MidWestOne Financial Group, Inc.

Trademark Trial and Appeal Board

Nov 19, 2012

No. 85343983 (T.T.A.B. Nov. 19, 2012)

Mailed: November 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MidWestOne Financial Group, Inc.
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Serial Nos. 85343983 and 85343985
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Christopher J. Voci of Simmons Perrine Moyer Bergman PLC for MidWestOne
Financial Group, Inc.
Cory Boone, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
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Before Holtzman, Mermelstein and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On June 12, 2011, MidWestOne Financial Group, Inc. (“applicant”) filed an
application to register the mark MIDWESTONE BANK in standard-character
format for “banking and financing services” in International Class 36.1 Applicant
also applied to register the mark displayed below for the identical services noted
above:2

1 Application Serial No. 85343983, filed pursuant to Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), with a disclaimer of the word BANK.

2 Application Serial No. 85343985, filed pursuant to Section 1(a) of the Act, with a
disclaimer of the word BANK.

This Opinion is Not a
Precedent of the TTAB
Serial Nos. 85343983 and 85343985
2

The Trademark Examining Attorney refused registration of applicant’s
marks under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that applicant’s marks so resemble the following registered marks, both
owned by the same entity and both for “banking services” in International Class 36,
that when used on or in connection with applicant’s identified services, they are
likely to cause confusion or mistake or to deceive:3
Registration No. 3161246, for the mark MIDWEST BANK in standard
character format,4 and

Registration No. 3304609 for the mark displayed below:5

3 The examining attorney also refused registration based on Registration No. 3024993 for
the mark MIDWEST BANC; however, following the briefing of this appeal, on September
21, 2012, the registration was cancelled under Section 8. In view thereof, the refusal is
moot as to Registration No. 3024993.

4 Registered on October 24, 2006, with a disclaimer of the word BANK.

5 Registered on October 2, 2007, with a disclaimer of the word BANK.

Serial Nos. 85343983 and 85343985
3
Applicant has appealed the examining attorney’s final refusal to register the
marks. Both applicant and the examining attorney have filed briefs.6 For the
reasons explained below, we affirm the refusal to register.
I. Evidentiary Issues – Examining Attorney’s Objection
Before addressing the merits of the appeal, we will consider the examining
attorney’s objection raised in his brief. In its brief, applicant refers to several third-
party registrations which incorporate the term ONE to argue that the involved
registered marks are weak and therefore entitled only to a narrow scope of
protection. The examining attorney objects to applicant’s reference in its brief to
third-party registrations as both untimely and improper in form.
We agree. Trademark Rule 2.142(d) provides that “the record in an
application should be complete prior to filing an appeal.” In addition, as a general
rule, the mere listing of third-party registrations is not sufficient to make the
registrations of record. See In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In
re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) and In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996). In order to make a third-
party registration properly of record, the offering party should submit a copy of the
registration obtained from USPTO records during ex parte prosecution. See TBMP
§ 1208.02 (3d ed. rev. 2012). Indeed, in his final Office action, the examining
attorney notified applicant that its reference to third-party marks via website links
was improper, and advised applicant how to make the third-party registrations of

6 On June 17, 2012, the Board granted the examining attorney’s motion to consolidate the
instant applications and present the appeal on a single brief.
Serial Nos. 85343983 and 85343985
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record. See Final Office Action dated January 19, 2012. Applicant could have made
such registrations properly of record with its request for reconsideration but failed
to do to so. In view thereof, the examining attorney’s objection is sustained; we
have given no consideration to the third-party registrations discussed in applicant’s
appeal brief. Cf. In re L.C. Licensing Inc., 49 USPQ2d 1379, n.3 (TTAB 1998)
(third-party registrations first submitted with appeal brief not considered).
II. Section 2(d) Refusal
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du
Pont factors are discussed below.
At the outset, we note that as identified, applicant and registrant are offering
the identical services — “banking services.” Applicant does not dispute this fact.
In addition, because the recitations of the involved applications and registrations
are unrestricted as to trade channels, we must presume that both parties’ identical
“banking services” travel in the same ordinary trade and distribution channels and
will be marketed to the same potential consumers. In re Elbaum, 211 USPQ 639,
Serial Nos. 85343983 and 85343985
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640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958). Hence, the identical nature of the services and channels of
trade weigh heavily in favor of finding a likelihood of confusion.7
Because the services are identical, the degree of similarity between the
marks that is necessary to support a finding of likely confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992). With this in mind, we now turn to the first du Pont likelihood of
confusion factor regarding the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. “[T]he
test is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).

7 The examining attorney has also argued that because the banks are in close geographic
proximity, confusion is more likely. In connection therewith, the examining attorney has
requested that the Board take judicial notice of the geographic location and distance
between applicant and registrant. We remind the examining attorney, however, that
applicant seeks an unrestricted (i.e., national) registration and the geographic scope of
protection for registrant’s registrations extends throughout the entire United States. As
such, the geographic proximity of applicant and registrant is irrelevant to our analysis. For
this reason, we deny the examining attorney’s request to take judicial notice.
Serial Nos. 85343983 and 85343985
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Applicant argues that its marks are visually dissimilar and create a distinct
commercial impression because each includes the term ONE. As applicant
maintains, the addition of the word ONE changes the connotation of its applied-for
marks because it “signifies the prime or singular nature” of applicant’s services.
Applicant’s Brief, p. 2. Applicant also contends that the inclusion of the term ONE
in its marks adds a syllable and new vowel sound making the word a prominent
aspect of both marks.
Applicant’s arguments are unconvincing. It is well-established that
prospective consumers are often more inclined to focus on the first word, prefix or
syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). See also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d
1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions). Because MIDWEST is the first part of the literal portion of
applicant’s marks, it is the dominant element of applicant’s mark. See Palm Bay,
73 USPQ2d at 1692. The same reasoning applies to registrant’s marks where the
term MIDWEST appears and will be pronounced first by consumers in calling for
the services. The word “one” appears to modify and be subordinate to “MIDWEST”
and BANK.” As used in the mark, “ONE” implies that “MIDWEST” is the first or
Serial Nos. 85343983 and 85343985
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prime BANK; as if the name of the bank is “MIDWEST,” and “ONE” suggests an
attribute.
We further find that the slogan THE BANK WHERE YOU BELONG
appearing in the registrant’s mark is merely ancillary to the dominant commercial
impression created by the initial term MIDWEST. While acknowledging the
distinction noted above by applicant, we find that applicant overemphasizes the
effect of the addition of the term ONE in applicant’s marks. It is more likely that
prospective consumers will overlook this distinction and instead confuse the marks
as identifying the same services from the same source, given that they both begin
with the term MIDWEST and include the term BANK.
As to the additional design element in applicant’s mark in Application Serial
No. 85343985 and registrant’s mark in Registration No. 3304609, we find that in
this particular case, it fails to mitigate the highly similar appearance, sound, and
connotation of the respective literal portions of the involved marks. Applicant is
reminded of the often-recited principle that when a mark consists of a literal portion
and a design portion, the literal portion is more likely to be impressed upon a
purchaser’s memory and to be used in calling for the goods and/or services;
therefore, the literal portion is normally accorded greater weight in determining
whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1267-68 (TTAB 2011).
Serial Nos. 85343983 and 85343985
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We therefore find that applicant’s marks and registrant’s marks are highly
similar in appearance, sound, connotation and commercial impression. This first du
Pont factor also weighs in favor of finding a likelihood of confusion.
To the extent that there are any other relevant du Pont factors, we treat
them as neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s marks and the registered marks when used in
connection with their identified services.
DECISION: The refusal to register is affirmed.