Charter One Bank

Trademark Trial and Appeal Board

Nov 8, 1999

No. 75048394 (T.T.A.B. Nov. 8, 1999)

Hearing: Paper No. 17
May 12, 1999 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 8, 99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Charter One Bank
________

Serial No. 75/048,394
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Robert V. Vickers and Scott McBain of Vickers, Daniels &
Young for applicant.

Tina L. Snapp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Simms, Quinn and Hairston, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Charter One Bank to
register the mark shown below

Ser No. 75/048,394
for “banking services.”1 The application includes a claim
of acquired distinctiveness under Section 2(f) of the
Trademark Act as to “First Federal of Michigan” and a
disclaimer of the representation of the outline of the
United States.
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously
registered mark FIRST OF MICHIGAN for “financial services,
namely securities brokerage services and investment banking
services”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
Applicant’s attorney and the Examining Attorney attended an
oral hearing before the Board.

1 Application Serial No. 75/048,394, filed January 25, 1996,
based on a bona fide intention to use the mark in commerce.
Applicant subsequently filed an amendment to allege use setting
forth dates of first use of October 31, 1995. The application
includes a statement of ownership of Registration No. 1,670,497
for the mark shown below

for “banking services.”
2 Registration No. 2,000,997, issued September 17, 1996, pursuant
to the provisions of Section 2(f).
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Ser No. 75/048,394
Applicant contends that the marks and services are
dissimilar, that the relevant purchasers use a high degree
of care, that there are a number of similar third-party
registrations of marks, which include the term “First” with
a geographical designation, in the financial services
industry, and that there has been no actual confusion
between registrant’s mark and applicant’s FIRST FEDERAL OF
MICHIGAN mark despite over sixteen years of contemporaneous
use in the same city and state.3
The Examining Attorney maintains that the marks are
confusingly similar in overall commercial impressions and
that the services are closely related. In connection with
the refusal, the Examining Attorney submitted third-party
registrations which, according to the Examining Attorney,
show that third parties have registered marks which include
the term “Federal” for brokerage services.4 In addition,
excerpts retrieved from the NEXIS database and third-party
registrations have been relied upon to support the
Examining Attorney’s contention that the same entities

3 The claim of no actual confusion is not supported by a
declaration.
4 Applicant, in its appeal brief, claims that the registrations
attached to the April 28, 1998 Office action are not of record
since the notice of appeal was filed on April 9, 1998. What
applicant overlooks, however, is that the Office action dated
April 28, 1998, was in response to a request for reconsideration.
The registrations properly form part of the record on appeal, and
they have been considered in making our decision.
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Ser No. 75/048,394
render both banking services and securities brokerage
services under the same mark.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Food, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the marks, although there are
similarities between the two, we find that there are
sufficient differences between registrant’s FIRST OF
MICHIGAN mark and applicant’s FIRST FEDERAL OF MICHIGAN and
design mark. The addition of the word “FEDERAL” in
applicant’s mark (to form “FIRST FEDERAL” in large letters
on one line above “OF MICHIGAN” in smaller letters on a
line below), when combined with the prominent design
feature (which includes additional wording), results in a
mark that, when considered in its entirety, is different in
appearance from registrant’s mark. Further, the marks
convey somewhat different connotations. Registrant’s mark
connotes that it is the number one bank of Michigan,
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Ser No. 75/048,394
whereas applicant’s mark, employing the relatively common
bank designation “FIRST FEDERAL” with a geographic term,
merely connotes a banking institution located in Michigan.
In comparing the marks, we are cognizant of the third-
party registrations that are of record. These several
registrations show that marks in the financial services
sector employ “FIRST,” “FEDERAL” or “FIRST FEDERAL,”
coupled with a geographic term. Although third-party
registrations are of little weight in determining
likelihood of confusion cases, the registrations show that
this common construction has in the past appealed to others
in the financial services sector as an appropriate
designation for a mark or part of a mark. This crowded
field is hardly surprising, and simply adds credence to our
sense that the mere inclusion of these terms in marks may
not, in and of themselves, be a sufficient basis for a
finding of likelihood of confusion where the marks are
otherwise distinguishable. Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1431 (TTAB
1993). As pointed out above, we find that the marks are
otherwise distinguishable.
Insofar as the services are concerned, the record
shows the relatedness of banking, investment banking and
securities brokerage services. In recent years, as
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Ser No. 75/048,394
suggested by the NEXIS articles, the financial services
sector has undergone significant changes, and single
entities now render a wide range of financial services. In
this connection, we also note the third-party registrations
of record which have probative value to the extent that
they suggest that the listed services are of a type which
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Having said the above, we hasten to add, however, that
applicant’s banking services and registrant’s securities
brokerage and investment banking services are specifically
different. We find this to be especially the situation
relative to “investment banking,” the definition of which
we take judicial notice: “buying and selling large blocks
of securities (as new issues) and raising funds for capital
expansion.” Webster’s Third New International Dictionary
(unabridged ed. 1976).
Another factor in applicant’s favor is the relatively
sophisticated purchasing decision involved in choosing
among banking and investment services. Although we
recognize that the knowledge of financial services
customers runs the gamut, our primary reviewing court has
stated that “banking is...unlike other business” and that
some customers “select their bank after long and careful
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Ser No. 75/048,394
consideration.” Amalgamated Bank of New York v.
Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d
1305, 1308 (Fed. Cir. 1988). It is reasonable to find that
banking customers, by and large, know with whom they are
dealing. This especially would be the case with respect to
investment banking, one of the services rendered by
registrant.
In sum, the cumulative differences between the marks
and the services rendered thereunder, coupled with the
relative sophistication involved in making banking and
investing decisions, convince us that purchasers are not
likely to be confused.
Decision: The refusal to register is reversed.

R. L. Simms

T. J. Quinn

P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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Ser No. 75/048,394

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