Bank of Internet USA

This Opinion is Not a
Precedent of the TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Bank of Internet USA
_____

Serial No. 85237380

_____

Ann K. Ford and David M. Kramer of DLA Piper LLP (US),
for Bank of Internet USA.

Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Steven Berk, Managing Attorney.

_____

Before Zervas, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Bank of Internet USA (“Applicant”) seeks registration on the Supplemental

Register of the mark NETBANK, in standard character form, for services ultimately

identified as:

Checking and savings account services; bill payment services, namely,
administration of electronic processing and transmission of bill payment
data; bank card, debit card and electronic payment card services; money
transmission services, namely, electronic transfer of money; mortgage
lending services; financing of loans; arranging and provision of loans; all
Serial No. 85237380

of the foregoing provided in connection with a bank,” in International
Class 36.1

The Examining Attorney refused registration of Applicant’s mark under

Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,

mistake, or to deceive, based on two prior registrations, both owned by the same

registrant, as follows:

1. NETBANX, in standard characters, and registered on the Principal Register,

for:2

Payment processing facilities and payment service provider services to
on-line and other merchants, namely, processing payments made by
consumers to merchants through on-line computer networks, call
centers and automated telephone lines; purchaser transaction
verification for e-commerce transactions; stored-value account
processing, namely, providing consumers with an e-wallet account for
use in making secure online payments to merchants for future
purchases; currency conversion, namely, providing merchants with the
ability to convert consumers’ payments in other currencies, to the
businesses’ preferred currency and to inform the consumers of the
conversion rates used at point of sale; and merchant bureau services,
namely, facilitating merchants to receive payments from various
payment providers through recommending them and providing
indemnities to banks, in International Class 36

2. NETBANX CHECKOUT, in standard characters, and registered on the

Principal Register, with a disclaimer of “CHECKOUT,” for:3

Credit card payment processing services and electronic foreign exchange
payment processing services; straight-through credit card payment

1Serial No. 85237380, filed on February 8, 2011, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), with a Statement of Use filed January 28, 2014, alleging dates of first
use and use in commerce on October 25, 2012.
2Registration No. 4223571, issued October 16, 2012. Sections 8 and 15 affidavits accepted
and acknowledged.
3 Registration No. 5273556, issued August 29, 2017.

-2-
Serial No. 85237380

processing services; electronic funds transfer services, in International
Class 36.

When the refusal was made final, Applicant filed a timely appeal.4 Both Applicant

and the Examining Attorney filed briefs. For the reasons discussed herein, we affirm

the Section 2(d) refusal to register.

I. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an

analysis of the probative facts in evidence that are relevant to the factors bearing on

a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin

Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In

considering the evidence of record on these factors, we keep in mind that “[t]he

fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of

differences in the essential characteristics of the goods [or services] and differences

in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB

2014). We further note that “[n]ot all of the [du Pont] factors are relevant to every

case, and only factors of significance to the particular mark need be considered.”

Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719

4Applicant had previously filed an appeal of other refusals, which were withdrawn by the
Examining Attorney during further prosecution. After the refusal discussed herein was
made final, the appeal was resumed.

-3-
Serial No. 85237380

(Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,

1259 (Fed. Cir 2010)).

As noted, as grounds for the refusal, the Examining Attorney cited two previously

registered marks. Both are owned by the same registrant. We find the mark in cited

Registration No. 4223571, which is comprised solely of the term NETBANX in

standard characters, to be the most relevant for our du Pont analysis, and we proceed

accordingly. If we find a likelihood of confusion as to this registration, we need not

reach the other. On the other hand, since this is the most relevant registration, if we

find no likelihood of confusion as to this registration, we would not find it as to the

other cited registration. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245

(TTAB 2010).

A. The Services, Trade Channels and Purchasers

We consider first the similarities or dissimilarities between the respective

services as identified in the application and the cited Registration No. 4223571. See

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and cited

registration compared).

When considering the similarity of the services, and keeping in mind that the

services in the application are all classified in a single class, it is not necessary that

there be similarity as to each and every one of the services identified in the

description of services. It is sufficient for a refusal based on likelihood of confusion

that relatedness is established for any one of the services identified in the class.

-4-
Serial No. 85237380

Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,

988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB

2007). In this regard, the cited Registration No. 4223571 identifies, inter alia,

“Payment processing facilities and payment service provider services to on-line and

other merchants, namely, processing payments made by consumers to merchants

through on-line computer networks, call centers and automated telephone lines.” The

application also identifies, “bill payment services, namely, administration of

electronic processing and transmission of bill payment data.” The services therefore

overlap, and are legally identical.

Applicant argues that the nature of the services offered are “different,” and that

they are in “separate and distinct fields.” 7 TTABVUE 10. It is, however, axiomatic

that we must consider the services as identified. See Octocom Sys., Inc. v. Houston

Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The

authority is legion that the question of registrability of an applicant’s mark must be

decided on the basis of the identification of goods set forth in the application

regardless of what the record may reveal as to the particular nature of an applicant’s

goods, the particular channels of trade or the class of purchasers to which the sales

of goods are directed.” (citations omitted)). The services here are overlapping and

legally identical.5

5The Examining Attorney also included evidence of the similarity of other services as listed,
respectively, in the application and in the cited Registration No. 4223571, as shown on
websites from BB&T, Citizens Bank, PNC, Regions, Suntrust, and Wells Fargo. Attached to
May 22, 2018 Final Office Action, at 2-73. We find that this further supports the similarity
of the services. By contrast, the third-party registrations submitted by the Examining
Attorney are overly broad, and we do not consider them in our analysis.

-5-
Serial No. 85237380

As for the channels of trade, when as here, the respective identifications of

services are legally identical, without additional restrictions as to nature, type,

channels of trade, or classes of purchasers (and in this regard, we note that both

include online and electronic payment services), the services are presumed to travel

in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671

F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[A]bsent restrictions in the

application and registration, goods and services are presumed to travel in the same

channels of trade to the same class of purchasers.”). Thus, we must presume the trade

channels and classes of purchasers are the same or overlapping for the bill payment

and payment processing services offered by Applicant and by Registrant.

These factors weigh heavily in favor of finding a likelihood of confusion.

B. Strength of the Cited Mark

Applicant asks us to consider the weakness of the mark in cited Registration No.

4223571. In particular, Applicant refers to an “illustrative list of registered marks

coexisting on the Federal Register, which in whole or in part contained the term

‘Bank’ and/or ‘Net’ or similar variations thereof.” 5 TTABVUE 7. The list that

Applicant refers to was included in its July 2, 2013 Response to Office Action. In that

Response, Applicant asserts that:

Specifically, a review of the United States Patent and Trademark Office
(“USPTO”) records identifies numerous marks on the Principal Register
consisting of, or in part, the terms “NET” and/or “BANK” in Class 36 for
use in connection with services that are closely related to those of Cited
Marks.

-6-
Serial No. 85237380

The Examining Attorney objected to the list in subsequent office actions, and

maintained the objection on brief. In order to make a third-party registration of

record, a copy of the registration, either a status copy of the paper USPTO record

showing title, or a copy taken from the electronic records of the Office should be

submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB

1998); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Merely listing

registrations is insufficient to make them of record. In re Dos Padres Inc., 49 USPQ2d

1860, 1861 n. 2 (TTAB 1998). Accordingly, we sustain the Examining Attorney’s

objection to the list, and we do not consider it in our analysis.

We note that our precedent dictates that “extensive evidence of third-party use

and registrations is ‘powerful on its face,’ even where the specific extent and impact

of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen

GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d

1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d

1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). Applicant has not, however, made

evidence of any third-party registrations or use of record in this proceeding.

We take judicial notice of the term “net” as being defined, in relevant part, as

“Internet.”6 We also take judicial notice of the dictionary definition of “bank” as being,

in relevant part, “an establishment for the custody, loan, exchange, or issue of money,

for the extension of credit, and for facilitating the transmission of funds.” There is no

6Both definitions we cite are from Merriam-Webster.com. See, e.g., In re White Jasmine LLC,
106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online
dictionaries that exist in printed format or have regular fixed editions).

-7-
Serial No. 85237380

question that these terms are, at the very least, highly suggestive of the identified

services, and indeed Applicant is seeking registration of the term NETBANK on the

Supplemental Register.

Nevertheless, to the extent Applicant is arguing that the mark in the cited

registration is merely descriptive and unprotectably weak, the mark, which is

registered on the Principal Register without a claim of acquired distinctiveness, is

entitled to a presumption of validity that cannot be challenged via this ex parte

proceeding. 15 U.S.C. § 1057(b). Therefore, while the cited mark is suggestive, and

may have some conceptual weakness, it is nevertheless well-recognized that even

weak marks are entitled to protection against a mark that is substantially similar

and is used on legally identical services, as here. See King Candy Co. v. Eunice King’s

Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 109 (CCPA 1974).

C. The Marks

We next compare the marks in their entireties for similarities and dissimilarities

in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73

USPQ2d at 1692. The focus is on the recollection of the average purchaser, who

normally retains a general rather than a specific impression of trademarks. In re

Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v.

Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Here, the average purchaser

includes general consumers of payment processing and other identified services.

Applicant’s mark consists solely of the term NETBANK, in standard characters.

The mark in the cited Registration No. 4223571, is NETBANX, also in standard

-8-
Serial No. 85237380

characters. Aside from arguing the weakness of the cited mark, Applicant does not

argue in its brief that the marks differ in sight, sound, connotation, or commercial

impression. We find that NETBANX is the phonetic equivalent of NET BANKS, the

plural form of Applicant’s NETBANK. See In re SnoWizard, Inc., 129 USPQ2d 1001,

1004, n.6 (TTAB 2018) (finding SNOBALLS to be the phonetic equivalent of

SNOWBALLS); In re Tapco Int’l Corp., 122 USPQ2d 1369, 1372 (TTAB 2017) (finding

KLEER to be the phonetic equivalent of CLEAR).

Although the spelling of NETBANK and NETBANX is slightly different, both

marks are highly similar in appearance, differing only in the final consonant (“k” or

“x”), and both would likely be pronounced in a very similar manner. The marks are

also likely to convey to consumers the same commercial impression of banking and

related services offered via the Internet.

Overall, we find the marks to be very similar in sight, sound, and especially in

commercial impression. Consumers are not likely to notice the slight difference of the

final letter. Alternatively, with legally identical goods, and highly similar marks,

consumers are likely to believe that the marks are variations of each other.

We find this first du Pont factor to also favor finding a likelihood of confusion.

D. Conditions of Sale

Applicant urges us to consider the sophistication and degree of purchaser care

likely to be exercised by the relevant consumers. However, there is no evidence of

record that would support finding that general consumers of payment processing and

other identified services would exercise a heightened degree of care. Rather, we must

-9-
Serial No. 85237380

consider the degree of care that would be exercised by the least sophisticated

consumers, which here includes ordinary banking consumers, who are not

sophisticated purchasers, and who exercise an ordinary level of care. See Stone Lion

Capital 110 USPQ2d at 1163 (affirming that the Board properly considered all

potential purchasers for recited services, including both sophisticated and

unsophisticated investors, since precedent requires consumer care for likelihood-of-

confusion decision be based “on the least sophisticated potential purchasers”).

Overall, we find this factor to be neutral.

II. Conclusion

After considering all of the arguments and evidence of record as they pertain to

the relevant du Pont factors, even if not specifically discussed herein, we find that

the services are overlapping and legally identical, and we presume that they would

travel through some of the same channels of trade to some of the same general

consumers of payment processing and other identified services. We further find that

the marks are substantially similar in sight, sound, connotation, and especially

commercial impression. Accordingly, despite some suggestiveness of the cited mark,

NETBANX, we find a likelihood of confusion between Applicant’s mark NETBANK

and the mark in the cited Registration No. 4223571, NETBANX, for the services as

identified.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

– 10 –