Friday, June 04, 2021

Catch-all Thirteenth DuPont Factor Saves HANA BANCORP & Design from Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register the mark HANA BANCORP & Design (shown first below) for various business, financial, and banking services [BANCORP disclaimed], finding no likelihood of confusion with the registered mark HANA FINANCIAL & Design (shown second below) for financial services [FINANCIAL disclaimed]. Although the first, second and third DuPont factors weighed in favor of a finding that confusion is likely, the catch-all thirteen DuPont factor was dispositive. In re Hana Financial Group Inc., Serial No. 86019890 (June 2, 2021) [not precedential (Opinion by Judge Jonathan Hudis).

The thirteenth DuPont factor allows for consideration of "any other established fact probative of the effect of use." DuPont, 177 USPQ at 567. Applicant argued that its mark HANA BANCORP & Design is nearly identical to the marks shown in four federal registrations that it claimed to own, including the mark HANA BANK & Design for "banking" and HANA GROUP & Design for business management services:

The Board noted that these registration are owned by Hana Bank, but since Hana Bank is a wholly-owned subsidiary of Hana Financial Group, Inc., applicant may rely on them for purposes of the 13th DuPont factor.

The Board looked to In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012) [TTABlogged here] for guidance. Strategic Partners (involving the mark ANYWEAR (stylized) and a prior registration for ANYWEARS (standard characters) for footwear) set out the following non-exclusive factors to be considered with regard to the significance of a prior registration owned by an applicant:

  • There is no “meaningful difference” between the marks in applicant’s prior registration and its present application – that is, there is no material difference between the marks;
  • The services are at least in-part identical; and 
  • Both the applicant’s prior registration and the cited registration are more than five years old and thus immune from attack on likelihood of confusion grounds.

Here, the Board found no "meaningful difference" between the proposed mark and the two registered marks, and it further found the services to be identical or closely related. Although the HANA GROUP and Design registration and the cited HANA FINANCIAL and Design registration have coexisted for only 2-½ years, that was but one fact to be considered.

We find, under the circumstances of this case, where (1) a prior registration, for a mark with no material difference from Applicant’s pending mark, existed in excess of five years for identical and related services; and (2) the younger prior registration, again for a mark with no material difference from Applicant’s pending mark, existed in excess of two years for identical and related services, the thirteenth DuPont factor overcomes the other DuPont factors that otherwise might support a finding that confusion is likely.

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Seems to open the door to registration a bit more than Strategic Partners did.

Text Copyright John L. Welch 2021.


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