mark since
January 1, 1992.
Opposer, in the case of its retail banking services,
advertises such services to the general public "in all forms of
media, including television, radio, newspaper, magazines, direct
mail, telemarketing, and the Internet." (Id. at 9.) In
addition, opposer promotes its retail banking services through
printed brochures, which in conjunction with its "NATIONSBANK"
and design mark, advertise such services as its consumer
"LineOne®" and "LineOne® Equity" lines of credit, "home equity
loans" and "mortgage loans" (Opposer's Exhibit 7); its "LineOne
Equity" line of credit (Opposer's Exhibit 9); and its
"NationsBanc Mortgage Corporation" adjustable and fixed rate
mortgages (Opposer's Exhibit 10). Opposer also uses brochures to
advertise and promote, in association with a concatenated form of
its "NATIONS CREDIT" mark, its various home equity lines of

18 Opposer’s subsidiary national banks have physical facilities in
North Carolina, Virginia, Maryland, South Carolina, Georgia, Florida,
Tennessee, Kentucky, Texas and the District of Columbia. In addition
to such areas, its NationsBanc Mortgage Corporation and NationsCredit
Consumer Corporation subsidiaries both have physical facilities in
Alabama, Arizona, Colorado, Connecticut, California, Delaware,
Illinois, Indiana, Kansas, Louisiana, Massachusetts, Michigan,
Mississippi, Missouri, Nevada, New Jersey, New Mexico, New York, Ohio,
Pennsylvania, Rhode Island, Washington and Wisconsin.
Opposition No. 97,660
10
credit (Opposer’s Exhibit 14) and other financial services, such
as personal loans, bill consolidation loans, home improvement
loans, vacation loans and education loans (Opposer’s Exhibit 13).
Approximate annual expenditures by opposer to advertise
and promote its retail banking services to the public at large
are in the range of between $65 million and $90 million.19
Following the change to its present name, opposer and its
subsidiary banks and mortgage company have since early 1992 used
the mark and trade name "NATIONSBANK," in its concatenated
format, in connection with their advertising,20 while brochures by
its mortgage company subsidiary, NationsBanc Mortgage
Corporation, also utilize not only the trade name NationsBanc,
but state (in fine print) that such firm "is a NationsBank
Corporation Company" (Opposer’s Exhibit 11) or "a subsidiary of
NationsBank Corporation" (Opposer’s Exhibit 10). Advertising by
opposer’s finance company subsidiary employs the mark "NATIONS
CREDIT," including a concatenated format thereof which appears on
brochures (Opposer’s Exhibit 13) and sometimes additionally
features the associated statement "A NationsBank Company"
(Opposer’s Exhibits 14 and 15) as shown below:

19 Prior to correcting her testimony to state the above figures, Ms.
Kohler initially indicated that annual advertising and promotional
expenditures by opposer amounted to tens of millions of dollars.
Applicant, however, has raised no objection to the change in the
substantive focus of the testimony to stress the higher range
subsequently indicated.
20 In the case of credit card advertising, such use began in 1990.
Opposition No. 97,660
11
Opposer also uses the name and mark "NATIONS FUND" to advertise a
family of mutual funds.
With respect, in particular, to the business conducted
by opposer in Massachusetts, the state in which applicant is
physically located and principally transacts business, opposer
originates consumer loans and leases through its consumer finance
subsidiary, NationsCredit Consumer Corporation, which maintains
offices in Braintree, Danvers and Westborough. Such firm, as of
January 1994, had 5,594 customer accounts in Massachusetts and,
as of December 31, 1995, had 8,277 such accounts. Opposer
additionally "services mortgage loan accounts in Massachusetts"
through its subsidiary, NationsBanc Mortgage Corporation.
(Kohler dep. at 10.) Specifically, such subsidiary had 1,862
mortgage accounts in Massachusetts as of January 1994 and had
approximately 7,000 mortgage accounts in that state as of October
1995. Through its subsidiary banks, opposer also renders retail
banking services and, since 1992, has provided credit card
services to residents of Massachusetts. As of January 10, 1996,
opposer had about 6,700 retail banking customers in such state
and approximately 60,000 credit card accounts held by about
58,000 customers.
Opposer became aware of applicant and its attempt to
register its "NATIONONEMORTGAGE" mark through the publication
thereof in the Official Gazette. Opposer, however, is not aware
of any instance of actual confusion between applicant’s mark and
any of opposer’s marks or trade names.
Opposition No. 97,660
12
Applicant, like opposer, engages in both retail and
wholesale banking, although applicant limits such activities to
the mortgage banking field. According to applicant’s president,
Mr. Furtado, the term "retail banking" connotes situations in
which "a mortgage lender offers its financial products and/or
services directly to the consumer," while the term "wholesale
banking" signifies instances in which "a mortgage lender and/or
investor offers its financial products and/or services directly
to other mortgage bankers, lenders, investors and/or brokers for
their offering directly to the consumer." (Furtado dep. at 5-6.)
Applicant, in particular, has engaged in retail banking
since October 1989 and, while it was predominately a retail-
oriented institution until January 1995, its retail banking
operation, as of Mr. Furtado’s trial deposition on June 14, 1996,
"accounts for approximately ten percent of all closed loans on a
monthly basis." (Id. at 6.) The change in focus from retail
mortgage lending to being primarily a wholesale mortgage banker
which "purchase[s] loans from mortgage lenders and mortgage
brokers as well as credit unions and savings banks" was the
result of applicant’s research of market trends showing wholesale
mortgage banking to be more profitable. (Tribuna dep. at 11.)
However, applicant is still engaged in providing retail mortgage
lending services to consumers and plans to continue to do so.
Applicant "currently is licensed to engage in retail
[mortgage] banking in five states," namely, Massachusetts, New
Hampshire, Connecticut, Rhode Island and Tennessee. Applicant is
currently providing its retail mortgage lending services, as well
Opposition No. 97,660
13
as wholesale mortgage banking services, in Massachusetts, New
Hampshire, Connecticut and Rhode Island, although it has physical
facilities only in Massachusetts. (Furtado dep. at 7.) In
addition, while applicant has not yet underwritten any mortgages
in Tennessee, that state and the southeastern region of the
United States are areas into which it is looking to expand as
part of its plans to diversify nationally.
Since January 1995, however, applicant has been
principally engaged in wholesale banking and, as of Mr. Furtado’s
deposition, its "wholesale banking operation accounts for
approximately 90 percent of all closed loans on a monthly basis."
(Id.) Moreover, while applicant is legally authorized to conduct
wholesale banking in all 50 states, its "wholesale banking
activities are presently directed primarily towards the eastern
seaboard." (Id.)
Applicant is basically a "non-conforming" mortgage
banker and thus, unlike conforming mortgage lenders, who make
loans which "are underwritten under Fannie Mae, Freddie Mack
[sic] guidelines," applicant’s credit guidelines are "a lot more
lenient". (Tribuna dep. at 13-14.) Although originally
incorporated as Minuteman Mortgage Company, Inc. on October 26,
1989, applicant changed its name to Nation One Mortgage Company,
Inc. on January 1, 1994.21 Since such date, applicant has been

21 The impetus for applicant’s change of name was twofold. Applicant,
in light of its plans to expand outside of its Massachusetts base,
desired to change its name from Minuteman Mortgage Company, Inc. to
Nation One Mortgage Company, Inc. "to reflect our growth and our
national presence." (Tribuna dep. at 34.) In addition, to settle an
infringement suit which it had brought against another retail mortgage
Opposition No. 97,660
14
using the trade name "Nation One Mortgage" and the mark "NATION
ONE MORTGAGE" in connection with its mortgage banking services.
Applicant has also commenced use of the mark "NATIONONEMORTGAGE,"
in the concatenated form illustrated below, for such services, as
demonstrated by the logo shown in an advertisement made of record
as Opposer’s Exhibit 1:
Applicant, in conjunction with the services of a professional
graphics artist who was instructed that applicant wished to
project a growing national presence, selected its current trade
name and service mark "[t]hrough a four month intensive process
of development". (Furtado dep. at 10.) Such process, which was
conducted in 1993, included "a thorough search of conflicting
names for marks ... through the Search Service, Thomson &
Thomson, .. . a professional trade name and service mark research
firm." (Id.) Applicant, according to Mr. Furtado, is not aware
of any customer confusion between its trade name or service mark
and those of opposer.
Applicant advertises the availability of its mortgage
banking services by targeting the wholesale marketplace through,
predominantly, such direct solicitation as the faxing of weekly

broker, Minuteman Funding Corporation, applicant agreed in 1993 to
change its name.
Opposition No. 97,660
15
interest rate sheets to mortgage brokers and lenders. In the
past, however, applicant also disseminated its rate sheets to
retail mortgage customers and real estate brokers. Applicant, in
addition, announced its change of name through an ad in The
Patriot Ledger, a South Shore, Massachusetts regional
publication, which targeted its retail, rather than wholesale,
mortgage banking customers and has advertised its business in the
yellow pages for the Quincy, Massachusetts area as "Specializing
In Residential Mortgages With A Personal Touch". (Opposer’s
Exhibit 2.) Applicant spent approximately $42,000 on advertising
in 1994 and expended between $8,000 to $9,000 thereon in the
first ten months of 1995. Applicant projected that, not
including facsimile costs, its advertising and promotional costs
would be approximately $35,000 in 1996.
Turning first to the issue of whether opposer has
proven that it has established a family of marks with the
"NATIONS" surname for its various banking and related financial
services,22 we note that as stated in J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed.
Cir. 1991):
A family of marks is a group of marks
having a recognizable common characteristic,
wherein the marks are composed and used in
such a way that the public associates not
only the individual marks, but the common

22 Applicant, in its brief, has parroted certain portions of opposer’s
main brief which are set forth under the heading "III. NATIONSBANK
AND ITS FAMILY OF MARKS". While poor practice, we take applicant’s
reference thereto as simply a synopsis or recap of opposer’s position
regarding an asserted family of marks rather than as an agreement or
acceptance by applicant that such a family exists.
Opposition No. 97,660
16
characteristic of the family, with the
trademark owner. Simply using a series of
similar marks does not of itself establish
the existence of a family. There must be a
recognition among the purchasing public that
the common characteristic is indicative of a
common origin of the goods. ....
Recognition of the family is achieved
when the pattern of usage of the common
element is sufficient to be indicative of the
origin of the family. It is thus necessary
to consider the use, advertisement, and
distinctiveness of the marks, including
assessment of the contribution of the common
feature to the recognition of the marks as of
common origin.
Opposer’s mere assertion in its main brief that, "[i]n providing
its banking and related financial services to the public, since
1990 [opposer] NationsBank and its subsidiaries have used
NATIONSBANK, NATIONSBANC, and other members of the family of
NATIONS marks" does not establish that a recognition exists among
the purchasing public that the common characteristic "NATIONS" is
indicative of a common origin of opposer’s services. As
applicant, citing Marion Laboratories Inc. v. Biochemical/-
Diagnostics Inc., 6 USPQ2d 1215, 1218-19 (TTAB 1988), correctly
points out in its brief, "[t]o constitute a family of marks, all
or many of the individual marks must be used and promoted in such
a way as to create a public perception of the family ’surname’ as
an indication of source, and the family ’surname’ must be
distinctive."
While applicant, in the present case, has admitted in
its brief that opposer "has established distinctiveness in the
word or wordpart ’Nations’ with an ’s’," it simply cannot be said
on this record that opposer has demonstrated the existence of a
Opposition No. 97,660
17
family of "NATIONS" marks. The evidence fails to show that such
marks have been promoted in a manner sufficient to create a
recognition or awareness among the purchasing public of the
common ownership thereof so that a family of marks, characterized
by the term "NATIONS" as its distinguishing element, in fact
exists. See, e.g., La Maur, Inc. v. Bagwells Enterprises, Inc.,
199 USPQ 601, 606 (TTAB 1978) and Polaroid Corp. v. American
Screen Process Equipment Co., 166 USPQ 151, 154 (TTAB 1970).
Furthermore, it is settled that the mere ownership of a number of
marks sharing a common feature, or even ownership of many
registrations therefor, is alone insufficient to demonstrate that
a family of marks exists. See, e.g., Hester Industries, Inc. v.
Tyson Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB 1987); Consolidated
Foods Corp. v. Sherwood Medical Industries Inc., 177 USPQ 279,
282 (TTAB 1973); Polaroid Corp. v. American Screen Process
Equipment Co., supra; and Polaroid Corp. v. Richard Mfg. Co., 341
F.2d 150, 144 USPQ 419, 421 (CCPA 1965). Accordingly, since
opposer has not established its assertion of a family of
"NATIONS" marks, the issue of likelihood of confusion must be
determined by comparing applicant’s "NATIONONEMORTGAGE" mark for
its mortgage banking services with each of opposer’s registered
marks for its various banking and related financial services, as
well as with its "NationsBank" and "NationsBanc" trade names.
Still, even if opposer had proven the existence of its asserted
family of marks, such would not affect the result which we reach
herein.
Opposition No. 97,660
18
Turning, therefore, to the issue of likelihood of
confusion, we find upon consideration of the pertinent factors
set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973), that confusion as to source or
affiliation is likely to occur. As a starting point, it is
settled that the registrability of an applicant’s mark must be
evaluated on the basis of the identifications of services set
forth in the involved application and each of the registrations
of record, regardless of what the record may reveal as to the
particular nature of the respective services, their actual
channels of trade, or the class of purchasers to which they are
in fact directed and sold. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) and Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987). Here, in particular, the record makes clear
that applicant’s "mortgage banking services" not only encompass
opposer’s provision of "residential mortgages" under its "NATIONS
CREDIT" mark, but opposer’s "banking and related financial
services," which are rendered under such of its marks as
"NATIONSBANK" and design, "NATIONSBANC," "NATIONS CORP." and
"NATIONS TRUST," include applicant’s mortgage banking services.
Applicant, furthermore, admits in its brief that "[b]oth
Applicant and Opposer perform mortgage lending and mortgage
banking services." Thus, notwithstanding applicant’s arguments
that the actual channels of trade for the parties’ services are
different, the respective services must be considered to be
Opposition No. 97,660
19
legally identical in part. Clearly, if the parties’ mortgage
banking services, including their residential mortgage lending
services, were to be sold under the same or similar marks,
confusion as to the origin or sponsorship thereof would be likely
to take place.
Considering, next, the respective marks, we observe as
a general proposition that, "[w]hen marks would appear on
virtually identical ... services, the degree of similarity
necessary to support a conclusion of likely confusion declines."
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Opposer concedes in
its initial brief that it "is aware, of course, that many banks
rightfully use ’National’ as part of their names." While also
noting therein that it "is not complaining of such usage,"
opposer further states that its "concerns arise in the present
case ... from Applicant’s prominent use of ’NATION’ as a prefix
in its service mark for mortgage banking services." In
particular, opposer asserts that, like the structure of its
registered marks, applicant "has adopted the unitary mark
NATIONONEMORTGAGE and, in doing so, has both: (i) presented the
term ’Nation’ as the first term when the mark is encountered in
print or in speech; and (ii) attached as a suffix a suggestion as
to the particular nature of the financial services being
provided--mortgage lending services."
Applicant, on the other hand, maintains that, just as
opposer has conceded that it cannot complain of third-party use
of the word "National," opposer "can hardly complain, then, at
Opposition No. 97,660
20
the Applicant’s use of the word ’Nation,’" especially since such
word "is always followed by the word ’One’." Furthermore, as to
opposer’s marks, applicant insists that:
In the instant case, the [letter] "s" in
"Nations" is what distinguishes [each of
opposer’s] "Nations" [marks] from all other
marks, and, in particular[,] from that of the
Applicant. Accordingly, there is no
likelihood of confusion based upon the
similarity of the marks in their entireties,
as to appearance, sound, connotation and
commercial impression. They are dissimilar.
We find, however, that when considered in their
entireties, applicant’s "NATIONONEMORTGAGE" mark, when compared
with such marks of opposer as its "NATIONSBANK" and design,
"NATIONSBANC" and "NATIONS CREDIT" marks and its "NationsBank"
and "NationsBanc" trade names, is substantially similar thereto
in sound, appearance, connotation and, especially, overall
commercial impression. In particular, we observe that, as
actually used in connection with identical mortgage banking
services, namely, retail mortgage lending services, applicant
utilizes its "NATIONONEMORTGAGE" mark in essentially the same
concatenated manner as opposer uses its "NATIONSBANK" and design
mark, its "NATIONS CREDIT" mark and its "NationsBank" and
"NationsBanc" trade names. Moreover, not only do the words
"NATION ONE" in applicant’s "NATIONONEMORTGAGE" mark sound and
look appreciably like the term "NATIONS" in opposer’s marks and
the "Nations" portion of its trade names, but such marks and
trade names are very similarly structured in the additional sense
that each ends with a generic or merely descriptive term for the
particular services and businesses in connection with which it is
Opposition No. 97,660
21
used, e.g., "MORTGAGE," "BANK" (and its phonetic equivalent
"Banc") and "CREDIT". Overall, applicant’s mark and those of
opposer’s marks and trade names which we have just mentioned also
share a similar connotation, as used in connection with mortgage
banking, that such services are provided or are available on a
nation-wide basis. Furthermore, and most significant, the
commercial impression projected by applicant’s mark and those
engendered by each of such other marks and trade names of opposer
are virtually identical since, as pointed out above, not only are
such designations similar in sound and connotation, but their
concatenated appearance and highly similar structure combine to
create designations which the purchasing public would regard as
signifying the same source.
Thus, notwithstanding the presence therein of the word
"ONE," applicant’s "NATIONONEMORTGAGE" mark, when utilized in
connection with the same services as those provided by opposer,
is simply not sufficiently distinguishable from such marks of
opposer as its "NATIONSBANK" and design, "NATIONSBANC" and
"NATIONS CREDIT" marks and its "NationsBank" and "NationsBanc"
trade names as to avoid causing a likelihood of confusion as to
origin or affiliation. Indeed, this record shows that opposer’s
marks are strong, rather than weak, in the sense that there is
nothing which indicates that the "NATIONS" formative thereof has
been commonly used by third parties as part of marks for banking
and/or related financial services.23 Additionally, having grown

23 Even if the search report referred to by applicant were considered
to be properly of record, none of the third-party registrations listed
Opposition No. 97,660
22
to be the fourth largest banking institution in the United States
and considering its substantial annual advertising expenditures,
opposer’s marks and trade names have undoubtedly achieved a
measure of strength and recognition on the part of the public
which entitles them to a correspondingly broader scope of
protection.
Applicant argues, however, that the conditions under
which and buyers to whom sales of the parties services are made
precludes any likelihood of confusion. In particular, applicant
asserts that:
Although both the Applicant and the
Opposer sell to the general public, the
Applicant targets its advertising and
promotion to the wholesale market, a careful,
sophisticated purchaser. .... With respect
to retail purchasers of mortgages, the
greater the value of an article, the more
careful the typical consumer can be expected
to be ....

therein is for marks in the banking and related financial services
fields which are composed of a "NATIONS" formative. Virtually all of
the marks in those fields involve, instead, the word "NATIONAL".
Moreover, even if the search report disclosed third-party marks in the
banking and related financial services arenas which contain the term
"NATIONS" or a similar designation, such as "NATION," it is settled
that a mere listing of third-party registrations does not demonstrate
that the subject marks are in actual use to such an extent that the
purchasing public is familiar with them and has learned to distinguish
the marks by their other aspects. As stated by the court in AMF Inc.
v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973):
We have frequently said that little weight is to be given
such registrations in evaluating whether there is likelihood
of confusion. 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.
See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Opposition No. 97,660
23
However, as opposer points out in its reply brief, applicant’s
application is "not limited to any particular mortgage-related
services or market niche"; rather, it covers all types of
"mortgage banking services," including both retail mortgage
lending as well as wholesale mortgage banking. Moreover, the
record reveals that, not only has applicant advertised its
services under its mark to the ordinary consumer in the retail
mortgage market, but it does an appreciable volume of retail
mortgage lending on a monthly basis and intends to continue such
lending, notwithstanding that several years ago it changed its
principal focus to the wholesale mortgage banking field.
Nevertheless, even assuming that the ordinary purchaser
will exercise a great deal of care in obtaining a residential
mortgage from applicant, opposer or other retail mortgage
lenders, it is still the case that even relatively sophisticated
and discriminating purchasers are not necessarily sophisticated or
otherwise knowledgeable in the field of trademarks nor are they immune
from confusion as to origin or affiliation. See, e.g., Wincharger
Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In
re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). This
would be especially the case where, as here, substantially
similar marks are utilized by applicant and opposer in connection
with identical mortgage banking services. In addition, nothing
in this record demonstrates that consumers care about from whom
they obtain their mortgages. Members of the general public would
care, instead, principally about the interest rate and closing
Opposition No. 97,660
24
cost being charged, rather than the financial strength of the
lender, particularly since mortgages, as the record discloses,
are frequently bundled together and resold as investments in the
wholesale mortgage banking market. Finally, even if prospective
retail mortgage customers were to notice the slight differences
between applicant’s mark and opposer’s marks and/or trade names,
they reasonably could assume, for example, that applicant is a
specialized subsidiary of opposer which provides non-conforming
mortgage loans to those considered to be greater credit risks.
None of the other du Pont factors discussed by the
parties affects our conclusion that confusion is likely.
Although opposer seeks to clinch its case by asserting that its
marks and trade names are famous,24 the proof thereof is simply
lacking on this record.25 Opposer had the burden of proof with
respect to establishing its claim of fame, but the pertinent
testimony provided by its witness relates only to the facts that
opposer has grown to be the fourth largest bank in the country
and that its annual expenditures to advertise and promote its
retail banking services to the public are in the range of between

24 As pointed out by the court in Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992),
cert. denied, 113 S.Ct. 181 (1992):
The fifth duPont factor, fame of the prior mark, plays
a dominant role in cases featuring a famous or strong mark.
Famous or strong marks enjoy a wide latitude of legal
protection. ....
25 Again, while we note applicant’s poor practice of parroting in its
brief the contentions made by opposer in its initial brief, it is
clear from applicant’s statement that "there is no evidence or
established fact presented in this case that the Opposer has goodwill
and reputation" that applicant is not conceding or stipulating that
Opposition No. 97,660
25
$65 million and $90 million. Although such testimony also
indicates that opposer has used its mark and trade name
"NATIONSBANK," in the concatenated form "NationsBank," since
August 27, 1990; that, following the change to its present name,
opposer and its subsidiary banks and mortgage company have used
the concatenated format of the mark and trade name "NATIONSBANK"
in connection with their advertising since early 1992; that
opposer’s mortgage company subsidiary also utilizes the trade
name NationsBanc; and that advertising by opposer’s finance
company subsidiary employs the mark "NATIONS CREDIT," the above
facts--without more--are collectively insufficient to enable us
to find that the marks and trade names used by opposer, including
those which, as noted previously, most resemble applicant’s mark,
have become famous. Not only do we lack any meaningful
information as to the extent of opposer’s services and business
under each of its marks and trade names, but we have only a
meager sample of advertising brochures and no examples of
promotional usage in other media. We simply cannot infer,
therefore, that during the relatively short period of time in
which opposer has utilized its marks and trade names, one or more
of such designations must have become famous or exceedingly well
known to the general public.26

opposer has demonstrated the claimed fame of its marks and trade
names.
26 The testimony presented by opposer glaringly illustrates the
limitations inherent in taking a deposition upon written questions,
which provides no opportunity to follow up or expand upon the answers
given by the witness to predetermined questions. See TBMP §714.15.
Here, such a deposition appears to have been an especially ill-
considered choice since, rather than having the court reporter read
the questions to the witness, as set forth in Trademark Rule 2.124(e)
Opposition No. 97,660
26
Finally, while applicant stresses the absence of any
known instances of actual confusion between its mark and
opposer’s marks and trade names over the course of a period of
approximately two and one half years,27 we concur with opposer
that, not only is the period of contemporaneous use fairly short,
but we further note that the extent of such use, which occurred
solely in Massachusetts, does not appear to have been very
substantial.28 Applicant’s advertising of its services under its
"NATIONONEMORTGAGE" mark, moreover, has been quite limited.
Since, in order for the absence of any reported incidents of
actual confusion to be a meaningful factor, the record must
indicate an appreciable and continuous use by applicant of its
mark for a significant period of time in the same market or
markets as those served by opposer under its marks and/or trade
names, this factor does not favor applicant. See, e.g., Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).

and TBMP §714.07, opposer's attorney attended the deposition and
conducted the direct examination of the witness. (See Kohler dep. at
3, which indicates that the questioning was done "By Larry D. [sic]
Jones," "Counsel for Opposer".)
27 Although applicant also faults opposer for its "failure to conduct
[any] research, study or survey on the issue of likelihood of
confusion," we note that such is not required as a matter of Board
practice. See, e.g. , Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1435-36 (TTAB 1993) and Miles
Laboratories, Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d
1445, 1462 (TTAB 1987).
28 Opposer additionally contends that applicant adopted its mark in bad
faith. Specifically, opposer urges that applicant's "intent to
benefit from the existing goodwill and reputation of NationsBank may
be inferred from the fact that, although several other potential names
satisfied the requisite of connoting a 'growing national presence,'
Applicant chose the one which closely emulates NationsBank ...." Mr.
Furtado's unrebutted testimony establishes, however, that applicant
conducted a search for conflicting marks prior to adopting its mark
Opposition No. 97,660
27
Nevertheless, to the extent that the lack of any known incidents
of actual confusion may serve to raise a measure of doubt as to
our conclusion that confusion is likely, we resolve such doubt,
as we must, against applicant and in favor of opposer. See,
e.g., Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983); San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 2 (CCPA 1977); and Izod, Ltd. v. Zip Hosiery Co., Inc.,
405 F.2d 575, 160 USPQ 202, 204 (CCPA 1969).
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board

and there is nothing else in the record which even suggests that such
adoption was anything other than in good faith.