Nationwide Mutual Insurance Companyv.Nationwide Auto Lease LLC

Trademark Trial and Appeal Board

Nov 10, 2021

92067046 (T.T.A.B. Nov. 10, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: November 10, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Nationwide Mutual Insurance Company v. Nationwide Auto Lease LLC ________ Cancellation No. 92067046 _______ Martin J. Miller of Porter Wright Morris & Arthur LLP for Nationwide Mutual Insurance Company. Mitchell P. Novick of Law Offices of Mitchell P. Novick for Nationwide Auto Lease LLC. _____ Before Zervas, Kuczma and Coggins, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On July 19, 2016, Registration No. 5005305 (the “’305 registration”) for the standard character mark NATIONWIDE AUTO LEASE issued on the Supplemental Register to Nationwide Auto Lease LLC (“Respondent”) for “on-line automobile brokerage providing facilitation of financing relating to vehicles” in International Class 36, and “on-line automobile brokerage providing facilitation of leasing of Cancellation No. 92067046 - 2 - vehicles” in International Class 39. The ’305 registration, based on an application filed on August 14, 2015, contains a disclaimer of the words AUTO LEASE, and claims first use and first use in commerce for both services on June 27, 2013. Nationwide Mutual Insurance Company (“Petitioner”) filed a Petition to Cancel1 the ’305 registration, alleging, inter alia, ownership of 16 registrations for marks comprising or including the term NATIONWIDE, including the following Principal Register registrations for marks either in typed2 or standard character form: Mark Reg. No. Reg. Date International Class 36 Services NATIONWIDE 0854888 Aug. 13, 1968 underwriting and sale of all lines of insurance, including fire, life, and casualty NATIONWIDE 2017147 Nov. 19, 1996 financial services, namely, the brokerage and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, and stocks and bonds NATIONWIDE FINANCIAL (FINANCIAL disclaimed) 2788512 Dec. 2, 2003 insurance and financial services, namely, life insurance underwriting; annuity underwriting; mutual fund investment; administration of pension plans, retirement accounts and retirement plans; asset management services NATIONWIDE BANK (BANK disclaimed) 3308449 Oct. 9, 2007 Banking services NATIONWIDE 3328989 Nov. 6, 2007 Providing banking services to others 1 1 TTABVUE 1-148. Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry where the cited materials appear. 2 In applications filed before November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed drawing is the legal equivalent of a standard character drawing. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.03(i) (2021). Cancellation No. 92067046 - 3 - Petitioner seeks cancellation of the ’305 registration pursuant to Section 24 of the Trademark Act, 15 U.S.C. § 1092, alleging likelihood of confusion with its registered marks containing the term NATIONWIDE.3 Respondent filed an answer to the Petition to Cancel in which it denied the salient allegations in the Petition. The parties have fully briefed the case. I. The Record The record in this case consists of the pleadings (including the registration records for the pleaded registrations pursuant to Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d), showing active status and title in Petitioner’s name submitted with the Petition to Cancel) and the file of the involved registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). In addition, the record contains the following: A. Evidence submitted by Petitioner 1. Petitioner’s trademark App. No. 87275009 for the mark NATIONWIDE for “providing an on-line searchable database featuring automobiles for sale and directory of automobile dealerships” in International Class 35 and “financing relating to automobiles; payment processing services in the field of automobiles, automobile loan, and automobile leasing payments” in International Class 36, and its file history, including the August 30, 2017 final 3 Section 24 of the Trademark Act provides the authority for cancellation of a Supplemental Register registration. Petitioner also alleged dilution of its marks in its Petition to Cancel and cited to Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). In its cover sheet to its Petition to Cancel, Petitioner identifies a non-ownership claim, and cited to Sections 1 and 14(a) of the Trademark Act, 15 U.S.C. §§ 1051 and 1064. The Petition to Cancel does not mention this claim. At briefing, Petitioner pursued only its likelihood of confusion claim. Its other claims, therefore, are deemed waived. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014); Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013) (opposer’s pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015). Cancellation No. 92067046 - 4 - Office Action in which the assigned examining attorney refused registration in view of the ’305 registration (First Notice of Reliance, 43 TTABVUE). 2. USPTO records for Petitioner’s trademark Reg. Nos. 0854888, 1793850, 2017147, 2282077, 2371088, 2811277, 2788512, 2827490, 3328956, 3328989, 3119130, 3199372, 3308449, 4641345, 5394152, 6166753, 6166756, 6113647 and 6113648 showing active status (Second Notice of Reliance 44 TTABVUE). 3. Excerpts from Respondent’s Fed. R. Civ. P. 30(b)(6) Deposition (Third Notice of Reliance and Rebuttal Notice of Reliance, 45 TTABVUE and 54 TTABVUE, respectively). 4. Official records and Internet materials (Fourth Notice of Reliance, 46 TTABVUE). 5. Confidential Testimonial Declaration of Rick Jackson, Petitioner’s “Vice President, Enterprise Advertising” (47 TTABVUE). 6. Non-Confidential version of Mr. Jackson’s Testimonial Declaration, with exhibits (48 TTABVUE). B. Evidence submitted by Respondent 1. Confidential Testimonial Declaration of Mr. Eliyahu Shmalo, Respondent’s founder (50 TTABVUE). 2. Non-confidential version of Mr. Shmalo’s Testimonial Declaration (51 TTABVUE). 3. Respondent’s Notice of Reliance submitting various documents (49 TTABVUE). II. Petitioner’s Evidentiary Objection and Motions to Strike Respondent’s Notice of Reliance Petitioner filed a timely motion to strike the entirety of Respondent’s Notice of Reliance, asserting that the Notice of Reliance is deficient because (i) the documents submitted which appear to be Internet materials do not reference a source (URL) and/or date of publication; (ii) several documents appear to be Respondent’s own, Cancellation No. 92067046 - 5 - private documents that it produced during discovery in response to Petitioner’s document requests; and (iii) the Notice of Reliance does not state the relevance of the materials it offers, as required under Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g), and Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1037-40 (TTAB 2010).4 See also Calypso Tech. Inc. v. Calypso Cap. Mgmt. LP, 100 USPQ2d 1213, 1216 (TTAB 2011) (“A party seeking to make evidence of record by notice of reliance must follow the rules and case law; if material cannot be made of record by notice of reliance it will not be considered even if the adverse party does not specifically object to it, as long as the adverse party does not specifically treat it as of record such that we can say it has been stipulated into the record.”); Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.02 (2021). In response, Respondent offered to correct any actual defects in its Notice of Reliance within twenty days or within a time set by the Board, should the Board order a time for correction.5 In its renewed motion to strike submitted with its main brief, Petitioner states that it “is unaware of any action that has been taken by Respondent to review and correct the defects.”6 Petitioner also objected to all of the documents 4 Motion to Strike, 52 TTABVUE 48-51. 5 Response to Motion to Strike, 53 TTABVUE 2. See TBMP §§ 532 (“If, upon motion to strike a notice of reliance on the ground that it does not meet the procedural requirements of the rule under which it was filed, the Board finds that the notice is defective, but that the defect is curable, the Board may allow the party that filed the notice of reliance time within which to cure the defect, failing which the notice will stand stricken.”) and § 707.02(b). 6 Renewed Motion to Strike, 57 TTABVUE 44-52. Cancellation No. 92067046 - 6 - submitted by Respondent on the ground of lack of authentication in its renewed motion to strike.7 Even though Petitioner’s original motion was timely and addressed procedural requirements, the motion remains undecided. Because this proceeding has been fully briefed and a decision on the motion would leave Respondent without much of its evidence, and because of the result we reach herein, we deny the motion to strike, the renewed motion to strike and Petitioner’s evidentiary objection, despite their merits. We have considered the all of the evidence submitted with Respondent’s Notice of Reliance and give it appropriate weight. III. Entitlement to a Statutory Cause of Action “Even though [Respondent] in [its] brief do[es] not contest [Petitioner’s] entitlement to invoke the statutory causes of action of … a cancellation, such is an element of the plaintiff’s case in every inter partes proceeding.” Chutter, Inc. v. Great Mgmt. Grp., LLC, 2021 USPQ2d 1001, *10 (TTAB 2021); see also Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020), cert. denied, __ S. Ct. __ (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, __ U.S. __ (2021); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute, and (ii) a 7 Id., 57 TTABVUE 51-52. Cancellation No. 92067046 - 7 - reasonable belief in damage proximately caused by the registration of the mark. Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388 at *1 (TTAB 2020) (citing Corcamore, 2020 USPQ2d 11277, at *4). See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).8 Petitioner has introduced USPTO records for its pleaded registrations for marks containing the term NATIONWIDE for various services showing active status and ownership by Petitioner.9 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Also, Petitioner’s evidence establishes that its pending application (Serial No. 87275009) for the mark NATIONWIDE, pleaded in the Petition to Cancel, has been refused registration in view of the ’305 registration.10 See Lipton Indus., 213 USPQ at 189 (“Thus, to have standing in this case, it would be sufficient that [plaintiff] prove that it filed an application and that a rejection was made because of [defendant’s] registration.”); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (pending application refused registration based on 8 The Board no longer analyzes the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Corcamore, 2020 USPQ2d 11277 at *6- 7 (“standing” is more appropriately referred to as entitlement to bring a statutory cause of action). Despite the change in nomenclature, our prior decisions and those of the Court of Appeals for the Federal Circuit interpreting Sections 13 and 14 remain applicable. See Spanishtown Enters., 2020 USPQ2d 11388 at *2. 9 Petition to Cancel, 1 TTABVUE 2-148; Petitioner’s Second Notice of Reliance Exhibits A-S, 44 TTABVUE 11-163. 10 Petitioner’s First Notice of Reliance, Exhibit A, 43 TTABVUE 4-131. Cancellation No. 92067046 - 8 - a likelihood of confusion with mark in respondent’s registration shows petitioner has real interest in proceeding, and has standing). In view of the foregoing we find that Petitioner has established its entitlement to a statutory cause of action. IV. Priority In a cancellation proceeding involving a likelihood of confusion claim under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), the petitioner must prove its priority as an element of its claim. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). A petitioner who owns a Principal Register registration may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Brewski Beer, 47 USPQ2d at 1284. Its “proven first use date of its mark would then be the filing date of the application.” Brewski Beer, 47 USPQ2d at 1284. A respondent with a Supplemental Register registration, however, may not rely on the application filing date of its registration because a Supplemental Register registration is entitled to none of the presumptions of Section 7 of the Trademark Act, Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255 (TTAB 2012). Such a registration is incompetent as evidence of Respondent’s first use of its mark. 15 U.S.C. §§ 1057(b) and 1094. Cancellation No. 92067046 - 9 - Respondent does not identify its priority date for use of NATIONWIDE AUTO LEASE in its brief, but Mr. Shmalo testified, “NATIONWIDE AUTO LEASE was founded in 2013.”11 Even if Respondent establishes 2013 as the time when it first used its mark, it does not have priority. The filing dates of Petitioner’s pleaded Principal Register registrations mentioned above, i.e., Registration Nos. 0854888, 2017147, 2788512, 3308449 and 3328989, are earlier than 2013. We therefore find that Petitioner has priority for those services identified in those registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). V. Likelihood of Confusion A registration on the Supplemental Register may be canceled at any time if the registrant is found to be not entitled to registration. Trademark Act Section 24; see also Blanchard Importing & Distrib. Co. v. Societe E. Blanchard et Fils, 402 F.2d 797, 159 USPQ 520, 523 (CCPA 1968); Bruce Foods Corp. v. B.F. Trappey’s Sons, Inc., 192 USPQ 725, 727 (TTAB 1976). As in all claims under Section 2(d) of the Trademark Act, likelihood of confusion is determined by focusing on whether the purchasing public would mistakenly assume that the respondent’s services originate from the same source as, or are associated with, the petitioner’s services. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of 11 Shmalo Decl. ¶ 3, 51 TTABVUE 3. Cancellation No. 92067046 - 10 - confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). While we consider each DuPont factor for which there is record evidence, we focus our analysis on those factors that we believe are the most relevant here. In every likelihood of confusion analysis, of course, two key factors are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098 , 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). In this case, the DuPont fame factor is also important because fame of the prior mark, where present, “plays a dominant role in cases featuring a famous or strong mark. Famous or strong marks enjoy a wide latitude of legal protection fame.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). We thus first consider the DuPont factor of fame. A. The Fame of Petitioner’s Mark. Petitioner argued that its various NATIONWIDE marks are famous for insurance and financial services.12 “Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party 12 57 TTABVUE 33. Cancellation No. 92067046 - 11 - asserting that its mark is famous to clearly prove it.” Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1438 (TTAB 2014) (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). The fame of a mark may be “measured indirectly by, among other things, the volume of sales of the [services] traveling under the mark, advertising expenditures related to the mark and the [services], and the length of time those indicia of commercial awareness have been evident.” Promark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1245 (TTAB 2015). “When the numbers are large, they may suffice to prove fame for likelihood of confusion purposes, assuming relevant textual indicators support that conclusion.” Id. (citing Bose, 63 USPQ2d at 1305-06). As stated in Mr. Jackson’s declaration (48 TTABVUE), Petitioner began providing insurance products and services under the Nationwide name in 1955, and began offering financial services under the Nationwide name in 1955. (¶ 8). In addition, Petitioner began providing banking services under the Nationwide name in 2007, and prior to that used the Nationwide trade name with credit union services since 1955. (¶ 9). It has been providing automobile loans to consumers under the Nationwide name since 1983. (¶ 9). Mr. Jackson further testifies that since 2012, Petitioner’s sales and assets since 2012 have reached billions of dollars. (¶ 6); and it has spent well over a billion dollars on advertising, marketing and promotion of the NATIONWIDE brand and its services. (¶ 12). Petitioner has spent millions of dollars on digital advertising, social media and its websites in connection with its insurance and financial services Cancellation No. 92067046 - 12 - products, with millions of visits to its www.nationwide.com website. (¶ 14). For the year 2019, Petitioner had $49.3 billion in sales and $253.6 billion in assets. (¶ 6).13 Petitioner is ranked No. 74 on the Fortune 100 list of companies. (¶¶ 7, 16).14 Petitioner’s slogan “Nationwide Is On Your Side” was featured in an episode of the television series “Mad Men” in 2013 and discussed in an April 4, 2013 New York Times article. (¶ 7).15 Other advertising campaigns feature popular artists such as Brad Paisley, Rachel Platten and Leslie Odom, Jr. (¶ 18). Petitioner has engaged in sponsorships under the NATIONWIDE brand over the past 20 years. From 2003 until 2012, Petitioner held “the naming rights for the second-highest men’s professional golf tour in the United States.” (¶ 19). All of the Nationwide Tour golf events were nationally televised and reported on throughout the United States. (¶ 19). Petitioner is the presenting sponsor of the Jack Nicklaus Memorial golf tournament, a nationally televised PGA Tour event held every year. (¶ 19). Petitioner has spent tens of millions of dollars on its sponsorship of the Memorial tournament. (¶ 19). In addition, Petitioner was the title sponsor of the NASCAR Nationwide Series auto racing series from 2008 through 2014. (¶ 20). Petitioner is a part-owner of the Columbus Blue Jackets, and their arena is named Nationwide Arena. (¶ 21). Nationwide Arena has hosted numerous sporting events, concerts, and other events “throughout its years.” (¶ 21). 13 See also Exhibit 1, 48 TTABVUE 13-189. 14 See also Exhibit 2, 48 TTABVUE 190-194. 15 See also Exhibit 10, 48 TTABVUE 230-232. Cancellation No. 92067046 - 13 - Petitioner is the official insurance sponsor of the National Football League (NFL) and has partnerships with various NFL teams and current and former players including Peyton Manning. (¶ 22).16 Since 2017, Peyton Manning and country music singer Brad Paisley have appeared in Petitioner’s advertisements. (¶ 22).17 Petitioner is also a sponsor of the “Columbus Crew SC (Major League Soccer) and Minor League Baseball.” (¶ 23). Mr. Shmalo, Respondent’s principal, has acknowledged the strength of Petitioner’s NATIONWIDE mark, stating, “I agree that Petitioner has a large and successful business with many registered trademarks and well-known branding.”18 We find, on the basis of the evidence of record, that Petitioner proved that its NATIONWIDE mark is famous for insurance services. The record also shows that Petitioner’s expansion of the use of the NATIONWIDE mark into businesses other than insurance, including banking, has involved leveraging the goodwill of the famous NATIONWIDE mark for insurance services by associating other of its businesses engaged in non-insurance services that use the NATIONWIDE mark with its insurance business. The fame of the NATIONWIDE mark for insurance services thus “casts a long shadow which competitors must avoid,” Kenner Parker Toys, 22 USPQ2d at 1456, and the DuPont factor regarding fame strongly supports a finding of likelihood of confusion. 16 48 TTABVUE 10; 46 TTABVUE 15-17. 17 48 TTABVUE 10. 18 Shmalo Decl. ¶ 14, 51 TTABVUE 4. Cancellation No. 92067046 - 14 - B. Similarity of the Marks. We turn now to the DuPont factor regarding the similarity of the parties’ marks. We focus on a comparison of Respondent’s NATIONWIDE AUTO LEASE mark to the NATIONWIDE mark shown in Petitioner’s Registration Nos. 0854888 (for various insurance services) and 3328989 (for banking services). We do so because Petitioner’s arguments pertaining to its services principally pertain to the services identified in these registrations, and Petitioner’s other registered marks are less similar to Respondent’s mark than are these registered marks. If a likelihood of confusion does not exist with respect to the marks in these registrations, it does not exist with respect to Petitioner’s other registered marks. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015); In re Max Cap. Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). We compare the parties’ marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). In the course of comparing the marks in their entireties, there is nothing improper in stating that, for rational reasons, more weight has been given to Cancellation No. 92067046 - 15 - a particular feature of the marks, a “dominant” portion, provided that our ultimate conclusion rests upon a comparison of the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We find that NATIONWIDE is the dominant portion of Respondent’s registered mark NATIONWIDE AUTO LEASE for its online automobile brokerages services because NATIONWIDE is the first portion of the mark, and the disclaimed wording AUTO LEASE appears to be generic for Respondent’s services. See In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, *23 (TTAB 2021) (“Applicant disclaimed FIRM.COM on the Supplemental Register and therefore has conceded it is generic.”); In re James Haden, M.D., P.A., 2019 USPQ2d 467424, *5 (TTAB 2019) (“Generic matter must be disclaimed to permit registration on the Supplemental Register.”). Cf., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” was the dominant portion of the mark THE DELTA CAFE). We find that the parties’ marks are very similar in appearance, sound, connotation and commercial impression when they are considered in their entireties. Petitioner’s mark comprises the word NATIONWIDE and Respondent’s mark begins with the same dominant word NATIONWIDE, and “upon encountering each mark, consumers must first notice this identical lead word.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (CENTURY LIFE OF AMERICA for insurance underwriting services found to be confusingly similar to CENTURY 21 for real estate brokerage, insurance brokerage, and mortgage Cancellation No. 92067046 - 16 - brokerage services). The only difference between Petitioner’s registered NATIONWIDE mark and Respondent’s NATIONWIDE AUTO LEASE mark is the presence in Respondent’s mark of the term AUTO LEASE, which has no source- identifying significance. The term AUTO LEASE, when combined with NATIONWIDE, could easily be viewed and understood as identifying an affiliate of Petitioner in the auto leasing business, in the same way that Petitioner’s pleaded registered marks NATIONWIDE ADVANTAGE MORTGAGE COMPANY (Registration No. 3199372), NATIONWIDE FINANCIAL (Registration No. 2788512) and NATIONWIDE BANK (Registration No. 3308449) identify Petitioner’s mortgage, investment and banking businesses. Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is generic, descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See, e.g., Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (STONE LION CAPITAL found to be confusingly similar to LION CAPITAL and LION where LION was the dominant part of both parties’ marks); Palm Bay Imps., 73 USPQ2d at 1692 (VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN found to be confusingly similar to VEUVE ROYALE where VEUVE was the dominant portion of both parties’ marks). We find that Respondent’s registered mark is very similar to Petitioner’s NATIONWIDE mark in appearance, sound, connotation, and commercial impression. Cancellation No. 92067046 - 17 - The first DuPont factor therefore weighs in favor of finding a likelihood of confusion. C. Similarity/Dissimilarity of Services and Channels of Trade The second and third DuPont factors assess the similarity or dissimilarity of the parties’ goods and services and their established, likely-to-continue trade channels. The question of likelihood of confusion must be determined based on an analysis of the marks as applied to the services as identified in each party’s registration, regardless of what the record may reveal as to the particular nature of each party’s services, the particular channels of trade or the class of purchasers to which sales of the services are directed. See Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is well established that it is not necessary that the services of the involved application and cited registration be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective services are related in some manner, and/or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. Coach Servs., 101 USPQ2d at 1722; Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, 54 Cancellation No. 92067046 - 18 - USPQ2d at 1898 (“[E]ven if the [services] in question are different from, and thus not related to, one another in kind, the same [services]can be related in the mind of the consuming public as to the origin of the [services].”). Turning first to Respondent’s International Class 36 services, “on-line automobile brokerage providing facilitation of financing relating to vehicles,” we consider Petitioner’s Registration No. 3328989 for the mark NATIONWIDE for “Providing banking services to others.” “Banking” is defined as “the business of a bank or a banker,” and “bank” is defined as “an establishment for the custody, loan, exchange, or issue of money, for the extension of credit, and for facilitating the transmission of funds.”19 Banks, of course, provide financing for the acquisition of vehicles. Because a purchaser of a vehicle would look not only to a bank for financing, but also would look to a broker who facilitates vehicle financing for the same purpose, to obtain a vehicle loan, we find the services to be inherently related to one another. Turning next to Respondent’s International Class 39 services, “on-line automobile brokerage providing facilitation of leasing of vehicles,” we consider Petitioner’s Registration No. 0854888 for the mark NATIONWIDE for services including “underwriting and sale of all lines of insurance, including fire, life, and casualty.” Included within Respondent’s identification of services is the underwriting and sale 19 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice of these two definitions, accessed on November 1, 2021, at https://www.merriam- webster.com/dictionary/banking and https://www.merriam-webster.com/dictionary/bank. Cancellation No. 92067046 - 19 - of gap insurance.20 “Gap insurance provides insurance coverage for the gap between a car’s value and how much is owed on a loan or lease for that car.”21 Lenders often require that consumers purchase gap insurance, including for leased vehicles.22 Respondent’s founder testified that anyone leasing a vehicle must have insurance in order to lease a car, and that he was certain that some of Respondent’s customers had asked him for a referral for car insurance.23 We therefore find that Petitioner has established that Petitioner’s insurance services and Respondent’s International Class 39 services are related to one another. With regard to trade channels and classes of purchasers, Respondent’s submissions reflect that it has a social media presence and a website (nationwideautolease.com) promoting its online services.24 An agreement with swapalease.com demonstrates that Respondent contracted to advertise on the swapalease.com website,25 and Respondent appears on the webpages for Angie’s List, Zoominfo, The Real Yellow Pages and merchantcircle.com.26 Mr. Shmalo testified that he was not sure that Respondent had ever conducted advertising or marketing that was not online.27 However, Respondent’s identified services need not be restricted to 20 Petitioner has provided gap insurance. See Jackson Decl., Exhibit 7, 48 TTABVUE 221-23. 21 Jackson Decl. ¶ 10, 48 TTABVUE 6. 22 48 TTABVUE 223. 23 Respondent’s Rule 30(b)(6) Depo., 45 TTABVUE 24-29. (“They have to have insurance to lease a car.” 45 TTABVUE 24.) 24 Respondent’s Notice of Reliance, 49 TTABVUE 2-11. 25 Id., 49 TTABVUE 71. 26 Id., 49 TTABVUE 59-89. 27 Respondent’s Rule 30(b)(6) Depo., 45 TTABVUE 21-22. Cancellation No. 92067046 - 20 - online trade channels. For example, the record reflects a license plate frame with Respondent’s mark.28 Respondent argues that the channels of trade of auto leasing and auto financing are “distinct[ ],” but does not cite to any evidence to support its argument.29 “Attorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005); see also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018). Also, when a “registration does not contain limitations describing a particular channel of trade or class of customer, the goods or services are assumed to travel in all normal channels of trade.” Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000). A registration with no restriction on trade channels cannot be “narrowed by testimony that the [registrant’s] use is, in fact, restricted to a particular class of purchasers.” Stone Lion, 110 USPQ2d at 1162. Respondent thus must be deemed to be marketing its services through all normal channels of trade for those services. Mr. Jackson testified that Petitioner “has used (and continues to use) all forms and channels of advertising for its services under the NATIONWIDE mark. [Petitioner] has used (and continues to use) print advertising in both national and local publications, as well as billboards, to promote the Nationwide brand. Nationwide also has used (and continues to use) television and radio advertising and 28 Id., 49 TTABVUE 39. 29 60 TTABVUE 6. Cancellation No. 92067046 - 21 - sponsorships to promote the Nationwide brand.”30 Petitioner too has an internet presence through websites such as www.nationwide.com, and has engaged in digital advertising and social media marketing to develop greater brand awareness of the NATIONWIDE brand and its insurance and financial services products. (¶ 14).31 The record contains no evidence, beyond Respondent’s own activities, as to what all of the trade channels for Respondent’s identified services are, however, and as to the extent, if any, to which Respondent’s current online advertising overlaps with the trade channels through which Petitioner promotes its insurance and banking services, including the specific Internet and social media channels through which Petitioner promotes its insurance and banking services. We thus find that this DuPont factor is neutral in our analysis of likelihood of confusion. D. Balancing the Factors The DuPont factors regarding the fame of Petitioner’s NATIONWIDE mark for insurance services, the similarity of the parties’ marks, and the similarity of the parties’ services, all strongly support a finding of likelihood of confusion. The DuPont factor regarding trade channels is neutral in our analysis. On the basis of the record as a whole, we find that Petitioner proved by a preponderance of the evidence that Respondent’s NATIONWIDE AUTO LEASE mark for its identified services is likely to cause confusion as to source or sponsorship with Petitioner’s NATIONWIDE mark for its identified services, and we grant the Petition to Cancel. 30 Jackson Decl. ¶ 13, 48 TTABVUE 7-8. 31 Id., 48 TTABVUE 8; see also Jackson Decl. ¶ 23, 48 TTABVUE 10-11. Cancellation No. 92067046 - 22 - Decision: The Petition to Cancel is granted. Registration No. 5005305 will be cancelled in its entirety in due course.