Chemical Financial Corp.v.200 Kelsey Associates, LLC

Trademark Trial and Appeal Board

Mar 6, 2006

No. 91163169 (T.T.A.B. Mar. 6, 2006)

Taylor Mailed: March 6, 2006

Opposition No. 91163169

Chemical Financial Corp.

v.

200 Kelsey Associates, LLC

Before Rogers, Walsh and Zervas,
Administrative Trademark Judges.

By the Board:
200 Kelsey Associates, LLC ("applicant") seeks to register
the mark CHEMICAL BANK for "banking services; financial
services, namely, financial analysis and consultation,
financial services in the field of money lending, money
lending, investment fund transfer and transaction services."1
Chemical Financial Corp. ("opposer") has opposed
registration on the grounds of priority of use and likelihood
of confusion. Specifically, opposer alleges that it and/or its
subsidiary companies have been in the banking business since
1917; that opposer and its subsidiaries have been using various
names and marks containing the term “Chemical” for banking and
financial services since 1917 and the name and mark CHEMICAL
BANK for over 40 years; that opposer is the owner of an

1 Application Serial No. 76567833, filed December 31, 2003, and
alleging a bona fide intent to use the mark in commerce. The term
“Bank” has been disclaimed.
United States Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91163169
2
application for the mark CHEMICAL BANK2; that there is no issue
as to priority because the date of applicant’s intent to use
application is subsequent to opposer’s first use of the
CHEMICAL BANK mark and name and its other names and marks using
the term “Chemical”; that applicant’s mark is identical to
opposer’s mark and applicant seeks to register its mark for
most of the same services in connection with which opposer uses
its mark; and therefore, applicant's CHEMICAL BANK mark so
resembles opposer's previously used CHEMICAL BANK mark, and
related marks and names, as to be likely, when applied to
applicant's services, to cause confusion, mistake or deception
and be a source of damage to opposer.
Applicant, in its answer, has denied the essential
allegations of the notice of opposition. Applicant has also
pleaded the affirmative defenses of waiver, estoppel and
acquiescence.
This case now comes up for consideration of opposer's
motion for summary judgment on the issues of priority of use
and likelihood of confusion. In support of its motion, opposer
argues that there are no genuine issues of material fact and
that it is entitled to summary judgment as a matter of law.
More specifically, opposer argues that it has decades of prior
use resulting in undisputed priority; that applicant has

2 Application Serial No. 78522836, filed November 24, 2004 for
the mark CHEMICAL BANK for “banking services; financial services,
namely investment management and advice and investment fund transfer
and transaction services; trust services, namely investment and
trust company services; and insurance agency services” and reciting
October 6, 1964 as the date of first use and the date of first use
of the mark in commerce. The term “Bank” has been disclaimed.

Opposition No. 91163169
3
admitted that it has made no use of the mark, at least as of
April 21, 2005; that the parties use their marks, in part, on
identical services; and that the respective marks are
identical.
As evidentiary support for its motion, opposer has
submitted the declaration of its president and CEO, David B.
Ramaker. Mr. Ramaker states, in relevant part that:

3. In 1962, the name of Chemical State Savings Bank was
changed to “Chemical Bank and Trust” and that company
began to use simply the service mark CHEMICAL BANK.

4. … Opposer and its subsidiaries now have customers in
all 50 states and, since 2000, they have had over $3
billion in assets.

5. Opposer and its subsidiaries offer a full array of
banking services as well as financial services including
investment management and advice and investment fund
transfer and transaction services. … Opposer and its
subsidiaries have been using various names and marks
containing the dominant word “Chemical” for these
banking and financial services since 1917, including
using the name and mark CHEMICAL BANK for over 40 years.

6. Opposer and its subsidiaries have continuously used
their CHEMICAL BANK mark from its adoption with the name
change from 1962 to the present.
Mr. Ramaker also attests to the history of opposer and
opposer’s and opposer’s subsidiaries’ use of names and marks
including the term “Chemical” since 1917. Mr. Ramaker
introduces related exhibits, including: (1) a copy of an
advertisement that appeared in the Midland Daily News newspaper
in 1962 announcing the Chemical State Savings Bank change of
name to Chemical Bank and Trust Company, including the slogan
“Just say ‘Chemical Bank’” (Exhibit C to the Ramaker
Declaration); (2) a copy of an article that appeared in the Bay
Opposition No. 91163169
4
City Times newspaper on April 13, 1967 with the headline
“Chemical Bank Plans Building” (Exhibit D to the Ramaker
Declaration); (3) a copy of an article from the Midland Daily
News newspaper that appeared on March 15, 1967 with the
headline “Coin display at two Chemical Bank offices” (Exhibit E
to the Ramaker Declaration); (4) a copy of an advertisement for
“Chemical Bank” from the Alma Reminder publication that
appeared on March 31. [sic] 1971 (Exhibit F to the Ramaker
Declaration); (5) a copy of an advertisement for “Chemical
Bank” that appeared in the Midland Daily News on September 8,
1971; (Exhibit G to the Ramaker Declaration); (6)copies of
advertisements in which it or its subsidiaries used the
Chemical Bank mark appearing in various publications from 1995
through 2000 (Exhibit H to the Ramaker Declaration); and (7)
copies of advertising material featuring the CHEMICAL BANK mark
used by opposer in 2005 (Exhibit I to the Ramaker Declaration).
Opposer has also submitted applicant’s responses and objections
to opposer’s first set of admissions showing that applicant has
admitted no use of its CHEMICAL BANK mark as of April 21, 2005.
Applicant has opposed the motion arguing that summary
judgment is not appropriate in this case because genuine issues
of material fact exist with respect to several DuPont3 factors,
i.e., the similarity of the marks, the scope of protection to
be afforded the pleaded marks, the strength of the pleaded
marks and the sophistication of the purchasers. More
specifically, applicant argues that opposer has introduced

3 In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 91163169
5
scant evidence of the CHEMICAL BANK mark standing alone; that
opposer has used the marks CHEMICAL BANK AND TRUST COMPANY,
CHEMICAL BANK SHORELINE and CHEMICAL BANK WEST, among other
names, for its commercial banking operation within the state of
Michigan and, thus, the proper comparison of the parties’ marks
should include a comparison of all of the various iterations
used by opposer over the years. Applicant further argues that
the record does not support opposer’s assertion that its mark
is strong and well established because (1) opposer has never
operated a bank under the exact mark “Chemical Bank” and
opposer has presented only scant evidence of advertisements
depicting the exact mark; (2) while opposer claims to have
customers in all fifty states, the record indicates that
opposer’s banks are located exclusively in the state of
Michigan and that this regional presence militates against a
finding that opposer’s marks are famous or strong; and (3)
opposer has not stated how much it spends annually to market,
advertise and promote its banking operations.
Applicant also argues that for more than 100 years a
third-party, Chemical Banking Corporation, used the name
CHEMICAL BANK in connection with banking and financial services
and that opposer co-existed with CHEMICAL BANKING CORPORATION
until 1996, i.e., when the third-party use of CHEMICAL BANK
ceased. Applicant additionally argues that because the
customers of each party’s banking and financial services are
likely to be highly sophisticated, they are likely to
Opposition No. 91163169
6
appreciate and understand the difference between opposer’s and
applicant’s banking operations.
Applicant has supported its position with the declaration
of one of its attorneys, Edmund J. Ferdinand III, introducing:
(1) a copy of opposer’s 2003 Annual Report to Shareholders
showing no use in the report of the exact CHEMICAL BANK mark;
(2) a copy of advertising produced by opposer showing opposer’s
use of its full name, i.e., Chemical Bank and Trust Company;
(3) copies of pages from JP Morgan Chase showing opposer’s
company size; (4) copies of Internet web cites showing prior
use of the Chemical Bank mark by a third party; (5) printouts
from the United States Patent and Trademark Office’s TESS data
base of dead third-party registrations for the mark, CHEMICAL
BANK; and (6) copies of an exchange of correspondence between
the now defunct Chemical Bank and opposer primarily to show
that in 1988 opposer did not operate outside of the state of
Michigan.
In reply, opposer contends that applicant has pointed to
no facts in dispute and did not dispute any evidence.
Particularly, opposer argues that applicant did not dispute the
sworn declaration testimony of opposer’s President and CEO,
David Ramaker, that opposer has used the CHEMICAL BANK mark for
over 40 years; and that applicant failed to explain why opposer
does not have rights in the mark CHEMICAL BANK simply because
opposer may also have rights in three variations of the mark.
Opposer also argues that its mark is not weak because the
dominant portion of the mark is “Chemical,” a term that is
Opposition No. 91163169
7
arbitrary when applied to banking and financial services. As
regards applicant’s assertion of third-party use of the
Chemical Bank mark, opposer argues that an abandoned mark does
not constitute significant third-party use, and that such
former third-party use is irrelevant to this proceeding.
Opposer further argues that even if the concurrent use of the
CHEMICAL BANK mark by opposer and a single third party weakened
opposer’s CHEMICAL BANK mark, opposer’s CHEMICAL BANK mark is
entitled to protection.
As regards the sophistication of the customers, opposer
argues that the average banking customer is not so highly
sophisticated to distinguish between the parties’ asserted
marks. For these reasons, opposer maintains that it is
entitled to summary judgment.
As has often been stated, the purpose of summary judgment
is one of judicial economy, that is, to save the time and
expense of a useless trial where no genuine issue of material
fact remains and more evidence than is already available in
connection with the summary judgment motion could not
reasonably be expected to change the result. Pure Gold, Inc.
v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir.
1984). The burden in a motion for summary judgment is on the
moving party to establish prima facie that there is no genuine
issue of material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c); and Celotex Corp. v.
Catrett, 477 U.S. 317, 106 S.Ct. 2548 (1986).
Opposition No. 91163169
8
Turning first to the issue of priority of use, applicant
states in footnote 1 of its brief in opposition to the motion
for summary judgment, “[f]or purposes of this motion only,
Applicant will not challenge opposer’s claim to priority of
rights over the CHEMICAL mark.” Accordingly, priority of use
is not in issue.4
Turning to the issue of likelihood of confusion, we find
that there are no genuine issues of material fact relating to
the issue of likelihood of confusion. Turning first to the
parties’ asserted marks, applicant’s applied for mark is
identical to one of opposer’s asserted marks, namely, CHEMICAL
BANK. Although applicant argues that opposer has never
operated a bank under the CHEMICAL BANK mark “standing alone,”
we find that opposer has offered evidence showing continuous
use of the CHEMICAL BANK mark in the promotion of its banking
and financial services. (See Paragraphs 3, 5 and 6 of the
Ramaker Declaration and Exhibits C, D, E, F, G, H and I to the
Ramaker Declaration.) Indeed, applicant questioned neither the
veracity nor the authenticity of the Ramaker declaration or the
attached exhibits. Instead, applicant takes issue with the
quantity of the materials showing use of the CHEMICAL BANK

4 Even if priority were at issue, we find that opposer has
established, through the Ramaker declaration, use of CHEMICAL BANK
as part of its trade name and as a trademark since 1962. The
earliest date on which applicant may rely, in the absence of
evidence to prove otherwise, is the filing date of its involved
intent to use application, i.e., December 31, 2003. See Zirco Corp.
v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
Moreover, applicant, in its responses to opposer’s first request for
admissions, admits that as of April 21, 2005, it had made no use of
the involved CHEMICAL BANK mark.

Opposition No. 91163169
9
mark. The evidentiary sampling submitted by opposer is
sufficient to show opposer’s use of the CHEMICAL BANK mark
“standing alone.”
Further, we are not persuaded by applicant’s contention
that use by opposer and/or its subsidiaries of the marks
CHEMICAL BANK AND TRUST COMPANY, CHEMICAL BANK SHORELINE AND
CHEMICAL BANK WEST, among other trademarks and names for its
commercial banking operations, diminishes the significance of
opposer’s asserted CHEMICAL BANK mark. Rather, and contrary to
applicant’s contention, we find that use by opposer of
different marks and names containing the term “Chemical Bank”
simply reinforces public recognition of the CHEMICAL BANK mark
by opposer and its subsidiaries.
Applicant attempts to argue that significant third-party
use of the CHEMICAL BANK mark for banking and financial
services weakens opposer’s asserted mark. We find, however,
the admittedly abandoned third-party use unpersuasive in this
regard. Moreover, any concurrent use of the CHEMICAL BANK mark
by opposer and a single thirty-party entity conferred no rights
upon applicant to concurrent use of the CHEMICAL BANK mark.
As regards the parties' services, it is undisputed that
they are identical or closely related and complementary in
nature, all being banking and financial services. We therefore
find that there is no genuine issue of material fact that the
services provided by the parties are the same or sufficiently
related that when sold under the involved marks, confusion is
likely.
Opposition No. 91163169
10
Applicant also argues that banking customers are so
sophisticated that they could distinguish between the parties’
marks. The determination of whether a likelihood of confusion
exists is made by evaluating and balancing the pertinent du
Pont evidentiary factors. See In re E. I. du Pont de Nemours,
supra. Not every factor is equally important to the likelihood
of confusion analysis in every case. In this case, even if the
parties’ banking customers were considered sophisticated, the
parties’ identical marks and virtually identical services are
sufficient to satisfy the DuPont analysis.
In sum, we find that opposer has carried its burden of
proving that no genuine issues of material fact remain as to
the issues of priority of use and likelihood of confusion and
that opposer is entitled to judgment as a matter of law. In
view thereof, opposer's motion for summary judgment is granted.
The opposition is sustained and registration by applicant of
application Serial No. 76567833 is refused.
***