NexBank Capital, Inc.v.NexBank Capital, Inc.

Trademark Trial and Appeal Board

Jul 14, 2020

86394529 (T.T.A.B. Jul. 14, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NexBank Capital, Inc.
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Serial No. 86394529
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Jerry C. Harris, Jr. of Wick Phillips Gould & Martin, LLP,
for NexBank Capital, Inc.
Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Cataldo, Wolfson, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
NexBank Capital, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark NEXBANK (in standard characters) for:
Financial affairs and monetary affairs, namely, financial
information, management and analysis services; banking
services; financial research; financial information;
financial analysis; financial advice; financial planning;
financial consultation; financial management; investment
brokerage; investment consultation; investment
management; investment advice; mutual fund investment;
real estate lending; commercial lending for corporations;
financial services, namely, management of treasury notes;
loan servicing; securities deposit services; mortgage
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banking; acquisition and merger consultation; corporate
finance services, namely, consultation in the field of asset
sales; in International Class 36.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the services identified in the application, so resembles the following marks owned
by different entities:
 for “banking services for
young adults,” in International Class 36;2 and
 NXT BANK (in standard characters, with “bank”
disclaimed) for “banking services; and personal and
commercial insurance brokerage,” in International
Class 36;3
on the Principal Register as to be likely to cause confusion, to cause mistake, or to
deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for reconsideration
the appeal was resumed and eventually briefed.4 The appeal was suspended when it
came to the Board’s attention that Registration No. 4380835, one of the registrations

1 Application Serial No. 86394529 filed on September 15, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as July 18, 2005.
2 Registration No. 4380835, issued August 6, 2013.
3 Registration No. 4978333, issued June 14, 2016.
4 We presume the familiarity of Applicant and the Examining Attorney with the lengthy
procedural history of this appeal.
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which formed the basis for refusal under Section 2(d), was near the end of the grace
period for a required Section 8 Declaration of Use and/or Excusable Nonuse. See 21
TTABVUE. Inasmuch as no Section 8 affidavit or declaration was filed, Registration
No. 4380835 was ministerially cancelled on March 13, 2020. In view thereof, the
appeal is resumed, and we now determine the Section 2(d) refusal only as to
Registration No. 4978333 (NXT BANK), the remaining registration. As discussed
below, we reverse the refusal to register.
I. Evidentiary Issue
Before turning to the merits of the appeal, we address an evidentiary matter
resulting from Applicant’s attachment to its reply brief of a printout of a website
(nxtplatform.org) that was not made of record during examination. 18 TTABVUE 10-
14.5 Applicant cites this exhibit in support of a new argument that the “term ‘NXT’
has a particular meaning in banking parlance.” Id. at 6.
The new website evidence was not made of record during prosecution, and we
exclude it because it is untimely.6 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section
1203.02(e) (June 2020) and cases cited therein. We have given no consideration to
this material or Applicant’s related arguments in its reply brief. See In re Luxuria,

5 References to the briefs and other materials in the appeal record refer to the Board’s
TTABVUE docket system. Citations to the prosecution file refer to the USPTO’s Trademark
Status & Document Retrieval system (“TSDR”) and identify documents by title, date, and
page number of the downloadable .pdf version of the TSDR record.
6 We act sua sponte because the evidence was attached to Applicant’s reply brief, and the
Examining Attorney thus had no opportunity to address it.
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s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011) (untimely materials attached to reply
brief excluded and “because even a cursory review of the reply brief indicates that the
brief discusses this material at length, applicant ’s reply brief has not been
considered”).
II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)
(“DuPont”). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the services. See
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.”). When analyzing the factors, the overriding concerns are not only to prevent
buyer confusion as to the source of the services, but also to protect the registrant from
adverse commercial impact due to use of a similar mark by a newcomer. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
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A. The Services, Channels of Trade, and Classes of Consumers
We begin with the second and third DuPont factors. The second factor “considers
‘[t]he similarity or dissimilarity and nature of the goods or services as descr ibed in an
application or registration,”’ In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567), and the third factor
“considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade
channels.”’ Id. at 1052 (quoting DuPont, 177 USPQ at 567).
The Examining Attorney points out that both Applicant’s and Registrant’s
recitation of services includes, inter alia, “banking services.” 17 TTABVUE 5. We
agree and accordingly find that the services are in part identical. Applicant does not
argue otherwise.
Under the second DuPont factor, the Examining Attorney need not prove, and we
need not find, similarity as to each activity listed in the identification of services. It
is sufficient for a refusal based on likelihood of confusion that we find any activity
that comes within the recitation of services in a particular class in the application
related to any of the services within the cited registration. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015) (“[I]t is sufficient for finding a likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods within a
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particular class in the application.”). The second DuPont factor thus supports a
finding of a likelihood of confusion.
Because the services identified in the application and the cited registration are in
part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB
2018), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019) (“Because the services described
in the application and the cited registration are identical, we presume that the
channels of trade and classes of purchasers are the same.”). The third DuPont factor
thus also supports a finding of a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks in Their Entireties
The first DuPont factor considers the “similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.” In
re Detroit Athletic Co., 128 USPQ2d at 1048. “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.” Cai v. Diamond Hong,
127 USPQ2d at 1801 (quotation omitted). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)
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(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Where, as discussed above, services are
in part identical, “the degree of similarity necessary to support a conclusion of likely
confusion declines.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012).
Applicant’s mark is NEXBANK, and the registered mark is NXT BANK with the
generic word BANK disclaimed. The marks look and sound similar to the extent that
each is comprised of an initial three-letter portion (i.e., NEX or NXT) followed by the
generic word BANK. However, it is well settled that disclaimed, descriptive matter
may have less significance in likelihood of confusion determinations. See Detroit
Athletic, 128 USPQ2d at 105 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.”’) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
There is nothing improper in stating that, for rational reasons, we give more or
less weight to a particular feature of a mark, such as a common dominant element,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re Viterra Inc., 101 USPQ2d at 1908; In re Nat’l Data Corp., 224 USPQ
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at 751. Thus, we give greater weight to the distinctive NXT element of Registrant’s
mark. The significance of NXT, and its dominance, is reinforced not only by its being
the only distinctive portion of Registrant’s mark, but also by its location as the first
part of the mark. See, e.g., Detroit Athletic, 128 USPQ2d at 1049. For similar reasons,
we consider the NEX- element of Applicant’s mark to be the dominant portion of
NEXBANK.
Applicant argues that the NXT element of Registrant’s mark and the NEX-
element of its own mark “look[] and sound[] entirely different, providing distinctive
commercial impressions.” 12 TTABVUE 13. We agree.
The Examining Attorney’s multi-step argument is that NXT is an abbreviation for
“next,” and the NEX- element of Applicant’s mark sounds like the word “next.” 17
TTABVUE 10. In support of this argument, the Examining Attorney points to a
screen shot from acronymfinder.com showing that one meaning of NXT is “Next.”7
October 2, 2017 Office Action TSDR 9-10. Applicant argues that the Examining
Attorney has not shown that NXT would be pronounced as “next,” and it is more likely
that NXT would be pronounced as three distinct letters: N, X, and T. 18 TTABVUE
6.
The acronymfinder.com screen shot does not indicate how NXT would be
pronounced, and neither the sound of NXT as posited by the Examining Attorney nor
its meaning as demonstrated by acronymfinder.com is corroborated by the record, for

7 The other meaning of NXT listed by acronymfinder.com is “NITE XML (Extensible Markup
Language) Toolkit.” October 2, 2017 Office Action TSDR 10.
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example, by a dictionary definition, news article, or any other evidence to persuade
us that consumers would pronounce NXT as “next” – as opposed to N-X-T – or
understand NXT as meaning “next” when the NXT BANK mark appears in
conjunction with Registrant’s banking and insurance services. The evidence of record
does not support that NXT is itself a common English word, and it is well-established
that “there is no correct pronunciation of a trademark.” In re Viterra Inc., 101
USPQ2d at 1912; see also In re Lebanese Arak Corp., 94 USPQ2d 1215, 1219 (TTAB
2010) (stating that “it has long been held that there is no correct pronunciation of a
trademark that is not a recognized English word”). Although there is no “correct” way
to verbalize the two NXT and NEX portions of the marks before us, we find a likely
pronunciation of NXT in Registrant’s mark to be as three separate letters N-X-T,
while NEX in Applicant’s mark is likely to be pronounced as “nĕks.” We find that the
marks sound dissimilar to the extent NXT would be pronounced as three separate
letters N-X-T.
Applicant argues that the NEX portion of its NEXBANK mark evokes “the idea of
a nexus, that is, an intersection/integration of the different, but related services
provided by Applicant under [its] mark.” 12 TTABVUE 14. While the Examining
Attorney argues that Registrant’s mark NXT BANK conveys the commercial
impression of “next bank,” 17 TTABVUE 10, she offers no evidence as to the
commercial impression of Applicant’s mark. Similarly, the record contains no
evidence that NEX has any meaning, and certainly no connotation when used in
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connection with Applicant’s financial services. Indeed, we can think of few words
which begin with NEX-, but “next” and “nexus” are among them.
We find that while the marks have some similarities, they also have differences
that affect their overall appearance, sound, connotation, and commercial impression
when compared in their entireties as NXT BANK and NEXBANK. We find the
Examining Attorney’s multi-step approach to the similarity of the marks slightly too
tenuous on the sparse record before us to convince us that confusion is likely, rather
than merely possible.8 The first DuPont factor weighs against a finding of a likelihood
of confusion.
C. Summary and Conclusion
While we find that the services are in part identical, and we presume that the
channels of trade and classes of purchasers are the same, the dissimilarity in the
overall connotation and commercial impression of the marks outweighs their
similarities such that confusion is not likely. See Kellogg Co. v. Pack’em Enters. Inc.,
951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why,
in a particular case, a single duPont factor may not be dispositive.”); Oakville Hills
Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed.
Cir. 2016) (“[A] single DuPont factor may be dispositive in a likelihood of confusion
analysis, especially when that single factor is the dissimilarity of the marks”) (quoting

8 We observe that the only evidence relating to sound, connotation, or commercial impression
of either mark is the single page from acronymfinder.com, and on a different record, such as
might be adduced in an inter partes opposition or cancellation proceeding, we might come to
a different result on this factor.
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Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d
2030, 2032 (Fed. Cir. 2010) (“[E]ven if all other relevant DuPont factors were
considered in [opposer’s] favor, as the board stated, the dissimilarity of the marks
was a sufficient basis to conclude that no confusion was likely.”)).
III. Decision
The refusal to register Applicant’s mark NEXBANK is reversed.