Thursday, September 22, 2005


The first du Pont factor was dispositive in the Board's reversal of a Section 2(d) refusal to register the mark BEYOND THE EXPECTED for "banking services." The PTO had deemed the mark confusingly similar to the registered mark BANKING BEYOND YOUR EXPECTATIONS for banking and financial services (BANKING disclaimed). In re BCPBank N.A., Serial No. 76513504 (September 7, 2005) [not citable].

The Examining Attorney contended that, because BANKING is merely descriptive and was disclaimed in the registered mark, the dominant portion of that mark is BEYOND YOUR EXPECTATIONS, and that BEYOND THE EXPECTED and BEYOND YOUR EXPECTATIONS create similar commercial impressions.

Applicant BCPBank argued that the Examining Attorney improperly dissected the marks, that consumers of banking services are sophisticated and exercise a high degree of care, that there are a number of third-party marks that include the term EXPECT or EXPECTATION, and that there has been no actual confusion despite nearly two years of contemporaneous use.

As to the first point, the Board agreed with BCPBank, finding that the mark in the cited registration is a unitary phrase that the Examining Attorney improperly dissected "by essentially deleting the term BANKING from the mark when considering the phrase." The Board further found that the marks have different connotations:

"BEYOND THE EXPECTED is likely to be perceived as suggesting that the banking services are better than those offered by other banks; whereas BANKING BEYOND YOUR EXPECTATIONS is likely to be perceived as suggesting that the purchaser's individual banking experience will be beyond his or her personal expectation for such services."

Moreover, the third-party registrations -- for identical services and containing the root word EXPECT -- demonstrate that the mark of the cited registration is a "relatively weak laudatory mark."

Manufacturers and Traders Bank, Buffalo, New York

The Board was not persuaded that purchasers of banking services are sophisticated and careful, since the involved services are presumably offered to all classes of customers, including the general public. As to Applicant's assertion regarding the lack of actual confusion, the Board noted that it had "scant evidence" of the nature and extent of use of the marks, and it pointed out once again that the test is likelihood of confusion, not actual confusion.

Therefore, the Board concluded that confusion is not likely, and it reversed the PTO's Section 2(d) refusal to register.

Text Copyright John L. Welch 2005.


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