Community Trust BankDownload PDFTrademark Trial and Appeal BoardSep 25, 2009No. 76685026 (T.T.A.B. Sep. 25, 2009) Copy Citation Mailed: 25 September 2009 AD UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Community Trust Bank ________ Serial No. 76685026 _______ W. Whitaker Rayner of Watkins Ludlam Winter & Stennis, P.A. for Community Trust Bank. Michael Engel, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Quinn, Drost, and Kuhlke, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On December 17, 2007, Community Trust Bank (applicant) applied to register the mark COMMUNITY TRUST BANK and design shown below on the Principal Register for “banking services” in Class 36. Serial No. 76685026. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76685026 2 The date of use first use anywhere and in commerce is identified as October 26, 2007, and the application contains a disclaimer of the term “Trust Bank.” The examining attorney has refused to register applicant’s mark under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) because of a prior registration for the mark COMMUNITY TRUST, in typed or standard character form, for “banking and trust management services; investment and financial management advisory services” in Class 36. Registration No. 1946537 issued January 9, 1996 (renewed), “Trust” disclaimed. After the refusal was made final, this appeal followed. Cases involving refusals under Section 2(d) require us to consider the facts as they relate to the relevant factors set out by the Court of Customs and Patent Appeals in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). Oftentimes, in likelihood of confusion cases, the “fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods Ser No. 76685026 3 [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). The first factor that we will consider is whether the services are related. The examining attorney argues that “applicant has identified ‘Banking services,’ which are incorporated within the scope of registrant’s services, which include banking, trust management, and investment and financial management advisory services.” Brief at unnumbered p, 7. We agree. The services are overlapping because both include “banking services.” When services are identical, we also must assume that the channels of trade and purchasers are the same. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Furthermore, when “marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The next “DuPont factor [that we consider] requires examination of ‘the similarity or dissimilarity of the Ser No. 76685026 4 marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). This point has been the main focus of the controversy in this case. Applicant’s mark is ; registrant’s mark is COMMUNITY TRUST. The words “Trust”1 and “Bank” have been disclaimed. The examining attorney argues that there “are only two differences between the marks. Applicant’s mark includes the word BANK, but as both parties are providing banking services, it is unlikely that consumers would be able to differentiate between the marks on this basis.” Brief at 4. Regarding the design, the examining attorney maintains that “the word portion is normally accorded 1 A “trust company” is a “bank or other commercial organization that sets up and operates trusts for private individuals and businesses.” First Office Action, MSN Encarta Dictionary attachment. The examining attorney has also submitted registrations to show that the term “Trust Bank” has been disclaimed in numerous registrations. See Nos. 2013572; 2780033; 2820554; 3198486; and 3228627. Ser No. 76685026 5 greater weight in determining likelihood of confusion.” Id. Applicant, in turn, argues that “the internet is replete with entities which have incorporated the terms ‘Community’ and ‘Trust’ within their banking establishments… Additionally… the U.S. Patent and Trademark Office has approved multiple registrations which contain variations of the terms ‘Community’ and ‘Trust.’” Brief at 1-2. We agree that the only differences between the marks is the addition of the disclaimed term “Bank” in applicant’s mark as well as a design of a house. Normally, these differences would not be very significant features. Disclaimed, descriptive manner does not normally distinguish the marks. M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When comparing the similarity of marks, a disclaimed term, here ‘COMMUNICATIONS,’ may be given little weight, but it may not be ignored”). Words are more likely to be more significant than the design in a mark. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is Ser No. 76685026 6 affixed”). However, there are exceptions. In re Electrolyte Laboratories Inc., 929 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“We conclude that the TTAB erred in its dominant focus on the K+ in both marks, to the substantial exclusion of the other elements of both marks. Electrolyte’s mark is a composite of which the design is a significant feature thereof. The EFF in the registrant's mark is also significant”). In addition to the differences in the marks, we must also consider the scope of protection to give to registrant’s mark. The board addressed a somewhat similar situation for the term KEY in In re Hamilton Bank, 222 USPQ 174 (TTAB 1984). In that case, the board held: What this case boils down to is the fact that the term “KEY” is part of at least twenty registered service marks adopted in the banking field. The term has weak trademark significance in this field because of its suggestiveness, which is evidenced by its widespread adoption and registration. In the case at hand the applicant’s mark is no more likely to cause confusion with the five cited registered marks than the five cited marks are likely to cause confusion with the fifteen other registered marks which contain the term “KEY.” Applicant’s mark is distinguishable because of its design element and because it has no other elements in combination with the term “KEY.” Each cited registered mark uses other matter in combination with the term which distinguishes that mark from applicant’s mark and from the other registered marks. Id. at 179. Ser No. 76685026 7 Applicant submitted two registrations that include the words “Community” and “Trust.”2 No. 2426691 – SOUTHERN COMMUNITY BANK AND TRUST (“Bank and Trust” disclaimed) for banking services. No. 2547139 – NORTH SHORE COMMUNITY BANK & TRUST (“Community Bank & Trust” disclaimed) for banking services. In addition to this evidence, applicant also submitted internet evidence to show that other entities are using the terms “community” and “trust” in relation to banking and similar services. COMMUNITY TRUST BANK (www.communitytrustbank.com) COMMUNITY TRUST BANK (www.communitytrustbk.com) COMMUNITY TRUST BANKING COMPANY (www.commtrustbank.com)3 COMMUNITY TRUST CREDIT UNION (www.myctcu.com) COMMUNITY TRUST CREDIT UNION OF EAST PALO ALTO (www.events.mercurynews.com) BANK OF ATHENS COMMUNITY TRUST (www.merchantcircle.com) FIRST COMMUNITY TRUST (www.fctrust.com) COMMUNITY TRUST COMPANY www.communitytrustco.com) 2 Applicant also submitted two applications for the marks WINTRUST COMMUNITY MORTGAGE (“Community Mortgage” disclaimed) (Serial No. 77078163) and COMMUNITY NATIONAL BANK & TRUST OF TEXAS and design (all words disclaimed) (Serial No. 77298246). However, a “copy of a third-party application … has no probative value other than as evidence that the application was filed.” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). 3 It is not clear from the evidence of record whether these are different institutions although their websites and web addresses and the design associated with the services are different. Ser No. 76685026 8 1st COMMUNITY TRUST MORTGAGE (www.1stctm.com)4 From this limited evidence, we could not draw the conclusion that the term “Community” is a weak term that is entitled to a very limited scope of protection. Most of the evidence appears to be somewhat local in use. However, the following evidence convinces us that “community,” when used in association with banking services, is a very weak term. We begin by taking judicial notice5 of two dictionary definitions of the term “community bank.” Community bank – a conventional bank that derives funds from and lends to the community where it operates, and is not affiliated with a multibank holding company. The New Oxford American Dictionary (2005) Community Bank – see Independent Bank Independent Bank – locally owned and operated commercial bank. It derives its sources of funds from, and it lends to, the community where it operates, and is not affiliated with a multibank holding company. Also called community bank. Dictionary of Banking Terms (5th ed. 2006). We are also aware that the Office of the Comptroller of the Currency published an Advanced Notice of Proposed Rulemaking entitled “Community Bank-Focused Regulation 4 The last three entities appear to be companies rather than banks. 5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 76685026 9 Review.” That Federal Register notice described “community banks” as follows: The OCC already recognizes and incorporates into its supervisory approach the distinctions between large banks and community banks. The OCC has, for example, developed approaches to examination and supervision that are appropriate to each charter type. See, e.g., Comptroller’s Handbook, Community Bank Supervision (August 1998), Large Bank Supervision (July 1998). See also id., Community Bank Fiduciary Activities Supervision (December 1998). Specifically, the OCC is considering further changes to our regulations that would take into account the impact the rules have on community banks’ resources, as well as other factors that bear on community banks’ operations. For example, community banks typically have smaller, less specialized staffs than larger banks, so the burden of complying with complex regulations is proportionately higher. 64 Fed. Reg. 25469, 25470 n.1 (May 12, 1999). The notice then goes on to explain: “A few of the OCC’s regulations distinguish among banks based on asset- size categories and apply different requirements to smaller banks. For example, 12 CFR Part 25, the regulation implementing the Community Reinvestment Act (CRA), provides for alternative means of compliance for banks with less than $250 million in assets. The OCC does not have a standard, generally applicable definition of ‘community bank,’ however. We invite comment on whether to adopt such a definition for purposes of this regulation review.” Id. Subsequently, the “Community Bank Supervision – Comptroller’s Handbook,” Comptroller of the Currency (July Ser No. 76685026 10 2003) did offer this definition (p. 1): “This booklet explains the philosophy and methods of the Office of the Comptroller of the Currency (OCC) for supervising community banks. Community banks are generally defined as banks with less than $1 billion in total assets and may include limited-purpose chartered institutions (e.g., trust banks, community development banks).”6 We take judicial notice of these definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (The Encarta Dictionary, “while it may not be available as a print publication, it is a widely-known reference that is readily available in specifically denoted editions via the Internet and CD-Rom. Thus, it is the electronic equivalent of a print publication and applicant may easily verify the excerpt. For this reason, we find it is acceptable material for judicial notice even though the excerpt was submitted with the examining attorney’s appeal brief”). “The Board may take judicial notice of online reference works which exist in printed format or have regular fixed editions.” In re Dietrich, 91 USPQ2d 1622, 1631 n. 15 (TTAB 2009) (Board took judicial notice of the Merriam-Webster Online Dictionary). See also Boston Red 6 The Comptroller of the Currency has a Senior Deputy Comptroller for Large Bank Supervision and a Senior Deputy Comptroller for Mid-Size/Community Bank Supervision. 12 CFR § 19.111. Ser No. 76685026 11 Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008) (same). Clearly, this official publication has fixed editions that are relied on in the banking industry. We also add that we are relying on these publications for the purpose of showing that “community” is a weak term in the banking industry, not necessarily for the exact size of a community bank for which there appears to be some discussion. See Board of Governors of the Federal Reserve System, Final Rule, “Interbank Liabilities,” 57 FR 60086, 60090 (December 18, 1992) (“Fourteen commenters proposed that the Board exclude small or community banks, defined by some commenters as banks with assets under $1 billion…”); “Recent Changes To The Community Reinvestment Act And Their Impact On Community Banks And Rural Economies,” 10 N.C. Banking Inst. 157, 167 (March 2006) (“Community banks are most commonly defined as banking institutions with assets of less than $1 billion”). Furthermore, we are not the first tribunal to confront this issue. The U.S. District Court for the District of Maryland was faced with a trademark infringement action involving the term “Community Bank.” In that case, Community First Bank filed suit against Community Banks claiming “confusion resulting from the similarity between the names of the two institutions.” Community First Bank Ser No. 76685026 12 v. Community Banks, 360 F. Supp.2d 716, 720 (D. Md. 2005). The Court held that: The term “community bank” is commonly used in the banking industry to denote a particular category of banking institution. To wit, the term describes smaller, locally owned institutions which market primarily to individuals and small businesses. The category of “community bank” distinguishes such institutions from larger regional banks, and money center banks, which generally encompass a broader geographic area and are more focused on corporations and institutional investors. Not surprisingly, many institutions seek to invoke the “community bank” category by using that term within the organization’s name. Id. at 724 (footnote omitted). In that case, the Court (Id. at 724 n.1) relied on a similar definition of “community bank”: [T]he term “community bank” is defined as “a locally owned, locally operated bank … [for which] its deposits come from and loans are made in the area where it is located.” Robert W. Dixon, The Gramm- Leach-Bliley Financial Modernization Act: Why Reform in the Financial Services Industry was Necessary and the Act's Projected Effects on Community Banking, 49 Drake L.Rev. 671, 673 (2001). A community bank “may operate with a single office or may have a limited number of offices or subsidiaries … [i]n either case, its policies are set locally.” Id. Finally, the Court held (Id. at 725): Moreover, Plaintiff’s concession that the words “community bank” are generic is fatal to its claim. The only words shared between Plaintiff and Defendant are the words “community” and “bank,” which, by Plaintiff’s admission, are generic descriptors of the “genus or species” of locally owned banks. To permit a trademark infringement action based upon Community Banks’ use of those generic terms is akin to Ser No. 76685026 13 forbidding Chevrolet from describing its products “as a ‘car’ or an ‘automobile’ because Ford or Chrysler or Volvo had trademarked these generic words.’” Retail Services, [Inc. v. Freebies Publishing 364 F.3d 535, 538 (4th Cir. 2004)] (quoting Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986)). Such a result is not permitted under the well-settled principles of trademark law. We note that the Community First case holding is consistent with how other Federal courts have used the term “Community Bank” (emphasis added): Wells Fargo & Co. v. C.I.R., 224 F.3d 874, 877 (8th Cir. 2000) (“[Davenport]’s management was concerned that banks of [Davenport]’s size (i.e., larger than the small community banks and smaller than the large regional banks) would be unable to compete in the future”). Rubke v. Capitol Bancorp Ltd, 551 F.3d 1156, 1159 (9th Cir. 2009) (“Capitol Bancorp, Ltd. (‘Capitol’) is a bank holding company that uses an unusual business model to create and control small community banks”). U.S. v. Cherry, 330 F.3d 658, 660 (4th Cir. 2003) (“[T]he Bank had acquired a reputation as one of the most profitable community banks in the country”). With this additional information, we conclude that that term “Community” is an extraordinarily weak term when applied to banks. We can only give it a very narrow scope of protection. See, e.g., First Savings Bank F.S.B. v. First Bank System Inc., 101 F.3d 645, 40 USPQ2d 1865, 1872 (10th Cir. 1996) (“FIRST BANK per se is a weak term, at least when applied to the provision of financial services”); Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 226 USPQ 123, 127 (11th Cir. 1985) (“The court Ser No. 76685026 14 recognized that Freedom was the most important part of the mark but also stated correctly that the use of an identical word, even a dominant word, does not automatically mean that two marks are similar. Freedom Realty never advertised with the word “Freedom” alone. Since in this case the primary word was weakly protected to begin with, minor alterations could effectively negate any confusing similarity between the two”); and Sun Banks of Fla. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 211 USPQ 844, 849 (5th Cir. 1981) (“We agree with the district court that the name “Sun” is too broad to be geographically descriptive. However, this is merely further proof of the widespread use of the term which militates against a finding of likelihood of confusion”) (citation omitted). Another factor we consider is the fact that bank patrons have been held to be careful purchasers. “Instead of buyers, banking has customers who may be creditors of the bank -- depositors -- or debtors to the bank -- borrowers and others to whom bank credit is extended. Some of both categories one would expect to select their bank after long and careful consideration.” Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988). Furthermore, the Eighth Circuit noted that: “The district Ser No. 76685026 15 court held, and FNB Sioux Falls does not dispute, that consumers tend to exercise a relatively high degree of care in selecting banking services. As a result, customers are more likely to notice what, in other contexts, may be relatively minor differences in names.” First National Bank in Sioux Falls v. First National Bank South Dakota, 153 F.3d 885, 47 USPQ2d 1847, 1851 (8th Cir. 1998). We add that there is no evidence that consumers of banking services are impulse or careless purchasers. In this case, applicant’s and registrant’s services include banking services. While the marks both contain the words “Community” and “Trust,” we have found that these words are weak and common terms in the banking industry. While applicant adds a generic term, “Bank,” to its mark, it also adds a relatively distinctive design. While normally words would be more distinctive, in this case, we must give the design more weight. Considering that banking customers tend to be careful consumers, we conclude that there is no likelihood of confusion here. Decision: The examining attorney’s refusal to register applicant’s mark for COMMUNITY TRUST BANK and design for “banking services” on the ground that it is likely to cause confusion with the cited registered mark Ser No. 76685026 16 used in connection with the same services under Section 2(d) of the Trademark Act is reversed. Copy with citationCopy as parenthetical citation