FMR LLCv.Jay A. Taplin, et al

Trademark Trial and Appeal Board

Jun 4, 2012

No. 91195088 (T.T.A.B. Jun. 4, 2012)

Mailed: June 4, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

FMR LLC
v.
Jay A. Taplin; Dean Tendrich; Austin Shanfelter; Karl Hoffman;
Barry Goldwater, Jr.; Thomas R Gibson; Lawrence H. Dugan, Jr.;
Richard D. Aldred; and Norman E. Taplin
_____

Opposition No. 91195088
_____

Patrick J. Concannon of Edwards Angell Palmer & Dodge LLP for FMR
LLC.

George W. Lewis of Jacobson Holman PLLC for Jay A. Taplin, et.
al.
______

Before Holtzman, Wellington and Lykos, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Jay A. Taplin, et. al. (applicants) have filed an
application to register the mark shown below for "banking
services" in Class 36.1 The wording "FEDERAL BANK & TRUST" is
disclaimed.

1 Application Serial No. 77677059; filed February 24, 2009 based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91195088
2

FMR LLC (opposer) filed a notice of opposition on the ground
of priority and likelihood of confusion under Section 2(d) of the
Trademark Act. Opposer alleges that applicants’ mark, when
applied to applicants’ services, so resembles opposer's
previously used and registered marks which consist in whole or in
part of the word FIDELITY in connection with a range of financial
services as to be likely to cause confusion. Opposer has
asserted ownership of eight registrations for such services,
including Registration No. 3092353 for the mark FIDELITY. In
addition, opposer attached printouts of its pleaded registrations
from the Office's TARR database showing that the registrations
are valid and subsisting and owned by opposer.
Applicants filed an answer denying the salient allegations
in the notice of opposition.2
The record includes the pleadings, the TARR printouts of
opposer’s pleaded registrations which accompanied the notice of
opposition and the file of the involved application. See
Trademark Rules 2.122(b)(1) and (d)(1). In addition, opposer

2 The affirmative defenses asserted in the answer were neither tried
nor argued and they are accordingly considered waived. Applicants’
allegation of fraud raised as an affirmative defense, in any event,
would not be considered in the absence of a counterclaim for
cancellation.
Opposition No. 91195088
3
filed a notice of reliance on its unanswered requests for
admissions to applicants.
Applicants did not introduce any testimony or other evidence
in their own behalf. Only opposer filed a brief.
The registrations made of record by opposer include the
following:
Registration No. 3092353 for the standard character mark
FIDELITY for a variety of goods and services, including
services in Class 36 identified, in part, as follows:3

Providing financial information by electronic
means; providing personalized investment
information; loan financing; loan services
rendered to mortgage borrowers to enable them to
avoid making down payments on real estate;
providing information in the field of mortgages
by means of the Internet; electronic bill
payment; fund transfer services; financial
services, namely, compiling, organizing,
managing and reporting user specific financial
information by means of the Internet, in the
field of investment accounts, bank accounts,
credit card accounts, frequent flyer award
accounts and other personal financial data.

Registration No. 2785475 for the typed mark FIDELITY
ACCOUNT for “financial services, namely, investment
account management, securities brokerage services, cash
management, electronic bill payment, financial
administration of credit accounts, loan financing,
investment fund transfer services, and financial
information provided through electronic means,” in
Class 36.4 The word ACCOUNT is disclaimed.

Registration No. 1707172 for the typed mark FIDELITY
MONEY LINE for “telephone initiated electronic fund
transfer services among banks and mutual fund
accounts,” in Class 36.5

3 Issued May 16, 2006; combined Sections 8 and 15 declaration received.
4 Issued November 25, 2003; combined Sections 8 and 15 declaration
accepted and acknowledged.
5 Issued August 11, 1992; renewed.
Opposition No. 91195088
4
Registration No. 1932411 for the typed mark FIDELITY
AUTOMATIC ACCOUNT BUILDER for “automatic electronic
funds transfer from a bank account to a mutual fund
account,” in Class 36.6 The wording AUTOMATIC ACCOUNT
BUILDER is disclaimed.

Because applicants failed to respond to opposer's requests
for admissions, each of opposer's requests is deemed admitted
and, moreover, each fact in the requests deemed admitted is
"conclusively established." Fed. R. Civ. P. 36(a)(3) and (b).
Applicants’ admissions of fact include the following with regard
to opposer’s registered “FIDELITY” marks and services:7
Applicants’ mark and opposer’s marks “are
confusingly similar in appearance” and “phonetically
confusingly similar” (Req. Nos. 1, 2).8

FIDELITY is the dominant portion of applicants’ mark
and makes the strongest impression in applicants’ mark;
the wording FEDERAL BANK & TRUST in applicants’ mark
“does not make a commercial impression that
distinguishes” applicants’ mark from opposer’s marks
(Req. Nos. 14, 15).

Applicants’ banking services are substantially
similar and related to the services listed in
opposer’s registrations (Req. Nos. 6, 7).

Applicants’ banking services and the services listed
in opposer’s registrations are promoted through the
same commercial channels (Req. No. 8).

6 Issued November 7, 1995; renewed.
7 Opposer’s Request No. 3 (“admit that there is a likelihood of
confusion” between the respective marks) asks for a legal conclusion
rather than an admission of fact. See Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-154 (CCPA
1978) (likelihood of confusion is a legal conclusion, therefore, it
cannot be an admission because only facts may be admitted).
Because opposer’s pleaded registrations are of record, and since
opposer has not asserted common law rights based on any marks or
services other than those identified in its registrations, it is
unnecessary to consider the admissions relating to common law use.
8 We do not consider applicants’ admission of these requests as going
to the ultimate legal issue of likelihood of confusion but only as
admissions that the marks are similar.
Opposition No. 91195088
5
Consumers who purchase banking services also purchase
services listed in opposer’s registrations (Req. No.
10).

Standing and Priority
In view of opposer's valid and subsisting registrations,
opposer's standing has been established, and its priority with
respect to the registered marks for the goods and/or services
identified therein is not in issue. King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Opposer has established, through applicants’ admissions,
that applicants’ banking services are similar and related to the
financial services listed in opposer’s registrations, including
loan financing, managing and reporting user specific financial
information in the field of bank accounts, electronic fund
transfer services among banks and mutual fund accounts, and
Opposition No. 91195088
6
electronic bill payment services. Applicants’ admissions further
establish that the parties’ respective services are promoted in
the same channels of trade and purchased by the same consumers.
We turn then to a comparison of applicants’ mark
with opposer’s marks which consist of or include the term
FIDELITY. In determining the similarity or dissimilarity of
marks, we must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Although the marks
must be considered in their entireties, it is well settled that
one feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant feature
in determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
Applicants’ admissions establish that the respective marks
are similar in sound, appearance and overall commercial
impression. The word FIDELITY is opposer’s entire mark in
Registration No. 3092353 and it forms a significant part of
opposer’s other registered marks. As applicants admit, the same
term FIDELITY dominates and creates the strongest impression in
their mark. The presence of this identical word in both parties’
marks far outweighs any differences due to the particular display
of applicants’ mark or the additional word elements in their
Opposition No. 91195088
7
mark. The letter “F” merely emphasizes the term FIDELITY or
FIDELITY FEDERAL, and the wording FEDERAL BANK AND TRUST, which
has been disclaimed as descriptive of applicants’ services,9 is
of little significance in distinguishing source.
Furthermore, the absence of any evidence of third-party use
or registration of FIDELITY in connection with similar services
suggests that FIDELITY is a unique term in the financial field,
and thus more likely to create confusion when used in both
applicants’ and opposer’s marks.10 See, e.g., Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992).
Conclusion
In view of the similarity of the marks, and because the
services are similar and related, and the trade channels and
purchasers for the services are the same, we find that confusion
is likely.
Decision: The opposition is sustained, and registration to
applicants is refused.

9 See Office action dated April 14, 2009.
10 Opposer relies on the dates of use set forth in its registrations as
support for opposer’s contention that its marks are strong and entitled
to a broad scope of protection. However, the date of use alleged in a
registration is not evidence on behalf of the registrant; it must be
established by competent evidence. See Trademark Rule 2.122(b)(2).