Transterra Co.

Trademark Trial and Appeal Board

Sep 18, 1998

No. 74715228 (T.T.A.B. Sep. 18, 1998)

Paper No. 11
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/18/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Transterra Co.
___________
Serial No. 74/715,228
___________
G. Brian Pingel of Shearer, Templer & Pingel for applicant.
Matthew C. Kline, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
____________
Before Simms, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Transterra Co. has filed a trademark application to
register the mark UPSIDE for “electronic brokerage
services, namely, providing computer instructional services
for the electronic processing of stock brokerage
transactions via a global computer information network.” 1

1 Serial No. 74/715,228, in International Class 36, filed August 14,
1995, based on an allegation of a bona fide intention to use the mark
in commerce.
Serial No. 74/715,228
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark UPSIDE CD, as shown below, previously
registered for “banking and financial services in the
nature of issuing certificates of deposit,” 2 that, if used
on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Turning, first, to the marks, we
note that the registrant’s mark contains a minor design
element consisting of the lettering typestyle and the
presentation of the term “Upside” with an initial capital
letter followed by lower case letters. Registrant’s mark

2 Registration No. 1,967,860 issued April 16, 1996, to Old National Bank
in Evansville, in International Class 36. The registration includes a
Serial No. 74/715,228
3
includes the term CD, which, as acknowledged by applicant,
is a well-recognized abbreviation for a certificate of
deposit and is the subject of registrant’s banking and
financial services. Clearly, the term UPSIDE is the
dominant portion of registrant’s mark. While UPSIDE may be
suggestive of a positive outlook, it is, on this record, an
arbitrary term in connection with the identified services.
Applicant’s mark is identical to the dominant portion of
registrant’s mark. We conclude that the marks are
substantially similar in sight, sound, appearance and
overall commercial impression.
Thus, the significant question in this case is
whether, in view of the substantial similarity of the
marks, applicant’s and registrant’s respective services are
sufficiently different to avoid likelihood of confusion.
In deciding cases such as this, we are required to
determine the issue of likelihood of confusion on the basis
of the goods as set forth in the application and the cited
registration. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Further, “if the marks are the same or almost so,
it is only necessary that there be a viable relationship
between the goods or services in order to support a holding

disclaimer of the term CD apart from the mark as a whole.
Serial No. 74/715,228
4
of likelihood of confusion.” In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
We agree with the Examining Attorney’s contentions
that registrant’s services are broadly identified and do,
in fact, encompass the providing of its services via “a
global computer information network” 3; and that “stock
brokers commonly provide services with respect to stocks,
bonds and certificates of deposit.” The Examining Attorney
has submitted copies of third-party registrations wherein
the identified banking services include both providing
certificates of deposit and providing brokerage services in
connection with stocks and bonds; and wherein the
identified services include brokerage services involving
certificates of deposits, mutual funds and securities. 4
Additionally, the Examining Attorney has submitted excerpts
of articles from the LEXIS/NEXIS database, several of which

3 While the record contains no evidence regarding whether certificates
of deposit can be, or are, sold electronically via the Internet, it is
not unreasonable to assume that certificates of deposit may be
advertised and offered for sale electronically via the Internet even if
the transaction must be completed in person or via regular mail.
4 Third-party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce, although not
evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Serial No. 74/715,228
5
indicate both that brokerage firms deal in certificates of
deposit and banks provide brokerage services.5
Therefore, we conclude that, although applicant’s and
registrant’s services are not the same, the services are
sufficiently related that, when sold under substantially
identical marks, purchasers are likely to believe that the
source or sponsorship of the services is the same or
related. See, Charles Schwab & Co. Inc. v. The Hibernia
Bank, 3 USPQ2d 1561, 1566 (N.D.CA. 1987); In re United
California Brokers, Inc., 222 UPSQ 361 (TTAB 1984); and
Maine Savings Bank v. First Banc Group of Ohio, Inc., 220
USPQ 736 (TTAB 1983).
Further, applicant’s instructional services are
broadly identified so as to include the rendering of such
services to either, or both, the broker offering the stock
electronically and/or the individual purchasing the stock
electronically. The latter class of customers is likely to
be the same class of customers for registrant’s services.

5 For example, “Brokerage firms do deal in certificates of deposit.
Yields on broker-sold CDs are generally higher than CDs from your local
bank, with interest rates that are close to the rates on the same-
maturity …” [ Sacramento Bee, May 23, 1996]; “By yearend, Internet
surfers should be able to open certificate-of-deposit, money market,
and brokerage accounts through Huntington’s Web site as well as apply
for Visa and Mastercard accounts.” [ The American Banker, June 3,
1996]; “The [bank] branch offers mortgage and home equity loans,
certificates of deposit, and trust, investment and brokerage services
…” [ The Cincinnati Enquirer, May 29, 1996]; “Callable CDs are
basically bank certificates of deposit sold through brokers. That’s
Serial No. 74/715,228
6
Thus, the record supports the conclusion that the services
of applicant and registrant may be offered to the same
class of customers through the same channels of trade.
We are not convinced otherwise by applicant’s
contentions that its services differ from those of
registrant because applicant’s services “are actually
provided over the Internet to applicant’s customers”; and
that applicant’s services do not involve the sale of a
product, rather, applicant’s services involve “the
providing of instructions for completing brokerage
transactions over the Internet.” These are, essentially,
insignificant and immaterial distinctions.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, UPSIDE, and registrant’s mark, UPSIDE CD and design,
their contemporaneous use on the related services involved
in this case is likely to cause confusion as to the source
or sponsorship of such services. To the extent that we may
have any doubt concerning our conclusion that confusion is
likely, we are obligated to resolve such doubt in favor of
the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed Cir. 1988).

how they get the FDIC insurance. Most are 15-year CDs, although some
banks are offering 5-year …” [ St. Louis Post-Dispatch, May 27, 1996].
Serial No. 74/715,228
7
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. L. Simms
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board