Community Trust Bank

Trademark Trial and Appeal Board

Sep 25, 2009

No. 76685026 (T.T.A.B. Sep. 25, 2009)

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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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used in connection with the same services under Section
2(d) of the Trademark Act is reversed.