Monday, September 28, 2009

TTAB Reverses 2(d) Refusal of "COMMUNITY TRUST BANK & Design" Over "COMMUNITY TRUST"

Apparently a registration for the mark COMMUNITY TRUST for banking services is hardly worth the paper it's printed on. The Board reversed a Section 2(d) refusal to register COMMUNITY TRUST BANK & Design for banking services [TRUST BANK disclaimed], finding it not likely to cause confusion with the registered mark COMMUNITY TRUST for the same services [TRUST disclaimed]. It concluded that "community" and "trust" are common and weak formatives, and therefore that the design portion of the applied-for mark must be given more weight. In re Community Trust Bank, Serial No. 76685026 (September 25, 2009) [not precedential].

The Board noted the differences in the marks at issue, observing that "[w]ords are more likely to be more significant than the design in a mark." But the Board then considered the strength - or lack thereof - regarding the cited mark.

Applicant submitted two registrations for marks that include the words "Community" and "Trust" for banking services: SOUTHERN COMMUNITY BANK AND TRUST ("Bank and Trust" disclaimed) and NORTH SHORE COMMUNITY BANK & TRUST ("Community Bank & Trust" disclaimed). It also proffered Internet evidence of nine other entities using the words "Community" and "Trust" in connection with banking

That limited evidence alone was not sufficient to put a dent in the strength of the cited mark, but the Board then took notice of two dictionary definitions of "community bank" [basically, a local bank]. In addition, the Comptroller of the Currency published a notice in the Federal Register referring to "community banks" and provided a definition of the term in a subsequent handbook. And several federal court decisions have used the term "community bank" at least descriptively.

The Board therefore concluded that the word "community" is an "extraordinarily weak term when applied to banks," one that can be given only "a very narrow scope of protection."

Finally, the Board noted that "bank patrons have been held to be careful purchasers," and that "there is no evidence that consumers of banking services are impulse or careless purchasers."

The Board therefore concluded that "there is no likelihood of confusion here," and it reversed the refusal.

TTABlog comment: I think the notion that banking customers exercise more than ordinary care is, to a large extent, a myth. Moreover, doesn't the Board often say that, when two marks are virtually identical, even sophisticated consumers may be confused?

Much of the blame for the "banking customer are careful" myth stems from a dubious reading of the Amalgamated Bank case, which did not say that banking consumers are careful consumers. What it did say is that, when considering a consent agreement between two banks, in which the bankers agree that there is no likelihood of confusion between the involved marks, the Board should accept their judgment. And it also says that some bank customers "do not even know they will be customers of a bank until they discover that they are, i.e ., when paper they have signed, payable to someone else, is assigned to a bank."

It appears to me that the Board simply did not like the fact that COMMUNITY TRUST made its way onto the Principal Register. Although the Board could not, sua sponte, cancel that registration, it did the next best thing: it effectively ignored the registration.

Text Copyright John L. Welch 2009.


At 9:16 AM, Anonymous Anonymous said...

Seems hard to believe the TTAB would permit COMMUNITY TRUST to join COMMUNITY TRUST BANK & Design on the register if the latter had been senior, and if that would be likely to confuse then how could the instant case not be.


Post a Comment

<< Home