Monday, August 28, 2006

TTAB Reverses Disclaimer Requirement of "COMMERCE" in "COMMERCE BANK" Mark

The Board reversed a PTO requirement that Applicant Commerce Bancorp disclaim the word COMMERCE in the mark COMMERCE BANK & Design for banking services ["BANK" disclaimed]. In re Commerce Bancorp, Inc., Serial No. 76129795 (July 10, 2006) [not citable].

The PTO relied on dictionary definitions, on third-party registrations, and on NEXIS excerpts purportedly showing common descriptive use of the term COMMERCE BANK.

Applicant got off on the wrong foot by filing a 26-page brief that the Board refused to consider, since it violated Rule 2.142(b) [25-page limit]. In its reply brief, Applicant argued that the PTO's definition of "commerce" is "pertinent in the fields of international trade and import/export businesses, [but] is in no way primary, key, significant, or central when properly viewed in the context of a retail bank...."

Applicant also challenged the PTO's reliance on definitions of "commercial" and "commercial bank:"

"unlike the use of 'commercial bank' in a bank's name, which indicates that the bank receives deposits and makes loans, the use of 'commerce' in a bank's name does not, without 'additional leaps and thoughts,' indicate that the bank makes loans."

The Board agreed with Applicant. Even accepting the PTO's contention that "business" is a synonym for "commerce," the term "business" is a broad one and does not immediately describe any particular characteristic, feature, or function of Applicant's services. As to the word "commercial," that term has a specific meaning in the banking field and "the consuming public would not likely made an immediate association between 'commerce' and banking services, even if 'commercial' is a form of the word 'commerce.'"

As to the NEXIS excerpts, use of "Commerce Bank" in the names of various banks does not establish that the phrase is descriptive (although it may show that the phrase is a weak source-identifier). And as to the two third-party registrations cited by the PTO (one with COMMERCE BANK disclaimed and the other under Section 2(f)), Applicant countered with two principal registrations in which the phrase was not disclaimed. The Board noted once again that it is not bound by such prior determinations made by the PTO, and that in any case, the four registrations show at most that there may be "conflicting practices with respect to this term within the Office."

Text Copyright John L. Welch 2006.


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