TTABlog Test: Is CROSSFIRST BANK & Circle Design Confusable with Banc of California's RIng Design?

Banc of California petitioned to cancel a registration for the mark shown below left, on the ground of likely confusion with its registered mark shown below right, both for, inter alia, banking services. It all boiled down to the first DuPont factor. How do you think this came out? Banc of California, National Association v. Crossfirst Bankshares, Inc., Cancellation No. 92075496 (January 14, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

Since both parties rely on issued registrations, priority was an issue in this proceeding. Crossfirst did not establish its date of first use, but both parties were entitled to rely on the filing dates of the applications underlying their registrations. Because Crossfirst's filing date was in 2019 and California's in 2017, California had priority.

Of course, since the involved services are identical in part, the Board must presume that the channels of trade and classes of consumers for the identical services overlap.

California claimed that its ring design mark is commercially strong, but its evidence did not relate solely to the ring mark. It included evidence regarding use of that mark with the bank name. "There is no way to determine the extent to which, or even if, consumers of banking services associate the Ring Design alone with Petitioner." Nor did California put its advertising expenses "in context," i.e., in comparison with the expenditures of other banks.

The Board noted that "circles, like other basic shapes featured in trademarks or service marks, are not generally considered particularly distinctive." However, it must presume that California's ring design is inherently distinctive because it is registered on the Principal Register without a claim of acquired distinctiveness.

Ultimately, given Petitioner’s failure to show that the Ring Design is commercially strong , and Respondent’s failure to overcome the presumption that the mark is inherently, distinctive, we accord the mark in Petitioner’s pleaded ’261 Registration the typical scope of protection afforded marks registered on the Principal Register. 

Turning to the marks, the Board found them to be similar in their entireties as to appearance (because both marks include circles), connotation, and commercial impression. "While they do not sound alike, '[w]here, as here, we are dealing with a mark consisting of a design only,' specifically the mark in the '261 Registration, 'our deliberations are limited primarily to appearance.'"

To be sure, there are also differences between the marks. Specifically, Respondent's mark includes the words CROSSFIRST BANK, while the mark in Petitioner’s ’261 Registration consists solely of the “two stylized half circles forming a ring," and the half circles are shaded and have other minor features absent from Respondent’s mark. The parties’ ring/circle designs do not look exactly the same, even though they feature the same shapes and are constructed similarly.

However, "we must also keep in mind: (1) 'the fallibility of memory over a period of time;' and (2) that the 'average' purchaser 'normally retains a general rather than a specific impression of trademarks.'" Furthermore, "the literal element of Respondent’s mark CROSSFIRST BANK is only partially distinctive and minimally distinguishing. In fact, the descriptive or generic and disclaimed term 'BANK' is entitled to less weight in our analysis because it merely names the services the parties offer."

Here, where Petitioner is entitled to use the Ring Design nationwide, unaccompanied by the name "BANC OF CALIFORNIA," the likelihood of confusion increases because consumers will not have Petitioner’s name to go by. In other words, the absence of Petitioner’s trade name from the mark in the ’261 Registration will leave consumers encountering both parties’ marks to differentiate the sources of identical banking services based solely on the minor differences between the parties’ ring/circle designs.

Crossfirst argued that the involved consumers are sophisticated, but the Board wasn't buying. "[B]anking services are consumed by not just the largest and most sophisticated Wall Street firms, but also by ordinary workers, senior citizens and students, for example."

Finally, the lack of evidence of actual confusion was not significant, since Crossfirst did not provide evidence of the extent of its use of its mark for a significant period of time in the same markets that California serves (primarily or exclusively California). The Board therefore could not determine whether there has been a meaningful opportunity for confusion to occur. 

The Board concluded that, although California's mark is conceptually somewhat weak,"that is not enough to ameliorate the likelihood of confusion. In fact, likelihood of confusion 'is to be avoided as much between weak marks as between strong marks." 

And so, the Board granted the petition for cancellation.

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Text Copyright John L. Welch 2024.