Worldwide Financial Services, Inc.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 75048341 (T.T.A.B. Sep. 29, 1998)

Paper No. 11
GDH/cj
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB SEPT 29,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Worldwide Financial Services, Inc.
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Serial No. 75/048,341
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Andrew R. Basile of Young & Basile for Worldwide Financial
Services, Inc.
Andrew A. Roppel, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
_______
Before Seeherman, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Worldwide Financial Services, Inc. has filed an
application to register the mark "WORLDWIDE SAYS YE$$, WHEN THE
BANKS SAY NO" for "mortgage and home equity loan services;
mortgage brokerage services; first and second mortgage lending;
equity financing; mortgage banking and real estate brokerage
services."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 75/048,341, filed on January 25, 1996, which alleges a bona
fide intention to use the mark in commerce.
Ser. No. 75/048,341
2
applicant’s mark, when applied to its services, so resembles the
mark "WHEN YOUR BANK SAYS NO, CHAMPION SAYS YES," which is
registered for "mortgage and home equity loan services,"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, we observe that they are identical in part ("mortgage
and home equity loan services") and are otherwise closely
related. Indeed, applicant "acknowledges that some of the
services it is providing appear to be the same as [those of] the
Registrant." The Examining Attorney, moreover, points out that
"the remainder of the applicant’s services are closely related to
the registrant’s services because they all involve real estate
finance and would therefore travel through similar trade channels
and would be targeted to similar types of consumers." Applicant,
we note, does not take issue with such contention. Consequently,
if mortgage and home equity loan services, and other closely
related real estate financial services, were to be offered under
the same or substantially similar marks, confusion as to the
source or sponsorship thereof would be likely to occur.
Considering, then, the respective marks, the Examining
Attorney, citing ECI Division of E Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980), relies upon

2 Reg. No. 1,955,488, issued on February 13, 1996, which sets forth
dates of first use of January 8, 1983.
Ser. No. 75/048,341
3
the familiar principle that, "[i]f the goods or services of the
respective parties are closely related, the degree of similarity
between marks required to support a finding of likelihood of
confusion is not as great as would apply with diverse goods or
services." The Examining Attorney, while conceding that the
marks "WORLDWIDE SAYS YE$$, WHEN THE BANKS SAY NO" and "WHEN YOUR
BANK SAYS NO, CHAMPION SAYS YES" obviously "have some optical and
aural dissimilarity," contends that the marks in their entireties
nevertheless "create the same commercial impression because they
have the same meaning and connotation." Such similarity, the
Examining Attorney insists, is sufficient to support a finding of
a likelihood of confusion.
In particular, the Examining Attorney maintains that:
The meaning of the marks is created by
the juxtaposition of two distinct phrases.
One phrase is "we say yes" while the other
phrase is "when the bank(s) say(s) no." It
is these two phrases which are transposed in
the respective marks. Regardless of the
transposition, the meaning conveyed by each
mark is identical, namely, that after one
goes to a bank and they say no, one will get
a yes from the service provider.
Thus, notwithstanding that applicant’s mark contains both the
word "WORLDWIDE" in place of the word "CHAMPION" and the stylized
term "YE$$" instead of just the word "YES" alone, and that, in
relation to providing mortgage and home equity loans, the notion
of saying "yes" or "no" is a fairly common one, the Examining
Attorney insists that:
The examining attorney does not assert
that the common wording--"yes" and "no"--in
the marks creates a similar commercial
impression. The similarity goes beyond the
commonality of these two words alone. The
Ser. No. 75/048,341
4
marks convey the same general idea--the
trademark [sic, should be service mark]
identifies a source that will say "yes" (to
your loan) when the bank (you asked) says
"no." The marks stimulate the same mental
reaction--the consumer will picture the
bank’s disapproval followed by the approval
by the service provider. By the applicant’s
own admission, the "idea [conveyed by the
marks] is [sic, may be] the same--someone
loaning money when some[one] else will not."
In view thereof, and since, due to the purchasing
public’s fallibility of memory and consequent lack of perfect
recall, the recollection retained by the average consumer is
normally that of a general rather than a specific impression of
service marks, the Examining Attorney argues that confusion is
likely and that any doubt in this regard must be resolved in
favor of the registrant. Furthermore, as indicated in the final
refusal, the Examining Attorney urges in this regard that:
[Otherwise,] any applicant may simply
substitute its tradename [sic] in the place
of a registrant’s tradename [sic],
appropriating the remainder of the wording
from the registrant’s mark .... This ....
would lead to the following possibilities:
EVERYBODY NEED A LITTLE KFC and EVERYBODY
NEEDS A LITTLE POPEYE’S; THIS BUD’S FOR YOU
and THIS COORS[’] FOR YOU; [and] AMERICAN
EXPRESS: DON’T LEAVE HOME WITHOUT IT and
VISA: DON’T LEAVE HOME WITHOUT IT.
Applicant, on the other hand, insists that confusion is
not likely. Specifically, applicant asserts that while the
Examining Attorney "admits [that] the marks have optical and
aural dissimilarity," the Examining Attorney’s analysis
essentially "claims [that the] marks really are ’WE SAY YES, WHEN
BANKS SAY NO," thereby "disregarding the distinguishing and
unrelated other elements in the marks, namely that ’WE’ is
Ser. No. 75/048,341
5
’CHAMPION’ in one and ’WORLDWIDE’ in the other." As applicant
points out:
These two terms have nothing in common and
are clearly distinguishable from each other.
No one would confuse these words.
Applicant, in consequence thereof, contends that when compared in
their entireties, the respective marks look and sound very
different; they are not merely transpositions of each other; and
they are not so similar as to be likely to cause confusion since
"[t]he overall commercial impression of these marks is not the
same at all."
Moreover, while acknowledging that "[t]he idea may be
the same--someone loaning money when some[one] else will not,"
applicant points out that:
The [respective] marks, however, clearly set
forth who will be the grantor. In the
mortgage and banking field, that is what
every bank and mortgage company is doing--
lending money in some capacity. Therefore,
the purchasers are cognizant of the use of
these terms in marks ("saying yes/no") and
the marks containing these terms are not as
strong. A unique term identifying a party
distinguishes the mark from others. ....
When a party is attempting to get a loan,
saying "YES" and "NO" would be a fairly
common thought to deal with and would not be
viewed as source identifying. The terms
"WORLDWIDE" or "CHAMPION" on the other hand
would be.
In view thereof, and in light of the stylized presentation of the
term "YE$$"--with double dollar signs--in its mark, applicant
insists that "[i]t would not be reasonable for a purchaser to
confuse these marks and believe that the same entity was the
source for both services."
Ser. No. 75/048,341
6
Lastly, with respect to the Examining Attorney’s
assertion in his final refusal that applicant has merely
substituted its name "WORLDWIDE" for registrant’s name "CHAMPION"
in an effort to appropriate registrant’s mark as its own,
applicant urges that:
[T]his is not what is really taking place
here. The example EVERYONE NEEDS A LITTLE
POPEYE’S becomes unconfusing if it is
POPEYE’S - EVERYONE NEEDS IT or FOR YOU - A
COORS or HAVE VISA WHEN YOU LEAVE HOME.
These marks are not now confusing to the
original sayings and would not be likely to
be associated as to source. Neither will the
Applicant’s mark, WORLDWIDE SAYS YE$$, WHEN
THE BANKS SAY NO and [Registrant’s mark,]
WHEN YOUR BANK SAYS NO, CHAMPION SAYS YES.
We are constrained to agree with applicant that, absent
such considerations as a showing that registrant’s mark is famous
or at least well known, contemporaneous use of the respective
marks, even in connection with the identical services of
providing mortgage and home equity loans, is not likely to cause
confusion. Irrespective of the double dollar sign stylization in
the term "YE$$ in applicant’s mark, which underscores the concept
of an approval of a loan of money, the marks "WORLDWIDE SAYS
YE$$, WHEN THE BANKS SAY NO" and "WHEN YOUR BANK SAYS NO,
CHAMPION SAYS YES" both convey the common, trite and highly
suggestive notion of a finance or mortgage company being willing
to lend money to less credit worthy customers than a commercial
bank or banks would do. As applicant persuasively argues, when a
consumer is attempting to secure a loan, whether from a bank or
from a finance or mortgage company, the concept of being told
"YES’ or "NO" as an expression, respectively, of approval or
Ser. No. 75/048,341
7
disapproval of the loan application is "a fairly common thought
to deal with and would not be viewed as source identifying," as
would be the fanciful, if not arbitrary, terms "WORLDWIDE" and
"CHAMPION." Such terms, as is beyond dispute, individually have
absolutely nothing in common, in terms of sound, appearance,
connotation or commercial impression, with each other. When
incorporated in the respective marks, such terms serve to
distinguish those marks, when considered in their entireties,
inasmuch as the primary source-identifying elements therein are
the terms "WORLDWIDE" and "CHAMPION".
We also concur with applicant that this is not a case
in which an applicant has usurped a registrant’s slogan merely by
substituting its trade name or mark for the registrant’s trade
name or mark. Here, although the notion suggested by both
slogans is quite similar, the transposition of the phrases
comprising such notion is sufficient, given the complete
dissimilarity in the terms "WORLDWIDE" and "CHAMPION," to render
the marks "WORLDWIDE SAYS YE$$, WHEN THE BANKS SAY NO" and "WHEN
YOUR BANK SAYS NO, CHAMPION SAYS YES" distinguishable on the
whole. Mortgage and home equity loan services, along with such
closely related services as mortgage banking, first and second
mortgage lending, equity financing, and real estate brokerage
services, are all services which are typically considered and
purchased, even by ordinary consumers, with deliberation and the
exercise of greater than average care, given the amount of money
being lent and the equity or other assets being pledged to secure
the transaction. Under such circumstances, borrowers are likely
Ser. No. 75/048,341
8
to know the lender with whom they are dealing and would not be
prone to being confused, as to the source or sponsorship of the
respective services, by the marks at issue. Finally, even if
applicant’s mark "WORLDWIDE SAYS YE$$, WHEN THE BANKS SAY NO" may
happen to bring to mind registrant’s mark "WHEN YOUR BANK SAYS
NO, CHAMPION SAYS YES," or the general notion of approval by one
loan provider after disapproval by another which is conveyed by
that mark, such momentary association is not indicative that the
public is likely to be confused by the respective marks, given
the glaring difference in their source-identifying terms. See,
e.g., Jacobs v. International Multifoods Corp., 668 F.2d 1234,
212 USPQ 641, 642 (CCPA 1982) and In re P. Ferrero & C.S.p.A, 479
F.2d 1395, 178 USPQ 167, 168 (CCPA 1973).
Decision: The refusal under Section 2(d) is reversed.
E. J. Seeherman
G. D. Hohein
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board