BSB Bank & Trust

Trademark Trial and Appeal Board

Dec 14, 1999

No. 75347040 (T.T.A.B. Dec. 14, 1999)

Paper No. 10
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re BSB Bank & Trust
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Serial No. 75/347,040
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Mark Levy of Salzman & Levy for BSB Bank & Trust
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney)
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Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
BSB Bank & Trust has filed, on August 26, 1997, an
application to register the mark shown below
for “banking services by phone.” Applicant alleges a date
of first use of 1995. Applicant disclaimed the term
“TelephoneTeller” and the pictorial representation of a
telephone.
Ser. No. 75/347040
2
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 used in connection with
its services, so resembles the mark shown below
which is registered for “financial services, namely,
banking services,”1 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register.
The Examining Attorney essentially takes the position
that the letters BSB are the dominant portion of both the
cited registered mark and applicant’s composite mark; that
applicant adopted registrant’s entire letter mark as a
portion of applicant’s mark; that the two marks, albeit
somewhat visually distinguishable, nonetheless create the
same overall commercial impression; that the respective
services are identical or very similar; that applicant’s
“banking services by phone” are encompassed within the

1 Registration No. 2,026,472, issued December 31, 1996. The
claimed date of first use is April 12, 1995.
Ser. No. 75/347040
3
cited registrant’s more general “banking services”; and
that in any event, applicant’s more specific banking
services could be seen by purchasers as a natural expansion
of a bank’s services.
Applicant contends that when the marks are considered
in their entireties, registrant’s mark is a stylized BSB
within a skewed box shape, whereas applicant’s mark is a
composite mark consisting of the letters BSB, along with
the compound noun ‘TelephneTeller,’ the design of a
telephone and a “prominent border” (applicant’s brief, p.
5); that the design elements of applicant’s mark are
significant; and that the marks do not have the same sound
or appearance. Applicant also argues that the letters BSB
are not arbitrary, but rather are obvious acronyms based on
the respective trade names, Beneficial Savings Bank
(registrant’s name) and Binghamton Savings Bank2, and the
cited registration is therefore entitled to a narrow scope
of protection; that customers of banks are sophisticated in
choosing a banking service; that there is no evidence that
registrant provides telephone banking services or that it
has the technological capability to do so; that applicant’s
intent in adopting its mark was not based on an attempt to

2 Applicant’s name is BSB Bank & Trust, but applicant is located
in Binghamton, New York.
Ser. No. 75/347040
4
derive benefits from the reputation of the registrant’s
mark; and that applicant is not aware of any instances of
actual confusion.
Turning first to a consideration of the respective
services, we agree with the Examining Attorney that the
respective services, banking services and banking services
by phone, are virtually identical or very closely related.
Certainly applicant’s more specific services are
encompassed within the broader identification in the cited
registration. Likewise, the channels of trade and the
prospective purchasers of both services are the same or
overlapping, and include all the normal channels of trade
to all the usual classes of purchasers for such services.
See Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Turning to a consideration of the marks, while the
marks have visual differences, both marks include the
identical letters BSB.
It is generally accepted that when a composite mark
incorporates the arbitrary mark of another for closely
related goods or services, the addition of suggestive or
descriptive words or other matter is generally insufficient
to avoid a likelihood of confusion as to source. See The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
Ser. No. 75/347040
5
USPQ 419 (CCPA 1977). In fact, if one incorporates the
arbitrary registered mark of another into a composite mark,
even the inclusion of a significant nonsuggestive element
in the composite mark does not necessarily preclude the
marks from being so similar as to cause a likelihood of
confusion. See Coca-Cola Bottling Company of Memphis,
Tennessee, Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105 (CCPA 1975); and In re West Point-
Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972).
In the case now before us, applicant’s mark encompasses
registrant’s letter mark BSB, and applicant’s addition of
descriptive terms and other matter does not alleviate the
likelihood of confusion.
The portion utilized in calling for the services, in
this case the letters BSB, is most likely to be impressed
in the purchaser’s memory and to serve as the indication of
origin. See Consumers Building Marts, Inc. v. Mr. Panel,
Inc., 196 USPQ 510 (TTAB 1977).
Applicant’s argument that the letters are acronyms
from the respective trade names and are not arbitrary is
not persuasive. There is no evidence that the combination
of the letters BSB, even if derived from the initial
letters of different names, have any special meaning, aside
from trademark significance, to purchasers of the involved
Ser. No. 75/347040
6
services. BSB is unpronounceable except as the separate
letters, and would be more difficult to remember, and thus,
more susceptible of confusion, or mistake. See Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (confusion found likely in
contemporaneous use of TMM and TMS on computer software).
See also, Edison Brothers Stores, Inc. v. Brutting E.B.
Sport-International GmbH, 230 USPQ 530 (TTAB 1986)
(confusion found likely in contemporaneous use of EB and
design for all purpose gym bags and certain clothing items
and EBS and EBS in stylized lettering for shoes); and
Chemetron Corp. v. N.R.G. Fuels Corp., 157 USPQ 111 (TTAB
1968) (confusion found likely in contemporaneous use of NCG
for compressed gases and NRG for liquefied petroleum gas,
etc.).
To whatever extent purchasers notice the differences
in the marks, they may believe that applicant’s mark is a
revised version of registrant’s mark, now used in
connection with telephone banking services.
According to applicant, there have been no instances
of actual confusion. However, the test is likelihood of
confusion, not actual confusion. See In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984).
Ser. No. 75/347040
7
Based on the identity of the letters BSB in both
marks, the essential identity of the services, and the
identity of the trade channels and purchasers, we find that
there is a likelihood that the purchasing public will be
confused by applicant’s use of BSB TELEPHONETELLER and
design as a mark for banking services by phone. See In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board