Fleet Mortgage Group, Inc.

Trademark Trial and Appeal Board

Sep 23, 1999

No. 75109738 (T.T.A.B. Sep. 23, 1999)

Paper No. 18
PTH
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB 9/23/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fleet Mortgage Group, Inc.
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Serial No. 75/109,738
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W. R. Duke Taylor of Harness, Dickey & Pierce, P.L.C. for
Fleet Mortgage Group, Inc.
Caryn L. Hines, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Fleet Mortgage Group, Inc. has filed an application to
register the mark EXPEDITER for “home mortgage loan
programs which provide expeditious credit approval without
an underlying security property, or expeditious credit
approval with an underlying security property.”1

1 Application Serial No. 75/109,738, filed May 24, 1996, alleging
a date of first use and first use in commerce of January 7, 1987.
Ser No. 75/109,738
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Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1) on the
ground that, when used in connection with applicant’s
services, the mark EXPEDITER is merely descriptive of them.
Registration also has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
its services, so resembles the mark EXPEDITE SERVICES as
shown below, which is registered for “banking services,”2 as
to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Turning first to a consideration of the issue of mere
descriptiveness, the Examining Attorney maintains that the
mark EXPEDITER is merely descriptive of applicant’s
services because it immediately describes a feature of
applicant’s home mortgage loans, namely that they feature

2 Registration No. 1,823,187 issued February 22, 1994. The word
SERVICES is disclaimed apart from the mark as shown.
Ser No. 75/109,738
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quick or expedited credit approval. In support of her
position, the Examining Attorney submitted a dictionary
definition of “expedite” as, inter alia, “speed up the
progress of; hasten.” The Random House College Dictionary
(1980).
Applicant, in arguing against the refusal, simply
contends that the Examining Attorney has misapplied the
test for mere descriptiveness.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning
of Section (2)(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978).
In this case, we agree with the Examining Attorney
that the mark EXPEDITER is merely descriptive of
applicant’s services. There is no question that providing
expeditious credit approval is a significant feature of
applicant’s home mortgage loan programs. We note, in this
regard, applicant’s own recitation of services wherein the
services are described as “home mortgage loan programs
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which provide expeditious credit approval . . .” Also, we
note the following statement in applicant’s specimen
brochure: “The Expediter credit approval program provides
those applicants who have not yet selected a property, a
quick and reliable decision . . .” (emphasis added). When
prospective loan applicants encounter applicant’s mark
EXPEDITER, especially as used in the context of the
specimen brochure, we have no doubt that the mark
immediately conveys to them a feature of applicant’s home
mortgage loans, namely, that they feature “expedited”
credit approval. Accordingly, applicant’s mark, when used
in connection with applicant’s services, is merely
descriptive of them, so the refusal under Section 2(e)(1)
of the Act must be affirmed.
Turning next to a consideration of the refusal to
register under Section 2(d), applicant argues that the
services which registrant actually renders under the cited
mark are very different from those of applicant. In
particular, applicant contends that registrant uses its
mark to identify a process of communicating business-to-
business information electronically, which is very
different from applicant’s home mortgage loan programs.
Applicant points out that registrant’s actual services are
Ser No. 75/109,738
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utilized by sophisticated purchasers and that such services
are not offered to ordinary consumers.
However, as the Examining Attorney correctly observes,
it is well settled that the issue of likelihood of
confusion must be determined on the basis of the services
as they are set forth in the involved application and the
cited registration, rather than on what the evidence shows
the actual practice to be. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Here, the cited registration reads simply “banking
services.” It has no limitations of any sort. The
banking services listed therein must therefore be presumed
to include all the services normally offered by a bank,
including home mortgage loans. See In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Also, it must be presumed that
registrant’s banking services are offered to all potential
customers, and this would include ordinary consumers.
Thus, for our purposes of analyzing likelihood of
confusion, applicant’s home mortgage loan programs and
registrant’s banking services are closely related services,
which if rendered under similar marks, would be assumed to
be rendered by a single entity.
Turning then to a consideration of the marks, it is
essentially the Examining Attorney’s position that the
Ser No. 75/109,738
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marks are very similar because applicant’s mark EXPEDITER
is derived from the word “expedite,” which is the dominant
part of registrant’s mark EXPEDITE SERVICES.
We agree with applicant, however, that the marks
convey different commercial impressions. We recognize that
the word SERVICES in registrant’s mark is descriptive and
thus typically would be accorded less weight when comparing
the marks. The word SERVICES, however, cannot be ignored
and the combined term EXPEDITE SERVICES is distinguishable
from applicant’s mark EXPEDITER. First, as we have already
indicated, EXPEDITER has a readily understandable meaning
when used in connection with applicant’s services, namely,
that applicant’s home mortgage loan programs feature
expedited credit approval. EXPEDITE SERVICES, on the other
hand, has no readily understandable meaning when used in
connection with banking services. The cited mark is an
unnatural combination of the words “expedite” and
“services,” and includes a design element.
In sum, we find that EXPEDITER and EXPEDITE SERVICES
and design project different commercial impressions such
that confusion as to the origin or affiliation of the
respective services of applicant and registrant is
unlikely.
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Decision: The refusal to register under Section
2(e)(1) is affirmed; the refusal to register under Section
2(d) is reversed.
R. F. Cissel
P. T. Hairston
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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