Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 INB NATIONAL BANK
Opposition No. 83,920
March 16, 1992
Before Cissel, Hanak and Quinn
Opinion by Hanak
Metrohost, Incorporated (applicant) filed an intent to use application to register CORPORATE DOLLARS PASSPORT in block letters for credit cards. [FN1]
INB National Bank (opposer) filed an opposition alleging that long before applicant's filing date, opposer had both used and registered PASSPORT for banking services, and that such use specifically included use of "its mark PASSPORT on cards which are used by the cardholders to purchase goods and services from merchants and others." (Notice of Opposition ¶ 4). Furthermore, opposer contended that the contemporaneous use and registration of the marks PASSPORT and CORPORATE DOLLARS PASSPORT is likely to result in confusion, mistake and deception. Applicant filed an answer denying the foregoing allegations.
This matter is now before us on a motion for summary judgment filed by applicant. Applicant contends "that there is no genuine issue as to any material fact and that the applicant is entitled to judgment as a matter of law." (page 1 of applicant's paper dated June 25, 1991). Applicant filed a brief, the affidavit of its president and other material in support of its motion.
In response, opposer filed a paper styled "Opposer's Brief in Opposition to Applicant's Motion for Summary Judgment and Opposer's Motion for Accelerated Trial and Judgment," along with supporting materials. In explaining what it meant by an "Accelerated Trial and Judgment," opposer made the following comments at pp. 4-5 of its aforementioned paper:
Applicant states that "no further relevant information will come to light concerning [its] mark", App.Br. at 10, thus indicating that it has no additional evidence to offer at trial. Opposer's trial evidence would be largely the same as submitted herewith but with additional documentation and examples of its extensive use and advertising of its mark. Under these circumstances it appears that a full trial would add but little to the existing record while requiring additional (and largely duplicative) efforts by the Board and the parties. Therefore, opposer is willing and hereby moves to have this case decided on the merits based on the discovery materials and affidavits in the presently existing record.
In considering opposer's brief and supporting materials in their entirety, we find that opposer has, in essence, filed a cross motion for summary judgment. Accordingly, we will treat this case as if both parties are seeking summary judgment. [FN2]
It need hardly be said that the resolution of Board proceedings by means of summary judgment is to be encouraged. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed.Cir.1987). This is particularly true when both parties seek summary disposal of the proceeding. Phoenix Closures v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB 1988); Blue Cross and Blue Shield v. Harvard Health Plan, 17 USPQ2d 1075, 1076 (TTAB 1990).
*2 In arguing that there is no likelihood of confusion as a matter of law, applicant makes much of the fact "opposer's registered mark is for the service mark PASSPORT in banking services in International Class 36 and applicant's mark is for the trademark CORPORATE DOLLARS PASSPORT for credit cards in International Class 16." (Applicant's brief page 4, emphasis in original). Even if we were to assume, arguendo, that applicant's mark is a trademark and that it is properly classified in Class 16, it must be remembered that "it is well recognized that the system of dividing goods [and services] into classes is purely a manner of convenience and that a determination on the question of likelihood of confusion cannot be restricted by the artificial boundary created by classification." In re Vic Boff Health and Fitness Aides, Inc., 189 USPQ 357, 358 (TTAB 1975); Safety-Kleen Corp. v. Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975) ("Also lacking merit is [applicant's] contention that services and products marketed under substantially the same the mark cannot be found likely to cause confusion."); In re Riddle, 225 USPQ 630, 632 (TTAB 1985); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347, 348 (CCPA 1961). [FN3]
As for opposer's services, we note that opposer owns incontestable Registration No. 1,107,513 for PASSPORT in block letters for "banking services." This registration issued on November 28, 1978. A combined Section 8 and 15 affidavit was properly filed. Moreover, opposer has submitted the affidavit of Warren L. Smith (its first vice president) for the propositions that banking services encompass a wide array of services including the issuance of both credit cards and debit (check) cards; that most banks issue credit cards (and many also issue debit cards); and that he is not aware of any major bank that does not issue credit cards and debit cards. (Warren affidavit ¶¶ 4 and 16). Moreover, Mr. Warren stated that "since October 31, 1977, [opposer] has continuously offered to the public check card services under the mark PASSPORT." (Warren affidavit ¶ 5). In its reply brief, applicant has in no way challenged the proposition that the term "banking services" (i.e. the description of services in opposer's registration) is broad enough to include and indeed does include the issuance of credit cards and debit (check) cards. Cf. Industrial Valley Bank v. Banker's Trust of South Carolina, 201 USPQ 888, 889 (TTAB 1979). Furthermore, although this is largely irrelevant given the existence of opposer's unchallenged registration of PASSPORT for banking services, applicant has not in any way challenged Mr. Warren's statement that continuously since 1977, opposer has offered to the public specifically debit (check) card services under the mark PASSPORT. In addition, applicant has not challenged Mr. Warren's statement that "a check (or debit) card is similar to and used like a credit card. Both are species of 'plastic' money which are in widespread use throughout the country. Both are used by the cardholders to purchase goods and services at all sorts of businesses." (Warren affidavit ¶ 17).
*3 In sum, credit cards--even if they are considered to be goods--are extremely closely related to the services of issuing credit and debit cards, which services are encompassed by the broad term "banking services." Moreover, "in a proceeding such as this, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in applicant's application vis-a-vis the goods and/or services recited in opposer's registration, rather than one what the evidence shows and/or services to be." Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.Cir.1987). Likewise, as corollary to the foregoing, it is noted that while "in testing for likelihood of confusion, the similarity or dissimilarity of established, likely-to-continue trade channels should be considered, such a consideration is not material in a situation where an opposer or petitioner for cancellation is relying on its unchallenged registration containing no limitation concerning trade channels and where there has been no proof of impossibility of use of common trade channels." The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 421-22 (CCPA 1977). Thus, applicant's argument that in practice, its CORPORATE DOLLARS PASSPORT credit cards are "intended to be marketed [to] and used only by corporate employees" is misplaced inasmuch as opposer's registration of PASSPORT is broad enough to include credit cards issued to corporate employees, and inasmuch as this limitation is not contained within applicant's chosen description of its "goods" (credit cards). (Applicant's brief page 7).
Turning to a consideration the marks of the parties, we note at the outset that when applicant's "goods" (credit cards) are closely related to a type of service (the issuance of credit cards and debit cards) encompassed by the description of services in opposer's uncontested registration (i.e. banking services), a lesser degree of similarity of marks is required for a finding of likelihood of confusion. ECI Division of E-Systems v. Environmental Communications, 207 USPQ 443, 449 (TTAB 1980); 2 J. McCarthy, Trademarks and Unfair Competition, § 23:3 at pp. 56-57 (2d ed. 1984); SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 207 USPQ 897, 900 (8th Cir.1980). It is noted that applicant seeks a block letter registration of CORPORATE DOLLARS PASSPORT. Such a block letter or typed drawing indicates that applicant is not restricting its word mark to a particular form. Trademark Rule 2.51(e). Hence, we must be careful not to be "mislead by considering [applicant's] mark only in its printed or typewritten form, with all characters being of equal height. The drawing in the instant application shows the mark typed in capital letters, and under Rule 2.51(d) [now 2.51(e) ] of the Trademark Rules of Practice this means that [applicant's] application is not limited to the mark depicted in any special form." Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Because this is an intent to use application, applicant has not, as of yet, submitted specimens of use. However, applicant has provided during discovery a "preliminary drawing" of applicant's proposed credit card featuring its mark, which is reproduced below.
*4 As depicted in the above manner selected by applicant itself, it is clear that applicant's word mark CORPORATE DOLLARS PASSPORT bears a striking similarity to opposer's registered mark PASSPORT. If applicant's mark is depicted in the above manner as selected by applicant, we have little doubt that its use on credit cards would cause a likelihood of confusion with opposer's registered mark PASSPORT for banking services.
At page 5 of its reply brief, applicant argues that it should not be judged by the above "preliminary drawing" of its mark because "opposer had been previously notified that applicant has significantly changed the drawing of the mark." This is totally irrelevant. If applicant were to obtain a typed or block letter registration of CORPORATE DOLLARS PASSPORT, then it would be free to use this mark in any manner, including the manner which it had previously considered and incorporated into its "preliminary drawing." As the Phillips Petroleum case makes clear, when applicant seeks a typed or block letter registration of its word mark, then the Board must consider all reasonable manners in which those words could be depicted, and in particular, the Board should give special consideration to the manners in which applicant has actually depicted its mark, whether those depictions be on a "preliminary" or "permanent" basis. In re Richardson Inc. Co., 171 USPQ 818, 819 (TTAB 1971); Quaker Oats Company v. General Foods Corporation, 181 USPQ 668, 670 (TTAB 1974); Industrial Valley Bank v. Banker's Trust of South Carolina, 201 USPQ 888, 894 (TTAB 1979).
Finally, we take note of applicant's arguments that confusion is unlikely because while "opposer's bank check card contains the word PASSPORT, ... the bank check card is clearly identifiable as a bank check card owned by [opposer] Indiana National (which is even printed in bigger letters than the word PASSPORT) and [because] the bank check card is only used by opposer's banking customers." (Applicant's brief page 8). Obviously, opposer's registration of PASSPORT contains simply the word PASSPORT without any other wording. The fact that opposer in practice may use its registered mark "with an associated house mark is not controlling." Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA 1959); Wisconsin Hist. Society v. Ringling Bros.-Barnum & Bailey, 190 USPQ 25, 29 n. 3 (TTAB 1976); Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 USPQ 339, 341 (CCPA 1957); J. McCarthy, Trademarks and Unfair Competition, § 20:3 at p. 1024 (Volume 1) and § 23.18 at p. 102 (Volume 2) (2d ed. 1984). Likewise, even assuming arguendo that opposer's PASSPORT bank check card is used only by opposer's banking customers, this is legally irrelevant inasmuch as opposer's registration of PASSPORT contains no restrictions as to customers. See Canadian Imperial Bank and Wella Corp., supra. Moreover, even if such a restriction were incorporated into the registration, it would not obviate the likelihood of confusion. A banking customer of opposer carrying a PASSPORT debit card would-- upon seeing a CORPORATE DOLLARS PASSPORT credit card (with the first two words depicted in very small lettering)--likely believe that the latter was also issued by or otherwise associated with opposer.
*5 In sum, we find that there are no genuine factual disputes, and that as a matter of law, applicant's use of CORPORATE DOLLARS PASSPORT would be likely to cause confusion, mistake and deception. Accordingly, applicant's motion for summary judgment is denied, summary judgment is entered in favor of the opposer, and the opposition is sustained. [FN4]
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/038,674 filed March 15, 1990.
FN2. We note that opposer makes the following statement at page 2 of its brief: "Applicant also contends that there are significant differences in the manner of the use of the marks, and in channels of trade, and in the marks themselves. Such differences, if any, and their significance, if any, present genuine issues of material fact which must be decided." However, because opposer is basing its opposition, in part, on its incontestable registration for PASSPORT, the differences in the actual uses of the marks and the differences in actual trade channels of the parties are irrelevant, as will be discussed at greater length later in this opinion. In similar fashion, because both the opposer's registration of PASSPORT and the pending application for CORPORATE DOLLARS PASSPORT are in block letters, the actual depictions of the marks as used are likewise irrelevant except to the extent that such actual depictions show how the block letter marks could actually be presented.
FN3. In point of fact, the undisputed facts show that applicant does not intend to manufacture credit cards. (Request for Admission No. 5). Rather, applicant "intends to issue credit cards" under its mark CORPORATE DOLLARS PASSPORT. (Request for Admission No. 4). In short, applicant is not proposing to offer under its mark CORPORATE DOLLARS PASSPORT paper articles, cardboard articles or other printed matter (Class 16). Rather, applicant is proposing to offer a financial service (Class 36), namely, the issuance of credit cards. While not necessary for our finding that a likelihood of confusion exists, we believe that the issuance of credit cards is a service, and not a product. See Ex parte Bank of America National Trust & Savings Assn., 118 USPQ 165 (Com. of Patents 1958) where Assistant Commissioner Leeds rejected a trademark application for traveler's checks, bank checks, deposit passbooks etc. noting that applicant was not engaged in the business of manufacturing or dealing in printed forms, but instead was engaged in the business of rendering banking services. Of course, it would be proper for a manufacturer of credit cards, who sells them to financial institutions, to obtain a trademark registration for credit cards.
FN4. In support of its summary judgment motion, applicant relies very heavily on a case denying a plaintiff's motion for a preliminary injunction. Universal Money Centers Inc. v. AT & T, 17 USPQ 2d 1435 (D.Kan.1990). That case is not on point for at least two reasons. First, the district court in Universal found that the dominant portions of plaintiff's mark (UNIVERSAL MONEY CARD) and defendant's mark (AT & T UNIVERSAL CARD) were different, and there were, in actual use, "significant differences in the overall design of the [two] cards." 17 USPQ 2d at 1438. Second, the district court noted "that the primary purpose of each card is different." 17 USPQ 2d at 1439. One card was to access ATMs; the other card was to charge long-distance telephone calls.