The Provident Bank

Trademark Trial and Appeal Board

Mar 9, 2001

No. 75544371 (T.T.A.B. Mar. 9, 2001)

03/09/01 Paper No. 13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Provident Bank
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Serial No. 75/544,371
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Michael A. Marrero of Ulmer & Berne LLP for The Provident Bank.
Michael W. Baird, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______
Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Provident Bank has filed an application to register
the mark "PCFS FINANCIAL SERVICES" for "financial services;
namely, direct lending to consumers, buying and selling consumer
loans from third parties and the following services associated
therewith: portfolio lending, loan processing and servicing, and
loan funding."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
1 Ser. No. 75/544,371, filed on March 11, 1999, which alleges a date of
first use anywhere of April 27, 1998 and a date of first use in
commerce of May 5, 1998. The words "FINANCIAL SERVICES" are
disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/544,371
2
mark "P PACIFIC COAST FINANCIAL SECURITIES PCFS MEMBER NASD-SIPC"
and design, which is registered in the form shown below
for "brokerage services for investors in the field of
securities,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
Turning first to consideration of the respective
services, it is well settled that goods or services need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods or services are related in some manner and/or that
the circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same entity or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
2 Reg. No. 1,867,198, issued on December 13, 1994, which sets forth
dates of first use of August 1, 1993. The terms "MEMBER NASD-SIPC"
and "FINANCIAL SECURITIES" are disclaimed.
Ser. No. 75/544,371
3
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In support of his position that applicant's and
registrant's services are so closely related that, if marketed
under the same or similar marks, confusion as to the source or
sponsorship of such services would be likely, the Examining
Attorney has made of record copies of 11 use-based third-party
registrations of marks which are registered for "consumer
lending," "consumer loans," "lending and loan sales" or "mortgage
lending" services, on the one hand, and "securities brokerage" or
"investment securities brokerage" services, on the other.
Although admittedly not evidence that the different marks shown
therein are in use or that the public is familiar with them, the
third-party registrations nevertheless have some probative value
to the extent that they serve to suggest that the services listed
therein are of the kinds which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988).
In addition, the Examining Attorney has supported his
position with copies of several excerpts from a search of the
"NEXIS" database, the most pertinent of which are reproduced
below (emphasis added):
"BankAtlantic has boosted its direct
consumer and small business loans,
residential lending, trade finance, ... loan
syndications and debit card distribution. At
the same time, through its affiliates, it has
ventured into ... securities brokerage and
Ser. No. 75/544,371
4
commercial leasing." -- Miami Herald, July
22, 1999; and
"[The] combined company will ... offer
numerous product lines including banking,
consumer lending." -- Denver Business
Journal, May 29, 1998.
The Examining Attorney has "also included a number of printouts
of web pages, demonstrating that many securities brokerages offer
lending services, and that many banks which offer lending
services also provide securities brokerage services." Included
therewith is a printout from applicant's web site, which states
in particular that "Provident Bank sells and services consumer
and small business deposits, loans and investment products"
(emphasis added).
We agree with the Examining Attorney that such evidence
is sufficient to establish that applicant's consumer lending
services and registrant's securities brokerage services are so
closely related in a commercial sense that, if offered under the
same or similar marks, confusion as to the origin or affiliation
thereof would be likely to occur. Applicant, while arguing in
its main brief that the respective services "are not inexpensive
and are of the type purchased by sophisticated purchasers," does
not take issue with the Examining Attorney's contention that such
services are closely related for purposes of assessing whether
there is a likelihood of confusion. In fact, as the Examining
Attorney points out, applicant has even conceded in its response
to the initial office action that, albeit under a different mark,
it "already offers services similar to the services offered by
registrant under Registrant's registered mark."
Ser. No. 75/544,371
5
Turning, therefore, to consideration of the marks at
issue, the Examining Attorney argues that confusion is likely
because applicant "has appropriated a significant portion of the
registrant's mark and merely added generic wording of little or
no trademark significance."3 Specifically, while acknowledging
that marks must be considered in their entireties, the Examining
Attorney maintains that disclaimed matter "is typically less
significant or less dominant" and that therefore:
The dominant feature of Applicant's ...
mark is the acronym PCFS. This same acronym
appears in the registered mark. Applicant
argues that the Examining Attorney improperly
determined that this acronym is [the]
dominant feature of the registered mark, as
it appears in a relatively small font as
compared to the rest of the mark, and
comprises a small fraction of the wording
present in the entire mark.
The Examining Attorney agrees that the
acronym, as it appears in the registrant's
mark, is understated and comprises but a
small portion of the total wording. However,
it is by no means insignificant. As
Applicant has noted, the acronym PCFS [in
registrant's mark] is clearly derived from
the registrant's name, Pacific Coast
Financial Securities. .... The registrant
is using the registered mark to educate the
relevant consuming public, indicating that
3 While, as the Examining Attorney notes, applicant also contends that
the acronym "PCFS" is relatively weak, and is entitled to only a
narrow scope of protection, because of the existence of several third-
party registrations applicant has made of record for marks which
contain similar acronyms, we concur with the Examining Attorney that,
"[a]t best, the evidence submitted by Applicant demonstrates that
similar acronyms may coexist on the Register" (emphasis in original).
However, as the Examining Attorney further points out, "[i]n no way
does the evidence demonstrate that the acronym PCFS is 'weak' or in
use by third parties." See, e.g., National Aeronautics and Space
Administration v. Record Chemical Co. Inc., 185 USPQ 563, 567 (TTAB
1975). Accordingly, the third-party registrations presented by
applicant do not merit a finding that the marks at issue herein are
not likely to cause confusion.
Ser. No. 75/544,371
6
the acronym PCFS is synonymous with [the]
rest of the wording in the mark. Through its
use of the acronym, the registrant indicates
an unambiguous intention to use the term as a
source identifier. While admittedly a small
portion of the overall registered mark, the
overall commercial impression of the
registered mark is to equate PCFS with
PACIFIC COAST FINANCIAL SECURITIES. The
acronym is therefore an important part of the
registered mark.
Conversely, Applicant's mark makes no
such effort to define the acronym. Instead,
it is coupled with generic wording of little
or no trademark significance. When
confronted with the two marks, a potential
consumer is likely to believe the following:
1) PCFS stands for "Pacific Coast Financial
Securities (correct); and 2) PCFS FINANCIAL
SERVICES are financial services offered by
PCFS, or Pacific Coast Financial Securities
(incorrect).
In view thereof, and inasmuch as "both Applicant's mark and the
registrant's mark contain the acronym PCFS and have the same
commercial impression," the Examining Attorney concludes that
confusion is likely.
Applicant, on the other hand, insists that, when
considered in their entireties, the respective marks engender
different commercial impressions. In particular, applicant
contends that:
[T]he prior mark is not simply PCFS but
rather P PACIFIC COAST FINANCIAL SECURITIES
PCFS MEMBER NASD-SIPC and design. .... PCFS
is but a small part of the registrant's mark
and nothing more than an abbreviation of the
registrant's corporate name, Pacific Coast
Financial Securities, Inc. Thus, PCFS is not
the dominant portion of the entire mark.
Furthermore, the registrant uses a large
upper case "P" in connection with its mark
.... The "P" portion of the registrant's
mark finds no counterpoint in appellant's
Ser. No. 75/544,371
7
mark. The examining attorney appears to have
ignored this large "P" and its visual
prominence in the accompanying design when
considering the likelihood of confusion
between the registered mark and PCFS
FINANCIAL SERVICES. ....
The examining attorney had no evidence
... that the registrant has been known by the
designation "PCFS" instead of "Pacific Coast
Financial Securities," or that "PCFS" creates
a commercial impression separate and apart
from the features of the mark P PACIFIC COAST
FINANCIAL SECURITIES PCFS MEMBER NASE-SIPC
and design. Instead, the examining attorney
has missed the point that appellant's mark
and the prior mark are to be compared in
their entireties. ....
In short, both the letter "P," ... as
visually depicted, and the words PACIFIC
COAST FINANCIAL SECURITIES, should be treated
as the dominant features of the registrant's
mark. The examining attorney therefore
should have given those features greater
force and effect than the abbreviation "PCFS"
when judging the likelihood of confusion
between appellant's mark and the registered
mark.
Initially, it should be noted that this appeal does not
present a situation in which the marks at issue are essentially
arbitrary arrangements of letters and would be so regarded by
purchasers as such. See, e.g., ECI Division of E-Systems, Inc.
v. Environmental Communications Inc., 207 USPQ 443, 450-51 (TTAB
1980); Autac Inc. v. Viking Industries, Inc., 199 USPQ 367, 368
(TTAB 1978); and Aerojet-General Corp. v. Computer Learning &
Systems Corp., 170 USPQ 358, 362 (TTAB 1971). The facts of this
appeal, instead, seem more analogous to those cases in which the
letter combinations featured in the particular marks would most
likely be viewed as acronyms for the corporate names from which
such marks were derived rather than an arbitrarily arranged
Ser. No. 75/544,371
8
series of letters. See, e.g., Hewlett-Packard Co. v. Human
Performance Measurement Inc., 23 USPQ2d 1390, 1396 (TTAB 1991);
SSP Industries v. Solid State Products, Inc., 184 USPQ 628, 633
(TTAB 1974); and Sales Analysis Institute, Inc. v. Sales
Training, Inc., 181 USPQ 341, 346 (TTAB 1973).
With the foregoing in mind, we are constrained to agree
with applicant that, when the respective marks are considered in
their entireties, including any disclaimed matter, applicant's
mark does not so resemble registrant's mark that confusion is
likely. Clearly, in terms of connotation, the letters "PCFS" in
registrant's mark, to the extent that they may be noticed by
purchasers and potential consumers of registrant's securities
brokerage services, are an acronym for the name "PACIFIC COAST
FINANCIAL SECURITIES" in such mark. However, as to applicant's
mark, while it is apparent from the copyright notice appearing on
the specimens of use in the application and the references in the
printout of record from applicant's web site that the letters
"PCFS" in applicant's mark comprise an acronym or abbreviation
for its "Provident Consumer Financial Services," there concededly
is nothing in the mark itself which would so indicate such fact
to customers for applicant's consumer loan services. Thus,
customers would not necessarily be aware of the derivation of the
letters "PCFS" in applicant's mark and such letters admittedly
could be regarded as standing for the name "Pacific Coast
Financial Securities" to consumers familiar with registrant's
mark.
Ser. No. 75/544,371
9
However, despite this possibility of a shared identity
in connotation, the respective marks overall are substantially
different in sound and appearance, particularly since the acronym
"PCFS" in registrant's mark is in such tiny lettering, like the
other words in the design or seal surrounding the prominent
letter "P," as to be relegated to an almost imperceptible term,
especially in relation to the much larger display of the words
"PACIFIC COAST FINANCIAL SECURITIES." In light thereof, we
disagree with the Examining Attorney's assertion that the acronym
"PCFS," which is plainly derived from the name formed by the
dominant words "PACIFIC COAST FINANCIAL SECURITIES," "is by no
means insignificant," particularly since the Examining Attorney
"agrees that the acronym, as it appears in the registrant's mark,
is understated and comprises but a small portion of the total
wording."
In short, we find that any possible identity in
connotation imparted by the "PCFS" acronym in the respective
marks is simply outweighed by the substantial differences in
sound and appearance lent to the marks by the other elements
thereof. Customers for registrant's securities brokerage
services would most likely pronounce and view its mark as if it
were "P PACIFIC COAST FINANCIAL SECURITIES," since such terms,
along with the seal design surrounding the prominent letter "P,"
are the dominant source-signifying elements of registrant's mark.
Customers would regard the subordinate term "PCFS" in
registrant's mark, if it were noticed at all, as just an acronym
for the prominently displayed name "PACIFIC COAST FINANCIAL
Ser. No. 75/544,371
10
SECURITIES." By contrast, customers for applicant's consumer
loan services would tend to see the letters "PCFS" as the source-
indicative element of applicant's "PCFS FINANCIAL SERVICES" mark.
Overall, and further considering that consumer loan
services and securities brokerage services are relatively
sophisticated financial transactions which generally are not
impulsively purchased but rather are typically bought, given the
amounts of money being placed at risk, with at least some degree
of care if not a high level of discrimination, we find on this
record that contemporaneous use by applicant of the mark "PCFS
FINANCIAL SERVICES" is not likely to cause confusion with
registrant's use of the mark "P PACIFIC COAST FINANCIAL
SECURITIES PCFS MEMBER NASD-SPIC" and design mark.
Decision: The refusal under Section 2(d) is reversed.