Citizens Financial Group, Inc.

Trademark Trial and Appeal Board

Sep 26, 2006

No. 78451347 (T.T.A.B. Sep. 26, 2006)

Mailed:
September 26, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Citizens Financial Group, Inc.
________

Serial No. 78451347
_______

Robert M. O’Connell, Jr. of Goodwin Procter LLP for
Citizens Financial Group, Inc.

Ronald G. McMorrow, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 15, 2004, Citizens Financial Group, Inc.
(“applicant”) filed an application to register the mark
CITIZENS CIRCLE GOLD ACCOUNT on the Principal Register in
standard-character form for services identified as “banking
services” in International Class 36. Applicant has
disclaimed “ACCOUNT.” Applicant claims first use of the
mark anywhere on April 15, 1996 and first use of the mark
in commerce on April 19, 1996. Applicant claimed ownership
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78451347
2
of prior registrations for marks which include CITIZENS
BANK and CITIZENS CIRCLE, for banking services in
International Class 36.
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with Reg. No. 1270229, owned by
Wells Fargo & Company, for the mark GOLD ACCOUNT in
standard-character form for services identified as “banking
services” in International Class 36. The registration
issued on March 13, 1984 and has been renewed. The
registration states a date of first use anywhere and first
use of the mark in commerce on January 22, 1973. The
registration also includes a disclaimer of “ACCOUNT.”
Applicant responded to the refusal; the Examining
Attorney made the refusal final; and applicant filed this
appeal. Applicant and the Examining Attorney have filed
briefs. We reverse.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office . . . as to be likely,
when used on or in connection with the goods [services] of
the applicant, to cause confusion . . .” Id. The opinion
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Ser No. 78451347
3
USPQ 563, 567 (CCPA 1977) sets forth the factors we may
consider in determining likelihood of confusion. Below we
will discuss all factors as to which applicant or the
Examining Attorney argued or presented evidence.
Comparison of the Services
The services identified in both the application and
cited registration are “banking services.” In fact, there
is no argument in this case regarding the services. For
the purposes of our consideration of the case we have
assumed that the services, and the channels of trade for
the services, of applicant and registrant are identical.
Comparison of the Marks
To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In this case, we note, in particular, that it is
appropriate to accord greater importance to the more
distinctive elements in the marks than to the less
distinctive elements in determining whether the marks are
similar. The Court of Appeals for the Federal Circuit
observed, “. . . in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
Ser No. 78451347
4
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
Applicant argues that the Board’s decisions in a
number of earlier cases, most notably, the recent decision
in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313 (TTAB 2005) dictate the conclusion that the marks in
this case are not similar, and furthermore that there is no
likelihood of confusion. The Examining Attorney, on the
other hand, argues that applicant has simply added its
house mark to the registered mark and that the addition is
insufficient to distinguish the marks. The Examining
Attorney also argues that Knight Textile and other cases
discussed by applicant do not apply here.
In a request for reconsideration applicant provided a
substantial body of evidence in support of its position.
While the Knight Textile case sets the evidentiary bar
quite high for applicants in cases such as this, we believe
(1) that the facts of this case track the Knight Textile
facts in nearly every respect and (2) that the evidence
Ser No. 78451347
5
applicant has presented here meets and even exceeds the
evidentiary showing in Knight Textile. For completeness,
we acknowledge that the other cases applicant relies on are
also generally supportive of its position. See In re
Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) and
Kayser-Roth Corp. v. Morris & Co., Inc., 164 USPQ 153 (TTAB
1969). See also Steve’s Ice Cream v. Steve’s Famous Hot
Dogs, 3 USPQ2d 1477 (TTAB 1987).
In Knight Textile the applicant sought to register
NORTON MCNAUGHTON ESSENTIALS for various items of “ladies
sportswear.” Knight Textile, 75 USPQ2d at 1314. Knight
Textile Corporation opposed registration based on its
registration for the mark ESSENTIALS for various items of
“women’s clothing.” Id. at 1314. In the opinion the Board
found that the applicant’s goods were “in part identical to
and otherwise highly similar to the goods in opposer’s
pleaded registration.” Id. at 1315 (emphasis provided).
In Knight Textile, the Board also concludes, as
follows, with regard to the comparison of the marks, “we
find that the parties’ marks are dissimilar rather than
similar when viewed in their entireties in terms of
appearance, sound connotation and overall commercial
impression.” Id. at 1315. The Board explains further,
Ser No. 78451347
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The marks obviously are similar in terms of sight,
sound and meaning to the extent they both consist of
or include ESSENTIALS. Just as obviously the marks
are dissimilar in sight, sound and meaning to the
extent that applicant’s mark, but not opposer’s,
includes and begins with the words NORTON MCNAUGHTON,
which would be perceived to be applicant’s house mark.
In terms of overall commercial impression, we find
that although the word ESSENTIALS is the entirety of
the commercial impression created by opposer’s mark,
in applicant’s mark it contributes relatively less to
the commercial impression than does the house mark
NORTON MCNAUGHTON. This is because, as discussed more
fully infra, we find that the word ESSENTIALS is
highly suggestive as applied to the parties clothing
items and as it appears in both parties’ marks,
especially in applicant’s mark. See In re National
Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).

Id. at 1315
The Board observed further that, in the Knight Textile
case, the addition of the house mark, was sufficient to
distinguish the marks citing New England Fish Company v.
The Hervin Company, 511 F.2d 562, 184 USPQ 817 (CCPA 1974)
and similar cases, which reject a uniform rule in favor of
a case-by-case approach in assessing the effect of the
addition of a house mark in determining likelihood of
confusion.
In Knight Textile, the critical factual issue was the
strength or weakness of ESSENTIALS. In concluding that
ESSENTIALS was highly suggestive the Board relied primarily
on a dictionary definition for “essential-s” and “twenty-
three extant ESSENTIAL registrations on the register in the
Ser No. 78451347
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clothing field registered to twenty-one different owners.”
Knight Textile, 75 USPQ2d at 1316.
In this case applicant has not proffered and we need
not rely on a dictionary definition.1 Applicant has
provided more direct evidence of the significance of GOLD
ACCOUNT in the banking field, that is, evidence of actual
use of GOLD ACCOUNT by twelve distinct third-party banks in
relation to banking services. Specifically, with its
request for reconsideration, applicant provided excerpts
from Internet web pages showing each of these uses, and
applicant accurately describes each of the uses in its main
brief at pages 9-11. These banks include: Bank of
America; Zion Bank of Salt Lake; United Bank in Griffin,
Georgia; City National Bank of Florida; Walluka Bank,
Florida; Bank of Nashville; Community Bank N. A. in Dewitt,
New York; Bank of Astoria in Oregon; First Federal Bank in

1 We take judicial notice of a definition from the Dictionary of
Banking Terms (4th ed. 2000) for “gold card” which states, in
part, “Visa or MasterCard credit card with a minimum credit line
of $5,000 and frequently higher… Sometimes called a prestige card
or premium card… also the American Express Gold Card which
differs from bank issued cards.” We take judicial notice of this
dictionary definition under University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). This shows
either a highly suggestive or even descriptive meaning for “GOLD”
in a closely related field.

Ser No. 78451347
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Lexington, Kentucky; Sleepy Hollow Bank in New York;
Exchange Bank of Alabama; and the Pacific Continental Bank
in Oregon.
The web pages for each of these banks show use of GOLD
ACCOUNT to identify an account or program offering a
premium level of service, benefits and/or privileges -- for
example, higher interest on savings or investment accounts,
free checking, free safe deposit boxes or other benefits.
In the aggregate, the uses demonstrate that “GOLD ACCOUNT”
suggests a premium level of service or benefits in the
banking field. The Examining Attorney discounts the
importance of this evidence, stating, “These third-party
uses of registrant’s mark may indicate that the mark is
somewhat suggestive of high quality services. They
certainly do not show that the registrant’s mark is weak.
We disagree. We find these third-party uses highly
probative and strong evidence that “GOLD ACCOUNT” is highly
suggestive in the banking field. The examples are numerous
and directly on point. They indicate extensive use of the
phrase throughout the United States, including Internet
use.
As in the Knight Textile case, applicant also provided
numerous third-party registrations which corroborate the
suggestive meaning. See In re Red Carpet Corp. v.
Ser No. 78451347
9
Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406
(TTAB 1988).
The Examining Attorney discounts this evidence also,
principally because it shows use of “GOLD” and not “GOLD
ACCOUNT” in relation to banking services. The Examining
Attorney provided results of a USPTO search indicating that
the only records which show “GOLD ACCOUNT” in sequence are
the records for the application and registration at issue
here. In arguing so, the Examining Attorney appears to
attach great importance to the presence or absence of
“ACCOUNT” in the third-party marks. We find many of the
registrations relevant even though they do not include
“account” in the marks. In this case both applicant and
registrant have disclaimed “ACCOUNT” which is a generic
term in the banking field. As such “account” is less
important in the commercial impression of both marks. See
In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997).
Accordingly, we find many of the registrations
applicant provided showing marks which include “GOLD” in
the banking field probative, for example:
PRIMETIME GOLD for “banking services” owned by
Citizens Banking Corp. (Reg. No. 2853460;

Ser No. 78451347
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GOLD PREFERRED for “banking services” owned by Applied
Card Bank Corp. by assignment from Cross Country Bank
(Reg. No. 2743905);

PEOPLES GOLD for “banking services” owned by Peoples
Exchange Bank of Beattyville, Kentucky, Inc. (Reg. No.
2433628);

FLEET ONE GOLD for “banking services” owned by Bank of
America Corp. by assignment from Fleet Financial
Group, Inc. (Reg. No. 2271745);

PRIVILEGE MONEY MARKET GOLD for “banking services”
owned by Citizens Financial Group, Inc. by assignment
from Charter One Financial, Inc. (Reg. No. 2055325);

PRIVILEGE 50 GOLD for “banking services” owned by
Citizens Financial Group, Inc. by assignment from
Charter One Financial, Inc. (Reg. No. 2068033);

GOLD BANC for “banking services, …” owned by Gold Banc
Corp. (Reg. No. 2367612);

GOLD 24 and Design for “banking services …” owned by
Extraco Corp. (Reg. No. 2541097);

SPECIAL CONNECTIONS GOLD for “banking and credit card
services” owned by Commerce Bankshares Inc. (Reg. No.
1871567);

CITIGOLD for “banking services, …” owned by Citigroup,
Inc. by assignment from Citicorp Corp. (Reg. No.
1824600);

PACIFIC GOLD for “banking services” owned by Comerica
Bank-California by merger with Pacific Western Bank
(Reg. No. 1506344);

ONE ACCOUNT GOLD and Design for “banking services”
owned by Fifth Third Bank (Reg. No. 1503236); and

FIRST CHICAGO GOLD PASSPORT ACCOUNT for “banking
services …” owned by First Chicago Corp. (Reg. No.
1155058).

Ser No. 78451347
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The registrations corroborate our conclusion that
“GOLD ACCOUNT” is highly suggestive, and therefore weak, as
used in the banking field.
The specimen in this case shows applicant’s use of
CITIZENS as a house mark. Applicant also indicates that it
uses CIRCLE, “to identify its premiere relationship account
products.” Thus, in this case CITIZENS CIRCLE functions
like NORTON MCNAUGHTON in the Knight Textile case. Here
too the house mark, CITIZENS, along with CIRCLE, is
dominant to the near exclusion of GOLD ACCOUNT in forming
the commercial impression of applicant’s mark. As the
Board said in Knight Textile, “Based on this evidence, we
find that purchasers are able to distinguish among various
ESSENTIALS marks by looking to other elements of the marks.
In this case that other element is the presence of
applicant’s house mark NORTON MCNAUGHTON.” Knight Textile,
75 USPQ2d at 1316 (footnote omitted). In the case before
us, purchasers would look to CITIZENS CIRCLE to distinguish
applicant’s mark from other GOLD and GOLD ACCOUNT marks,
including the mark in the cited registration.
Accordingly, in view of the highly suggestive
character of GOLD ACCOUNT we conclude that the marks of
applicant and registrant are not similar when viewed in
their entireties.
Ser No. 78451347
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Other Factors
Applicant also argues that the Examining Attorney
failed to consider certain other du Pont factors,
specifically, the sophistication of the purchasers, the
lack of fame and the absence of actual confusion.
With regard to the sophistication of potential
purchasers, applicant argue that people take particular
care in the selection of banking services. The Examining
Attorney disagrees. Neither applicant nor the Examining
Attorney offered any evidence related to this factor. We
can safely say that the clientele for banking services are
generally no less careful than the purchasers of women’s
apparel, the potential purchasers in the Knight Textile
case. Accordingly, we have no reason, based on the
sophistication of the purchasers here, to depart from the
analysis in the Knight Textile case. We do not view this
factor as significant in this case.
With regard to fame, in the absence of any evidence
regarding the fame or lack of fame of the registered mark,
we do not consider that fame is a relevant factor in this
case. In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003)(“. . . we decline to
establish that the converse rule that likelihood of
confusion is precluded by a registered mark’s not being
Ser No. 78451347
13
famous.”). Indeed, the evidence of third-party uses of
GOLD ACCOUNT suggests indirectly that the registered mark
is not famous, but we cannot and need not determine so for
the purposes of our ultimate decision here. We regard fame
as a neutral factor here.
Also, with regard to actual confusion, we also do not
consider this factor to be significant in this case. In an
ex parte proceeding, “uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.” In re Majestic Distilling Co., 65 USPQ2d at 1205.
See also In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984).
Lastly, although applicant has not explicitly argued
that the Internet evidence is relevant to the sixth du Pont
factor, “the number and nature of similar marks in use on
similar goods [services],” we could consider that evidence
under that factor. In this respect this case is unlike the
Knight Textile case where the Board specifically declined
to consider the sixth du Pont factor because the record
included only third-party registrations and no evidence of
actual use by third parties. Knight Textile, 75 USPQ2d at
1315. In this respect the record here goes beyond Knight
Textile. Although we need not and do not rely on the
evidence of actual use by others under the sixth du Pont
Ser No. 78451347
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factor, we note that the record here related to the sixth
du Pont would lend still further support to our conclusion.
CONCLUSION
In conclusion, we have considered all evidence bearing
on the du Pont factors in this case and conclude that
confusion is not likely. We conclude so principally
because the marks of applicant and registrant, when viewed
in their entireties, are not similar and not likely to be
confused and because the lack of similarity between the
marks outweighs all other factors in this case. Kellogg
Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1550 (TTAB
1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Decision: The refusal to register the mark under
Section 2(d) of the Act is reversed.