Wednesday, December 21, 2011

Test Your TTAB Judge-Ability: Is GREEN BANK Merely Descriptive of Banking Services?

In 2007, the Board reversed a mere descriptiveness refusal of the mark GREEN BRANCH for banking services. (TTABlogged here). So surely GREEN BANK and GREEN BANCORP, INC. are not merely descriptive! But wait! The GREEN BRANCH decision was chosen as one of the ten worst TTAB decisions of 2007 by the esteemed TTABlog. So now what? Perhaps we should look at the record evidence. In re Green Bancorp, Inc., Serial Nos. 78659563 and 78659571 (December 5, 2011) [not precedential].

Mere Descriptiveness: Examining Attorney Laura A. Hammel argued that the marks are merely descriptive [note that BANK and BANCORP, INC. were disclaimed] because Applicant's services are "environmentally beneficial." The services feature electronically-delivered statements and online bill payment, and customers may recycle paper at the bank [not the same as laundering - ed.]. Applicant maintained that GREEN has many meanings and therefore consumers will have to pause and reflect on the marks before gleaning anything specific about the services.

The Examining Attorney relied on a dictionary definition of "green" (environmentally sound or beneficial) and on several website pages using the term "green bank" descriptively in connection with environmentally-efficient banking. Applicant's response to the PTO's request for information, and its own website (here) discussed its eco-friendly focus.

Applicant argued that the GREEN BRANCH case "squarely addressed the issue of whether the term GREEN is merely descriptive of banking services." The Board, however, once again noted that each case must be decided on its own record. Applicant did not persuade the Board that the facts in this case are the same as in the GREEN BRANCH case.

Finally, the Board was not persuaded by Applicant's multiple-meaning argument, concluding that, based on the record, consumers would perceive only the environmental/ecological connotation of GREEN.

And so the Board affirmed the Section 2(e)(1) refusal.

Likelihood of Confusion: The PTO also refused registration under Section 2(d) ground, finding likely confusion with the registered marks GREEN SAVINGS, GREEN CHECKING, and GREEN BRANCH for legally identical services.

Applicant primarily argued that the word GREEN is a weak formative, pointing to 13 "Green" mark registrations for banking services, including GREEN STATION, GREEN CARD, GREEN CHECKING, GREEN SAVINGS, GREEN BRANCH, GREEN NETWORK, and GO GREEN REWARDS CHECKING. The Board found it unnecessary to discuss these prior registrations, since it had already concluded that GREEN "has the meaning of environmentally or ecologically friendly or environmentally conscious" in this context. Thus the three cited marks are, according to the Board, "highly suggestive."

Applicant argued that banking customers exercise more than ordinary care in their decisions, but the Board correctly cited Amalgamated Bank (a frequently mis-cited case) for the proposition that some consumers choose their banks with care, but others do not.

As to the marks, the question was whether the addition of the word BANK or the words BANCORP, INC. to GREEN is sufficient to distinguish Applicant's marks from the cited marks. In light of the clear meaning of GREEN and the limited scope of protection accorded the cited marks, the Board found that the differences in the marks outweighed their similarities, and so it reversed the Section 2(d) refusals.

TTABlog comment: Apparently it took some time for the PTO (and the Board) to realize that GREEN has a descriptive meaning in connection with environmentally-friendly banking services. Maybe the GREEN BRANCH decision should be taken to a green bank for re-cycling.

Text Copyright John L. Welch 2011.


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