UBS AGv.United Bankers’ Bank

Trademark Trial and Appeal Board

Nov 13, 2007

No. 91168033 (T.T.A.B. Nov. 13, 2007)

Mailed: November 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

UBS AG
v.
United Bankers’ Bank
_____

Opposition No. 91168033
to application Serial No. 78524329
filed on November 30, 2004
_____

Patrick J. Jennings, Kevin T. Kramer and Stephanie F.
Goeller of Pillsbury Winthrop Shaw Pittman LLP for UBS AG.

Andrea M. Bond and Michael M. Lafeber of Briggs and Morgan,
P.A. for United Bankers’ Bank.
______

Before Holtzman, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, United Bankers’ Bank, seeks registration of
the mark UBB in standard characters for services identified
in the application as:
Human resources advisory and management services
provided to banks; business management and
consulting services for banks, in International
Class 35;

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91168033
2
Correspondent banking services, asset and
liability management services provided to banks,
securities brokerage services, investment
portfolio advisory and management services,
providing online information to community banks in
the field of banking and finance, online banking
services for community banks, in International
Class 36.1

The application also includes a claim of
ownership of Registration Nos. 1789634 and 2721115.
Opposer, UBS AG, opposed registration of applicant’s
mark for the services in International Classes 35 and 36 on
the ground that, as used in connection with applicant’s
services, the mark so resembles opposer’s previously used
and registered mark UBS in connection with banking and
financial services, as to be likely to cause confusion, to
cause mistake, or to deceive under Trademark Act Section
2(d), 15 U.S.C. §1052(d).
By its amended answer applicant admits that opposer
“owns federal registrations incorporating ‘UBS’ [and that
opposer is] the listed owner of Registration No. 1573828,”
denies the remaining salient allegations, and asserts the
affirmative defense that the opposition “is precluded by the
prior registration doctrine.”
EVIDENTIARY ISSUES

1 Serial No. 78524329, filed November 30, 2004. The application
is based on allegations of first use and use in commerce on April
12, 1994 for the services in International Class 35 and March 27,
1991 for the services in International Class 36 under Section
1(a) of the Trademark Act, 15 U.S.C. §1151(a).

Opposition No. 91168033
3
As a preliminary matter, opposer filed a motion to
strike portions of various discovery depositions submitted
by applicant under its second and third notices of reliance,
and portions of applicant’s trial testimony provided by
Cassie Orloske and Charles Hokans.
We first address the notices of reliances. By its
motion, opposer seeks to strike excerpts from the discovery
depositions of: William Gaine, opposer’s executive director
and senior vice president of the regional dealer desk;
Markus Straessle, opposer’s head of market development
relationship management for Bank for Banks; Nadine Genet,
opposer’s head of global advertising; and Neil Gluckin,
opposer’s executive director. These depositions were taken
by applicant and submitted under notice of reliance pursuant
to Trademark Rule 2.120(j).
Each of the witnesses had been designated by opposer as
a Fed. R. Civ. P. 30(b)(6) representative to testify as to
specific topics. Opposer objects that certain excerpts from
the Gaine, Straessle and Gluckin depositions exceed the
scope of the specified 30(b)(6) topics and that these
witnesses are not officers, directors or managing agents of
opposer such that those portions that exceeded the scope of
the 30(b)(6) designation could still be acceptable under

Opposition No. 91168033
4
Trademark Rule 2.120(j). Trademark Rule 2.120(j)(1)
provides:
The discovery deposition of a party or of anyone
who at the time of taking the deposition was an
officer, director or managing agent of a party, or
a person designated by a party pursuant to Rule
30(b)(6) or Rule 31(a) of the Federal Rules of
Civil Procedure, may be offered in evidence by an
adverse party. (emphasis added)

We begin by noting that in general the Board is
reluctant to surgically strike certain lines of testimony
based on various objections. We find that each of these
witnesses, at a minimum, fall within the meaning of
“managing agent.” Therefore, we will not strike the
testimony that may exceed the scope of the 30(b)(6)
designation. In view thereof, the motion to strike is
denied. However, the Board has reviewed the testimony in
conjunction with the objections and accorded it appropriate
probative value (e.g., determining the level of competency a
witness may or may not have for a given topic, or whether
the questioning elicits a legal conclusion for which the
witness is not competent to testify).
With regard to the discovery deposition excerpt of Ms.
Genet, opposer argues that “the testimony should be
stricken...because applicant failed to produce the documents
regarding which it questioned the witness [and] because
applicant had failed to produce the documents in advance of
Ms. Genet’s deposition, thus depriving Opposer the chance to
Opposition No. 91168033
5
educate its corporate designee on these documents, admission
of this portion of Ms. Genet’s testimony would be unfairly
prejudicial to opposer.” Br. Appx. pp. 7-8. As opposer
notes, this line of questioning was the subject of a
discovery dispute that was resolved in a Board order which
granted opposer’s motion to compel production of the subject
documents and applicant’s motion to compel Ms. Genet to
answer questions about these documents. Ultimately, the
parties agreed to a substituted witness for these questions.
The order did not strike the deposition. The testimony is
of little probative value and the Board will not draw an
adverse inference for failure to answer, thus there is no
prejudice to opposer and the Board denies the motion to
strike these excerpts.
Opposer’s request that we strike certain trial
testimony of Ms. Orloske and Mr. Hokans concerning third-
party marks is denied. Opposer argues that certain website
printouts had not been produced during discovery stating
“[j]ust because applicant previously identified the third-
party mark or produced an earlier version of its website or
a third-party’s website does not justify this unfair tactic,
[s]ince companies often change the content on their
websites, the nature in which the mark was used may have
changed since the earlier produced document.” Br. Appx. p.
8. Opposer is correct that websites are ephemeral in nature
Opposition No. 91168033
6
and subject to change and for this very reason they are
limited in their probative value. However, these third-
parties had been disclosed to opposer during discovery and
there is no unfair surprise in the testimony whereby the
witness, during testimony pulled up the website on the
computer and testified as to what was on it at that point in
time. The issue is the probative value of such testimony
which is very limited. Opposer’s remaining objections to
the probative value of the witnesses’ testimony have been
taken into consideration in the evaluation of the testimony.
Applicant also asserted various objections. First,
applicant objects to opposer’s reliance on a prior opinion
in another case involving opposer. While each case must be
decided on its own merits, an opposer may cite to a non-
precedential opinion in making its argument. In view
thereof this objection is overruled.
Applicant also objects to testimony and exhibits
related to various industry brand equity reports or
“surveys” on the basis of foundation and hearsay. This
evidence is in the category of printed publications as it
was created and published by general circulation or industry
publications and it is therefore self-authenticating,
although Ms. Genet also is competent to authenticate and lay
an adequate foundation for the documents. Furthermore as to
the hearsay objection, we regard these and similar
Opposition No. 91168033
7
publications as being submitted to show that the content of
the publications appeared before the public and that they
are the ranking of global brands over several years. As
noted by applicant certain rankings are not broken down for
the United States and only show “global” ranking and there
is no information as to how the ranking is derived. While
these publications do add to the weight of the evidence in
support of opposer’s assertion that the mark is well known
they are limited in their probative value. We note that the
Interbrand rankings or “surveys” published in Business Week
are often cited in cases before the Board, in particular by
brand managers. At a minimum these rankings serve to show
that the content of the publication appeared before the
public, and depending on the accompanying testimony, that a
brand manager may have relied on the information to better
understand their brand strength. This objection is
overruled.
Finally, applicant objects on the grounds of foundation
and hearsay to an exhibit opposer attempted to introduce
during cross examination of applicant’s witness. The
exhibit is apparently an email allegedly received by
opposer’s client and forwarded to opposer. Applicant’s
witness is clearly not competent to lay the foundation or
authenticate an email received by opposer’s client and
Opposition No. 91168033
8
forwarded to opposer. Applicant’s objection is sustained on
the basis of lack of foundation and authentication.2
EVIDENCE OF RECORD
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
status and title copy of its Registration No. 1573828 for
the mark UBS, attached to its pleading; opposer’s notices of
reliance on printed publications; various exhibits filed
under stipulation; opposer’s testimony depositions, with
exhibits, of Nadine Genet, opposer’s head of global
advertising, and Markus Straessle, opposer’s head of market
development relationship management for Bank for Banks;
applicant’s testimony depositions, with exhibits, of Charles
Hokans, applicant’s senior vice president, and Cassie
Orloske, applicant’s marketing officer; applicant’s notices
of reliance on applicant’s prior registrations, third-party
registrations, and excerpts from the discovery depositions
of Neil Gluckin, Markus Straessle, William Gaine, and Nadine
Genet; and opposer’s rebuttal notice of reliance on the
discovery depositions of Mark Straessle, Nadine Genet and
William Gaine.
PRIORITY/STANDING
Because opposer has made its pleaded registration of
record and has shown that the registration is valid and

2 We hasten to add the email is of virtually no probative value.
Opposition No. 91168033
9
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark and its
priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Opposer’s pleaded registration is for the mark UBS in
typed form. This registration issued on December 26, 1989
for services identified as “banking, investment banking, and
securities brokerage services” in International Class 36.
Opposer presented evidence and argument on the factors of
the similarity of the marks, the relatedness of the
services, channels of trade, classes of purchasers and the
fame or strength of its mark.
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
Opposition No. 91168033
10
1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
Opposer has expended significant sums3 on a broad-based
advertising program in a variety of media, including, print,
television, radio, Internet and billboards at major
airports. See generally, Genet Test. For example, opposer
advertises its financial services in newspapers with a wide
circulation, including the New York Times, the Wall Street
Journal and the Boston Globe. Genet Test. pp. 13-15, Exh.
Nos. 71, 73, 76-77. During prime time television, it runs
its advertising on a regular basis on such channels as CNN
and CNBC, and programming such as “Meet the Press” and “ABC
College Basketball.” In addition, opposer uses its UBS mark
in connection with a variety of highly visible sponsorships.
For example, opposer sponsors the Players Championship, a
PGA golf championship, Lincoln Center in New York City, the
San Francisco Museum of Modern Art, the Boston Symphony
Orchestra, and the Bay Invitational, a PGA tournament held
in Florida. Genet Test. pp. 20, 21, 22, 57, 60 Exh. Nos.

3 The exact figures were submitted under seal.
Opposition No. 91168033
11
65, 67. While the record evidence does not show a level of
consumer exposure and recognition to warrant a finding of
fame, it does establish UBS as a strong mark which should be
accorded a wider scope of protection. Lacoste Alligator
S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009)
(“Because of the extreme deference that we accord a famous
mark in terms of the wide latitude of legal protection it
receives, and the dominant role fame plays in the likelihood
of confusion analysis, it is the duty of the party asserting
that its mark is famous to clearly prove it”); Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901
(TTAB 2007).
Applicant’s evidence of third-party use of similar
marks is not sufficient to rebut this showing. Applicant
points to eleven third-party letter marks in the financial
industry that incorporate the letters U, B and/or S.
However, while as the record indicates it may be common for
banks and other financial institutions to utilize certain
letters like B to stand for the word bank or U to stand for
commonly used terms United or Union, the evidentiary showing
here is not sufficient to rebut opposer’s evidence of a well
advertised and heavily used mark. See In re Broadway
Chicken Inc., 38 USPQ2d 1559 (TTAB 1996). There is very
limited evidence as to the extent of use of these other
letter marks on which to make any determination as to their
Opposition No. 91168033
12
dilutive impact. In that regard we advise applicant that
registrations are not evidence of use and have little
probative value as to this du Pont factor. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269-70 (CCPA 1973).
In addition, several of the examples have distinct
characteristics that lessen their dilutive impact. For
example, applicant points to the Royal Bank of Scotland’s
use and registration of the standard character mark RBS and
Vanguard Group, Inc.’s use and registration of VBS. The
fact that these marks begin with a different letter creates
a different impact.
Further, applicant’s argument that “common usage in an
industry of the words underlying an abbreviation weakens [a]
mark’s relative strength and limits its scope of
protection,” is misplaced. Br. p. 19. Applicant relies on
a 1972 case from the Seventh Circuit, however, the Board and
its primary reviewing court the Court of Appeals for the
Federal Circuit and its predecessor the Court of Customs and
Patent Appeals, have long held that initials are not
descriptive unless the initials themselves are recognized as
synonymous with the descriptive words.
Our case law provides that an acronym or initialism is
deemed to be merely descriptive of goods or services only if
the wording it stands for is merely descriptive of the goods
Opposition No. 91168033
13
or services, and the acronym or initialism is readily
understood by relevant purchasers to be “substantially
synonymous” with the merely descriptive wording it
represents or stands for. See, e.g., Modern Optics, Inc. v.
The Univis Lens Co., 43 CCPA 970, 234 F.2d 504, 110 USPQ 293
(CCPA 1956) (“CV” not substantially synonymous with merely
descriptive designation “continuous vision” and thus is not
merely descriptive of trifocal lenses). “[A]s a general
rule, initials cannot be considered descriptive unless they
have become so generally understood as representing
descriptive words as to be accepted as substantially
synonymous therewith.” Modern Optics 110 USPQ at 295.
While a term may be the abbreviation of a full name,
“it does not follow, however, that all initials or
combinations of descriptive words are ipso facto
unregistrable.” Id. See also Racine Industries Inc. v.
Bane-Clene Corp., 35 USPQ2d 1832, 1836 (TTAB 1995) (the term
PCA not merely descriptive even though the applicant “uses
the term ‘PCA’ as an acronym for an organization which is
presently known as the Professional Cleaners Association.”)
Applicant has not made such an evidentiary showing and
opposer has shown its prominent use of the mark UBS without
any association to descriptive wording or the former name
Union Bank of Switzerland for several years now.
Opposition No. 91168033
14
We next turn to consider the marks. With respect to
the involved marks, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the services offered under the respective
marks is likely to result.
We begin by noting that letter marks are more
susceptible to confusion because letter combinations are
likely to be inherently difficult to remember. B.V.D.
Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB
2007) citing Weiss Associates, Inc. v. HRL Associates, 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). This is true even when the prospective purchasers of
the services are sophisticated purchasers. Id. Further,
the first two letters of applicant’s three-letter mark UBB
are identical to the first two letters of opposer’s three-
letter mark UBS. Hercules Inc. v. National Starch &
Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984)
(“considering the marks NATROL and NATROSOL in their
Opposition No. 91168033
15
entireties, the clearly dominant aspect of both marks is
that the first four letters and the final two are the
same.”). See also Palm Bay Imports, 73 USPQ2d at 1689;
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“there are also similarities between
them in that both start with the term ‘KID’ a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered”). In addition, the last letters B and S
have a somewhat similar appearance. Thus, the marks are
very similar in sound and appearance. Moreover, both are
standard character marks without any stylization or design
elements that would impact the overall commercial
impressions of the marks and we find the overall commercial
impression to be similar.
With regard to connotation, we are not persuaded by
opposer’s argument that both marks on their own, or even
when used in connection with the services, would connote the
meaning “bank for banks.” However, due to the points of
similarities in sound, appearance and commercial impression,
we find they outweigh the one dissimilarity of the last
letter. Finally, as discussed below, at least some of
applicant’s identified services are identical to opposer’s
identified services and “when marks would appear on
virtually identical goods or services, the degree of
Opposition No. 91168033
16
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 32 USPQ2d 1698 (Fed.
Cir. 1992).
This brings us then to our consideration of the
similarities between opposer’s and applicant’s services,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the services
as they are recited in the application and registration,
respectively. See Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211
USPQ 636 (TTAB 1981).
Applicant’s services in International Class 36 are
listed as “correspondent banking services, asset and
liability management services provided to banks, securities
brokerage services, investment portfolio advisory and
management services, providing online information to
community banks in the field of banking and finance, online
Opposition No. 91168033
17
banking services for community banks.” Registrant’s
services are identified as “banking, investment banking, and
securities brokerage services.” The parties respective
“securities brokerage services” are identical and opposer’s
“banking and investment banking” encompass applicant’s
“correspondent banking services, investment portfolio
advisory and management services and online banking services
for community banks.” Finally, applicant’s asset and
liability management services provided to banks are closely
related to opposer’s “investment banking and securities
brokerage” services.
Moreover, in view of the identical and close
relationship of these services we must presume that they
travel in the same channels of trade and are offered to some
of the same purchasers. In fact, applicant receives
securities brokerage services from opposer. Hokans Test.
pp. 73-77 Exh. No. 93.
Applicant’s arguments centered on the differences
between its and opposer’s actual services and channels of
trade ignore well established case law requiring that the
comparison of the services is based on how the
identifications read in the involved application and
opposer’s registration. The identification of services in
the pleaded registration is not limited by trade channel or
classes of purchasers and, therefore, we must consider all
Opposition No. 91168033
18
possible, not actual, ordinary channels of trade and classes
of purchasers. Further, while some of applicant’s services
are limited by purchaser (community banks) others are not so
limited (e.g., securities brokerage services), and in any
event registrant’s broadly identified services encompass
these purchasers.
Applicant’s identification of services in International
Class 35 are “human resources advisory and management
services provided to banks; business management and
consulting services for banks.” Applicant’s human advisory
services are described through testimony as follows:
USOURCE is our comprehensive human resource
consulting services which are designed to serve as
an outsourced human resource department for
community banks. Purpose being that few of our
customers could afford to keep up to speed with
the complexity of federal and state law changes in
regard to employment and we offered those
services, as well as helping them really manage
their employees to the best of their ability, in
essence, offering salaried administration
services, offering the ability to structure job
descriptions, develop salary ranges, providing a
hotline service to community banks; if they had a
matter, that was uncomfortable for them to deal
with they had somebody to talk to who would work
through that with them to determine proper
direction strategy in which to take.

Hokans Test. pp. 30-31.

It would include – yes. It would include
personnel management services, but in what I would
describe strictly an advisory capacity. We don’t
direct the human resources in that particular
bank. That’s their responsibility, but we will
advise on how they might be directed.

Hokans Test. p. 70.
Opposition No. 91168033
19

The business management services include “consultant
services, which I would include a credit card product that
we offer to community banks. We have our BankValue services
which essentially consists of strategic option analysis,
stock valuations and market studies.” Hokans Test. p. 21,
Exh. 5 (excerpt from 1992 Annual Report “UBB’s strategic
planning service is designed to maximize the value of a
banking franchise through the design of income enhancement
techniques and market development strategies”).
Opposer argues that these services are related to its
banking services and has submitted several use-based third-
party registrations to support this proposition.4 Albert
Trostel, 29 USPQ2d at 1786 (third- party registrations may
serve to suggest that the listed services are of a type
which may emanate from a single source). See, e.g., Reg.
No. 3314410 for the mark FIDELITY TOTAL HR ADVANTAGE for,
inter alia, “business management services in the field of
human resources; business consultation and analysis services
in the field of human resources” and “investment management
services; securities brokerage services”; Reg. No. 3325818
for the mark WIN and design for, inter alia, “providing
advisory services and consultancy with regard to business

4 We note that several of the third-party registrations are of
little probative value inasmuch as they were registered under
Section 44 or 66(a), i.e., not based on use in commerce. Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Opposition No. 91168033
20
planning, business analysis, business management, and
business organization” and “serving as a human resources
department for others” and “providing shared financial and
insurance services to members of the wholesaling community,
namely, assisting others in obtaining loans; providing
working bank line capital”; Reg. No. 3004905 for a design
mark for, inter alia, “business management; professional
business consultancy” and “stock brokerage services; savings
and loan association services and banking services”; Reg.
No. 2710428 for INLEAGUE for, inter alia, “business
management and business consultation in the field of human
resources” and “banking services”; Reg. No. 2606575 for
FINETRICS for, inter alia, “business management, planning
and consultation” and “banking”; Reg. No. 2656261 for
PLYMOUTH SAVINGS BANK for, inter alia, “administration of
business payroll for others” and “banking, investment
brokerage”; Reg. No. 3318058 for NEWTEK for, inter alia,
“business consultation” “business management planning”
“business planning” “business management consultation and
management consultation services; consulting services in the
field of business management, management, and human
resources” and “online financial and banking services” and
“business brokerage”; and Reg. No. 3086799 for INVESTING IN
THE ENTREPRENEURIAL ECONOMY for, inter alia, “business

Opposition No. 91168033
21
management and consultation in the fields of corporate
finance, merger and acquisition, executive recruitment and
human resources, and marketing strategic planning” and
“investment advisor services” and “investment fund
management and investment of funds for others.”
We find, at a minimum, applicant’s business management
and consulting services for banks to be sufficiently related
to opposer’s banking, investment banking and securities
brokerage services such that confusion as to source is
likely. These services, as identified, include the same
potential consumers, namely, banks. In addition, potential
consumers have been exposed to business management services
and banking services being offered under the same mark, as
is evidenced by the third-party registrations and applicant
itself. We also note that at least some of applicant’s
business management services address the financial health of
the client bank, bringing it closer to opposer’s investment
banking and securities brokerage services. To establish
this du Pont factor, i.e., that the services are related, it
is sufficient that any item encompassed by the
identifications of services is identical or related. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986 (CCPA 1981).
Again, inasmuch as registrant’s services are not
limited we must presume that they include the same trade
Opposition No. 91168033
22
channels and purchasers as applicant’s banks. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); and Octocom, 16 USPQ2d at 1783.
Applicant argues that the involved services are “rather
high end financial services intended for professional
buyers...in the banking industry who will not be confused as
to any relationship between the parties.” Br p. 24.
Opposer responds that the services in the application are
not so limited and include “any member of the general
public.” Further, opposer relies on In re Decombe, 9 USPQ2d
1812 (TTAB 1988) arguing that even sophisticated buyers are
not immune from confusion. Reply Br. p. 13. First, while
certain of applicant’s services are unlimited (e.g.,
securities brokerage services), others are limited by class
of customer, either explicitly (e.g., business management
and consultation for banks) or implicitly (e.g.,
correspondent banking services implies banks as customers).
Therefore, the overlap in class of customers for the
services overall, as identified, include the general public
in addition to all banks and in some cases specifically
community banks. Thus, as to the general public, while
these are not impulse transactions, the sophistication of
the consumer is not very high. With regard to the
professional banking consumers, while we may infer a higher
level of scrutiny in the their purchasing, there is not
Opposition No. 91168033
23
sufficient evidence of record upon which to make a
determination that this factor would outweigh the other du
Pont factors. In view thereof, we find this factor to be
neutral.
As to applicant’s argument that there is no evidence of
actual confusion between opposer’s mark and applicant’s
mark, there is not sufficient testimony on this point from
which to draw any conclusions. While applicant has offered
its services under the mark UBB since 1991 its actual use
has been limited to smaller banks and, while opposer’s
registration is not limited by classes of purchasers and a
few of its customers have been smaller banks, it is not
clear from the record the extent to which actual market
overlap has occurred up to this point. In addition, based
on the record applicant primarily uses UBB next to its full
name United Banker’s Bank which may serve to obviate
potential confusion. Therefore, based on this record we do
not accord this factor much weight.
Finally, opposer argues that applicant’s knowledge of
opposer’s UBS mark “should raise a presumption that
Applicant intends to cause confusion in the marketplace with
the UBB mark” and, in addition, progressive encroachment is
considered as evidence of a planned or contrived intent to
deceive. Opposer points to applicant’s prior registrations
to show such “progressive encroachment” noting that the
Opposition No. 91168033
24
first one includes a design element with the full name of
the company, the second one includes only the descriptive
word SECURITIES with the design element and now applicant
seeks a standard character mark without additional wording.
Opposer adds that the timing of these changes in
registration occur in conjunction with the development of
applicant’s business relationship with opposer. Intent is a
difficult element to prove and this highly circumstantial
evidence is insufficient from which to draw an inference of
intent to confuse.
On balance, the relevant du Pont factors weigh in favor
of a likelihood of confusion. In view of the strength of
opposer’s mark, the similarity of the marks, the identical
and related nature of the services as identified in the
application and registration, and the overlap in the
channels of trade and classes of customers, we conclude that
there is a likelihood of confusion between applicant’s
standard character mark UBB and opposer’s typed mark UBS.
To the extent there is any doubt, we must resolve that doubt
in favor of opposer as the prior user and registrant. Giant
Food, Inc. v. Nation’s Foodservice, Inc., Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983).
PRIOR REGISTRATION DEFENSE
Opposition No. 91168033
25
Applicant asserts as an affirmative defense that its
“prior registrations are legally equivalent and cover the
same services as the mark Opposer now opposes,” therefore,
“the Morehouse or prior registration defense bars Opposer’s
claims.” Br. pp. 26-27. Applicant’s prior registrations
are set forth below:
Registration No. 1789634 for the mark

for “banking services for community banks and
bankers” in International Class 36; and

Registration No. 2721115 for the mark

For “securities brokerage services” in
International Class 36.

The Morehouse defense is an equitable doctrine which is
applied when an applicant owns a prior registration for
essentially the same mark identifying essentially the same
goods or services that are the subject mark and goods of the
proposed application. Morehouse Mfg. Corp. v. J. Strickland
& Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969). In such a
case, “the opposer cannot be further injured because there
already exists an injurious registration,” and therefore the
additional registration does not add to the injury. O-M
Bread, Inc. v. U.S. Olympic Comm’n, 65 F.3d 933, 36 USPQ2d
1041, 1045 (Fed. Cir. 1995) (Olympic and Olympic Kids not
Opposition No. 91168033
26
essentially the same). “Ultimately, we must determine if
the marks at issue here are ‘essentially the same’ mark.”
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings
Ltd, 86 USPQ2d 1283 (TTAB 2008) quoting Morehouse, 181 USPQ
at 717.
Regardless of whether the services in the prior
registrations are essentially the same International Class
36 services listed in the application, the marks in
applicant’s prior registrations are not “essentially the
same” as the standard character mark in the subject
application. The addition of the logo design in the prior
registrations is sufficiently distinct such that these marks
are not essentially the same for purposes of the Morehouse
defense. In addition, the mark in Registration No. 1789634
includes the wording United Bankers’ Bank associating the
abbreviation UBB with the full name of the company,
substantially affecting its connotation and commercial
impression. Therefore, application of the Morehouse defense
is not appropriate in this case.
Applicant’s argument that the marks cannot
simultaneously be sufficiently dissimilar to prohibit
application of the Morehouse defense but sufficiently
similar to create a likelihood of confusion, is misplaced.
In fact, the standard for similarity is different for these
separate purposes. The standard of similarity for
Opposition No. 91168033
27
application of the Morehouse defense is more strict. The
marks must be “substantially” or “essentially” the same.
Put another way “[w]hether marks are ‘different’ is a less
stringent criterion than whether the marks are likely to
cause confusion.” O-M Bread, 36 USPQ2d at 1045.
Further, the cases upon which applicant relies are
distinguishable by their facts. In Place for Vision, Inc.
v. Pearle Vision Ctr., Inc., 218 USPQ 1022 (TTAB 1983),
applicant applied for the mark PEARLE VISION CENTER and
design and had previously registered the mark VISION CENTER
for essentially the same services. The Board applied the
Morehouse defense stating that “opposer’s claim of damage
relates only to the VISION CENTER portion of applicant’s
mark and not to the PEARLE and design portions of the mark.”
Place for Vision, 218 USPQ at 1023. The facts of that case
are the reverse of those before us, inasmuch as the mark in
the application had additional matter whereas here it is the
marks in the registration that contain additional matter and
the mark in the application is only the typed mark with all
other matter stripped away. In National Bakers Services,
Inc. v. Hain Pure Food Co., Inc., 207 USPQ 701 (TTAB 1980),
the Board found applicant’s prior registered mark HOLLYWOOD
HEALTH FOODS to be “in essence the legal equivalent of
[HOLLYWOOD].” The prior registration in that case did not
include a design element.
Opposition No. 91168033
28
In view of the above, the opposer has proven its claim
of likelihood of confusion under Section 2(d) of the
Trademark Act.
Decision: The opposition is sustained, and
registration to applicant in Classes 35 and 36 is refused.