First Citizen's Bancshares, Inc.

Trademark Trial and Appeal Board

Jul 28, 1999

No. 75165513 (T.T.A.B. Jul. 28, 1999)

Hearing: Paper No. 16
October 22, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re First Citizen’s Bancshares, Inc.
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Serial No. 75/165,513
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William J. Mason of Rhodes Coat & Bennett LLP for First
Citizen’s Bancshares, Inc.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
First Citizen’s Bancshares, Inc. has appealed from the
Trademark Examining Attorney’s refusal to register the mark
ATLANTIC STATES BANK, with the words STATES BANK
Ser No. 75/165,513
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disclaimed, for banking services.1 Registration has been
refused on the ground that applicant’s mark, if used in
connection with the identified services, would so resemble
the marks ATLANTIC BANK and ATLANTIC ONE both registered to
the same entity for banking services2, as to be likely to
cause confusion or mistake or to deceive.
Because the services of applicant and registrant, as
listed in the application and registrations, are identical,
we turn our attention to the marks. Although there are
similarities between applicant’s mark and the cited marks,
there are also some differences in the marks when they are
viewed in their entireties. Applicant’s mark ATLANTIC
STATES BANK, because of the inclusion of the word “STATES,”
has a slightly different appearance and creates a different
commercial impression than either ATLANTIC BANK or ATLANTIC
ONE. Applicant’s mark ATLANTIC STATES BANK suggests a
financial institution with specific ties to the Atlantic
states, whereas the cited marks ATLANTIC BANK and ATLANTIC

1 Application Serial No. 75/165,513 filed September 11, 1996
based on Section 1(b) of the Trademark Act (intent-to-use). We
note that applicant submitted a disclaimer of STATES BANK at the
request of the Trademark Examining Attorney. Applicant initially
took the position that a disclaimer of STATES BANK was improper
and offered to disclaim BANK. However, inasmuch as applicant
subsequently submitted a disclaimer of STATES BANK, the
appropriateness of this disclaimer is not an issue before us.
2 Registration No. 1,533,587 issued April 4, 1989, Sections 8 &
15 affidavit filed (BANK is disclaimed); and Registration No.
2,027,538 issued December 31, 1996 respectively.
Ser No. 75/165,513
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ONE suggest in a general way the Atlantic Ocean or eastern
seaboard of the United States.
Moreover, there is another factor which must be
considered in determining the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) lists thirteen factors
which, when of record, must be considered, and cautions
that no one factor is predominant, but that each may, from
case to case, play a dominant role. In this case, “the
extent to which applicant has a right to exclude others
from use of its mark on its goods [or services]” is a
significant factor in our determination of likelihood of
confusion. In this regard, applicant submitted the results
of a search of the Dun & Bradstreet Market Finders data
base which indicates that over 300 entities are providing
banking and financial services under trade names containing
the word “Atlantic.” In addition, applicant submitted the
results of a search of the TrademarkScan data base of
applications and registrations for marks which include the
word “Atlantic” for banking and other financial
Ser No. 75/165,513
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services.3 This search revealed several such third-party
applications and registrations. While third-party
registrations are incompetent by themselves to prove use of
marks or that the public has become exposed to them, third-
party registrations may be competent to show that a term
has descriptive or suggestive significance as applied to
certain goods or services. Here, the information from the
Dun & Bradstreet report and the TrademarkScan data base
indicates that ATLANTIC has suggestive significance as
applied to banking and financial services. That is,
ATLANTIC suggests the Atlantic Ocean or the eastern
seaboard of the United States. The registered marks are
thus weak marks, which are not entitled to a broad scope of
protection.
When we combine the factor of the limited scope of
protection to which the cited registrations are entitled
with the differences in the marks, we find that applicant’s
intended use of ATLANTIC STATES BANK for banking services

3 The submission of print-outs of information taken from a
private company’s data base is not the proper way to make
applications/registrations of record. The proper procedure to
make applications/registrations of record, instead, is to submit
copies of the actual applications/registrations or the electronic
equivalent thereof, i.e., printouts of the
applications/registrations taken from the Patent and Trademark
Office’s own computerized data base. See In re Melville Corp.,
18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. However, inasmuch
as the Examining Attorney did not object to applicant’s
submission, we have considered the information therein.
Ser No. 75/165,513
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is not likely to cause confusion with ATLANTIC BANK and
ATLANTIC ONE.
Decision: The refusal to register is reversed.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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