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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of:
`Safe Harbor Credit Union
`Serial No. 76/116,397
`Filed: August 24, 2000
`Trademark:
`SAFE HARBOR CREDIT UNION
`
`§-f%€€§}§}
`
`Law Office 106
`
`Trademark Attorney:
`Richard S. Donnell
`
`Commissioner for Trademarks
`BOX TTAB
`2900 Crystal Drive
`Arlington, Virginia
`
`22202-3513
`
`'
`
`9”‘
`
`APPELLANT ' S BRIEF
`
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`August 23, 2002
`
`j
`
`08-23-2002
`
`I .
`
`INTRODUCTION
`
`u.s. menu TM01cI'TM Mall Rcptbt. #39
`
`Safe Harbor Credit Union, a Michigan corporation,
`
`(Appellant), has appealed the examining attorney's final refusal to
`
`register the mark "SAFE HARBOR CREDIT UNION" and respectfully
`
`requests the Trademark Trial and Appeal Board to reverse the
`
`examining attorney's decision. This brief is submitted in
`
`triplicate.
`
`II. APPELLANT'S SERVICE MARK
`
`Appellant seeks registration of its service mark "SAFE
`
`HARBOR CREDIT UNION" on the Principle Register for credit union
`
`services in International Class 036.
`
`"CREDIT UNION" has been
`
`disclaimed.
`
` 08/30/2002 80
`CERTIFICATION 37 C.F.R. 1.8a and 1.10
`(Express Mail‘ Label number is mandatory)
`(Express Mail certification is optional).
`
`100.00 09
`
`01 FC:37B
`
`I hereby certify that, on the date shown below, this correspondence is being deposited with the United States Postal Service. as
`"Express Mail Post Office to Addresses“ Mailing Label No. EL670072385US in an envelope addressed to the Commissioner for
`Trademarks, 2900 Crystal Drive, Washington, D.C. 22202-3513.
`
`Date: August 23, 2002
`
`nature
`
`.
`
` l
`
`ifying)
`(type or print name of person
`Carol A. Szynwelski
`
`

`
`1!
`
`III. PRIOR REGISTRATIONS CITED BY THE EXAMINING ATTORNEY
`
`SERIAL NO. 76/116,397
`
`A.
`
`First Office Action.
`
`U.S. Registration No. 2,007,056 for the mark "SAFE HARBOR
`
`INSURED MONEY MARKET ACCOUNT".
`
`B.
`
`Final refusal.
`
`U.S. Registration No. 2,477,256 for the mark "ALLIANCE
`
`CREDIT UNION MEMBER - LINK“ plus 36 additional registrations of
`
`marks for providing on-line credit union services.
`
`IV.
`
`GROUNDS OF REFUSAL
`
`A.
`
`Registration was refused under Trademark Act Section
`
`2(d), 15 U.S.C. Section 1052(d), because the mark for which
`
`registration is sought so resembles the mark shown in U.S.
`
`Registration No. 2,007,056 as to be likely, when used in connection
`
`with the identified services,
`
`to cause confusion,
`
`or to cause
`
`mistake, or to deceive.
`
`B.
`
`The examining attorney set forth general principles
`
`of trademark law including:
`
`the overriding concern is to prevent
`
`buyer confusion as to the source of services;
`
`likelihood of
`
`confusion must be resolved in favor of the registrant; and
`
`disclaimed matter is typically less significant or less dominant.
`
`C.
`
`The final refusal was based on several conclusions.
`
`The first conclusion was that
`
`"SAFE HARBOR" is a dominant portion
`
`of appellant's mark and of U.S. Registration No. 2,007,056 for
`
`“SAFE HARBOR INSURED MONEY MARKET ACCOUNT".
`
`The second conclusion
`
`was that "credit union services" are the same as "providing access
`
`to bank customers of money market accounts insured up to a
`-2-
`
`

`
`SERIAL NO. 76/116,397
`
`specified amount by the FDIC".
`
`The third conclusion was that
`
`credit union services are identical to at least some bank services.
`
`The fourth conclusion was that banking services and credit union
`
`services can be obtained on-line without going to a bank or a
`
`credit union placing them in the same line of commerce and making
`
`the services identical.
`
`V.
`
`ARGUMENTS
`
`A.
`
`The common part of appellant's mark "SAFE HARBOR
`
`CREDIT UNION" and U.S. Registration No. 2,007,056 for the mark
`
`"SAFE HARBOR INSURED MONEY MARKET ACCOUNT"
`
`is the phrase “SAFE
`
`HARBOR".
`
`The general rule is that a subsequent user may not avoid
`
`likely confusion by appropriating another's entire mark and adding
`
`descriptive or non—distinctive matter to it. This general rule is
`
`subject to two exceptions:
`
`(1) where the common portion of the mark
`
`is weak or descriptive; or (2) where the marks in their entireties
`
`convey quite different meanings,
`
`In re Denisi, 225 USPQ 624 (TTAB
`
`1985). Appellant has appropriated only the “SAFE HARBOR“ portion
`
`of U.S. Registration No. 2,007,056. However,
`
`the common portion
`
`"SAFE HARBOR" is weak or descriptive and the marks in their
`
`entireties convey quite different meanings.
`
`The two exceptions, of
`
`In re Denisi, both apply.
`
`"SAFE HARBOR" as used in connection with credit union
`
`services and banking services is weak and descriptive.
`
`"SAFE
`
`HARBOR" means it is a safe protective place, a safe shelter, or a
`
`safe refuge for valuables. U.S. Registration No. 2,267,234 for the
`
`mark “SAFE HARBOR PROGRAM FROM ANPC"
`
`in International Class 036
`
`-3...
`
`

`
`
`
`SERIAL NO. 76/116,397
`
`employs "SAFE HARBOR"
`
`to indicate that their insurance services to
`
`protect and safeguard watercraft. U.S. Registration No. 2,374,779
`
`for the mark "SAFE HARBOR“
`
`in International Class 042 is used for
`
`support services to resolve computer software and hardware problems
`
`and to indicate that the services will safeguard and protect data.
`
`The Court of Appeals for the Federal Circuit used the
`
`term “SAFE HARBOR" when it stated "We conclude that the same safe
`
`harbor exists where activity "akin to repair“ is involved as when
`
`repair is involved," Husky Injection Molding systems Ltd. v. R & D
`
`Tool and Engineering Company, 62 USPQ 2d 1834, 1839 (Fed. Circ.
`
`2002). As used by the court, Safe Harbor describes a situation in
`
`which a party is saved from patent infringement by the right to
`
`repair.
`
`Title 17 U.S.C. Section 512 relates to the On—Line
`
`Copyright Infringement Liability Limitation Act.
`
`The Act creates
`
`four Safe Harbors. These "Safe Harbors" protect networked
`
`communications service providers from liability for copyright
`
`infringement under some conditions set forth in the Act.
`
`The term
`
`"SAFE HARBOR" appears on at least pages 12B-21,
`
`12B—30 and 12B—40
`
`of Nimmer on Copyrights relating to the Act. Copies of the pages
`
`are attached as Exhibit A.
`
`The term "SAFE HARBOR" is a weak term in view of the
`
`numerous uses listed above.
`
`The remaining portion of Appellant's mark is "CREDIT
`
`UNION“.
`
`The remaining portion of U.S. Registration No. 2,007,056
`
`is "INSURED MONEY MARKET ACCOUNT".
`
`The term “CREDIT UNION"
`
`in
`
`- 4 _
`
`

`
`-1
`
`SERIAL NO. 76/116,397
`
`are non—profit entities chartered by either the laws of a state or
`
`by federal laws relating to credit unions.
`
`The National Credit
`
`Union Administration (NCUA) was created in 1970 to charter and
`
`supervise federal credit unions.
`
`The National Credit Union share
`
`Insurance Fund (NCUSIF) was organized to insure credit union
`
`deposits and capitalized solely by credit unions. State chartered
`
`credit unions can have their deposits insured by NCUSIF.
`
`The
`
`depositors of funds in a credit union are the owners of the credit
`
`union.
`
`A person cannot become a member and owner of a credit union
`
`without purchasing at least one credit union share.
`
`An additional
`
`requirement to become a member of a state or federally chartered
`
`credit union is to be a member of a group such as an employee group
`
`or a geographic group. An employee group could, for example, be
`
`the firefighters of a county or city.
`
`A geographic group could be
`
`the residents of a city or a township. Without a membership in a
`
`credit union, a person is not entitled to receive any services from
`
`a credit union.
`
`A few large credit unions may have multiple
`
`offices. However, it would be unusual for a credit union to have
`
`offices in more than one state.
`
`The NCUSIF is funded entirely by insured credit unions.
`
`Credit unions insured by NCUSIF are required by law to maintain 1%
`
`of their deposits in the NCUSIF.
`
`The fund maintains about 1.03% of
`
`federally insurance credit union deposits.
`
`The NCUA board can levy
`
`a premium if necessary to keep the fund solvent.
`
`The NCUSIF has
`
`not received any federal money since it was organized. Congress
`
`has never authorized any money for the NCUSIF.
`
`-5-
`
`

`
`SERIAL NO. 76/116, 397
`
`Hudson River Bank and Trust Company,
`
`formerly Hudson City
`
`Savings Institution,
`
`the owner of U.S. Registration No. 2,007,056
`
`is a New York state chartered stock savings bank. Deposits in the
`
`bank are insured by the Federal Deposit Insurance Corporation
`
`(FDIC), an independent agency of the Federal government.
`
`FDIC
`
`insured deposits are backed by the full faith and credit of the
`
`United States. NCUSIF insured deposits may also be backed by the
`
`full faith and credit of the United States. However, it would take
`
`an act of Congress to make federal funds available to NCUSIF.
`
`The
`
`rules for insuring deposits by FDIC are relatively long and
`
`detailed.
`
`The perception is that FDIC provides superior
`
`protection. That may be debatable. However, it is almost certain
`
`that there is some difference between FDIC and NCUSIF coverage.
`
`The fact that Hudson River Bank and Trust Company is a for—profit
`
`entity owned by stockholders is also a significant difference.
`
`Stockholders expect to receive dividends regularly and bank
`
`officers are expected to take some risks to obtain profits.
`
`Bank and credit union customers are both sophisticated
`
`purchasers that take care when choosing a bank or a credit union.
`
`They are generally well aware of the fact that there are
`
`differences between banks and credit unions.
`
`They perceive that
`
`deposits could be lost if there was no insurance.
`
`They also know
`
`that insurance coverage is limited.
`
`The Final Refusal includes a statement that individuals
`
`can handle financial transactions through a bank or a credit union
`
`on-line without going to either a bank or a credit union. While
`
`_6_
`
`

`
`SERIAL NO. 76/116,397
`
`that is true, a credit union member would have to go to a credit
`
`union office and become a member by paying money and obtain an
`
`access code before a balance could be checked on-line.
`
`A bank
`
`customer would have to open an account, sign some agreement forms
`
`and sign a signature card before transactions could be handled on-
`
`line.
`
`A corporate office would be required to provide
`
`documentation signed by a higher officer or by a Board of Directors
`
`before a bank would accept his signature on a check or permit the
`
`transfer of funds. As a result of the requirements of both banks
`
`and credit unions, customers become knowledgeable concerning the
`
`holder of their funds before they can open an account.
`
`Banks and credit unions provide many services today that
`
`appear to be substantially the same. However before a person can
`
`join and become an owner of a credit union or open an account in a
`
`bank legal requirements must be met and agreements signed that make
`
`it clear whether a person is dealing with a bank or a credit union.
`
`The last portion of U.S. Registration No. 2,007,056 is
`
`"INSURED MONEY MARKET ACCOUNT". This portion of the mark indicates
`
`the type account and the fact that it is insured.
`
`The phrase
`
`describes the services provided under the mark.
`
`The registration
`
`also states that the account is insured by FDIC. Credit unions are
`
`not insured by FDIC. Michigan Chartered credit unions do not offer
`
`Money Market Accounts in their name. However, Michigan law permits
`
`State chartered credit unions to purchase a security as an agent
`
`for a member.
`
`

`
`SERIAL NO. 76/116,397
`
`B.
`
`In any likelihood of confusion analysis,
`
`two key
`
`considerations are the similarities between the marks and the
`
`similarities between the goods and/or services,
`
`In re Total Quality
`
`Group Inc., 51 USPQ 2d 1474, 1476 (TTAB 1999).
`
`The portion of
`
`appellant's mark that is also employed in U.s. Registration No.
`
`2,007,056 is widely used as indicated above by the use of the term
`
`“SAFE HARBOR“ by the Court of Appeals for the Federal Circuit,
`
`in
`
`Husky Injection Molding Systems v. R & D Tool Engineering Co.,
`
`supra.
`
`The remainder of appellant's mark is "CREDIT UNION".
`
`The
`
`term "CREDIT UNION"
`
`is important because credit unions are
`
`chartered under different laws, are owned by their depositors, and
`
`have different deposit insurance than banks.
`
`The last portion of
`
`the Hudson River Bank and Trust Company, a New York chartered stock
`
`savings bank, as shown in U.S. Registration No. 2,007,056,
`
`is
`
`"INSURED MONEY MARKET ACCOUNT".
`
`The mark is used in connection
`
`with one specific type account provided by the full service banking
`
`company through its 51 branches.
`
`Appellant does not offer a money
`
`market account and is precluded from offering such services under
`
`its charter.
`
`The services provided by appellant under the mark
`
`"SAFE HARBOR CREDIT UNION“ are different than the services provided
`
`under the mark "SAFE HARBOR INSURED MONEY MARKET ACCOUNT".
`
`C.
`
`"SAFE HARBOR" falls into the category of weak marks
`
`entitled to protection as against substantially identical
`
`designation and/or to subsequent use thereof on substantially
`
`similar goods.
`
`The addition of other matter to highly suggestive
`
`term, even if such matter is equally suggestive or even
`
`_ 8 _
`
`

`
`SERIAL NO. 76/116,397
`
`descriptive, may be sufficient to distinguish between them and
`
`avoid confusion in trade, Plus Products v. Star—Kist Foods, Inc.,
`
`220 USPQ 541 (TTAB 1983).
`
`The Star-Kist Foods application was for
`
`the mark "MEAT PLUS" for pet food.
`
`The registration was for the
`
`mark "PLUS" for food supplements for dogs and cats.
`
`"MEAT" was
`
`disclaimed.
`
`The TTAB found that the addition of "MEAT"
`
`to "PLUS"
`
`was sufficient to distinguish the mark "MEAT PLUS" as a whole from
`
`that of "PLUS" per se, not withstanding the descriptive
`
`significance of "MEAT" and the fact that the term "MEAT" had been
`
`disclaimed in connection with pet food.
`
`The phrase "SAFE HARBOR"
`
`in connection with a variety of financial services is highly
`
`suggestive and a weak mark.
`
`The addition of the disclaimed phrase
`
`"CREDIT UNION" by applicant and “INSURED MONEY MARKET ACCOUNT“
`
`in
`
`Registration No. 2,007,056 is sufficient to distinguish "SAFE
`
`HARBOR CREDIT UNION"
`
`from “SAFE HARBOR INSURED MONEY MARKET
`
`ACCOUNT" even if the services were substantially the same.
`
`D.
`
`The ultimate question of the likelihood of consumer
`
`confusion has been termed a question of fact.
`
`Each case must be
`
`decided on its own facts.
`
`In testing for likelihood of confusion
`
`under Section 2(d),
`
`thirteen factors to be considered are set forth
`
`In re E.I. DuPont de Neumours & Co., 177 USPQ 563, 567 (CCPA 1973).
`
`(1)
`
`The Similarity or Dissimilarity of the Marks in
`
`their Entireties as to Appearance, Sound, connotation and
`
`Commercial Impression.
`
`Appellant's mark is "SAFE HARBOR CREDIT UNION".
`
`SAFE
`
`HARBOR merely indicates that it is a safe place to deposit or
`
`-9-
`
`

`
`-A
`
`SERIAL NO. 76/116,397
`
`entrust something of value.
`
`CREDIT UNION indicates that the item
`
`of value is money,
`
`that the institution is owned by the depositors
`
`and is chartered and regulated under laws related to credit unions.
`
`The registered mark “SAFE HARBOR INSURED MONEY MARKET ACCOUNT“
`
`includes the same "SAFE HARBOR" and indicates that it is a safe
`
`place to deposit or entrust something.
`
`The insured portion
`
`indicates that it is a safe place because it is insured.
`
`The
`
`"MONEY MARKET ACCOUNT" portion indicates that the item of value is
`
`money and that it will be an account that invests funds in some
`
`unknown investments that may or may not be safe.
`
`The insured
`
`portion would most likely lead a consumer to expect that the
`
`principal would be protected but not the income.
`
`The registration
`
`also indicates that the FDIC will insure the principal deposited in
`
`the account.
`
`FDIC does not insure deposits in credit unions.
`
`(2)
`
`The Similarity or Dissimilarity or Nature of the
`
`Services as Described in the Application or Registration or in
`
`Connection with which a Prior Mark is Used.
`
`Appellant's mark is used in connection with credit union
`
`services.
`
`Such services are strictly regulated by state or federal
`
`laws that govern credit unions only. These regulations for credit
`
`unions are generally more restrictive than restrictions for banks.
`
`Credit unions are less likely to fail than banks.
`
`The credit union
`
`is most likely insured by NCUSIF.
`
`The registration states that the
`
`mark provides access to bank customers of money market accounts
`
`insured up to a specified amount by the FDIC.
`
`The FDIC is an
`
`agency of the federal government that insures bank depositors up to
`
`-10..
`
`

`
`SERIAL NO. 76/116, 397
`
`a specified amount.
`
`It does not tell bank customers if money in
`
`other banking accounts would be part of the specified amount.
`
`FDIC
`
`rules generally combine various accounts in one institution to
`
`determine the specified amount.
`
`‘
`
`(3)
`
`The Similarity or Dissimilarity of Established,
`
`Likely to Continue Trade Channels.
`
`Credit unions are controlled by laws that relate to
`
`credit unions only. These credit unions laws are either state of
`
`federal laws. Banks are controlled by laws that relate to banks
`
`only. These banking laws are either state or federal laws. Banks
`
`and credit unions provide many of the same services. However the
`
`governing laws are not identical and the governing agencies that
`
`enforce the laws are different. Banks make large loans to large
`
`corporations. Credit unions make relatively small
`
`loans to members
`
`who are generally individuals.
`
`FDIC insures bank deposits within
`
`limits.
`
`It is an agency of the U.S. government and has a
`
`government budget and frequently pays for depositors losses at
`
`failed banks. Credit union deposits are insured by NCUSIF which
`
`has no government budget, and has never paid losses of depositors
`
`of a failed credit union with government money. Banks and credit
`
`unions, as highly regulated entities, are clearly in different
`
`trade channels even though some of the services appear to be the
`
`same.
`
`(4)
`
`The Conditions Under Which and Buyers to Whom Sales
`
`are Made, i.e., "Impulse" vs. Careful Sophisticated Purchasing.
`
`-11-
`
`

`
`SERIAL NO. 76/116,397
`
`Deposits in banks and credit unions are made in cash.
`
`People tend to be careful where they place their money for
`
`safekeeping.
`
`A large number of factors need to be considered to
`
`determine which type institution is best for each individual.
`
`These factors include transaction fees,
`
`interest payments on
`
`accounts, services that are available,
`
`insurance and location. All
`
`of these factors vary between banks and credit unions.
`
`Some
`
`individuals maintain accounts at both banks and credit unions to
`
`minimize costs and maximize income.
`
`The customers of both banks
`
`and credit unions are for the most part careful and sophisticated
`
`users of the service provided by banks and credit unions.
`
`(5)
`
`The Fame of the Prior Mark.
`
`The "SAFE HARBOR INSURED MONEY MARKET ACCOUNT".
`
`The
`
`registered mark is used by Hudson River Bank and Trust Company to
`
`identify one or many services provided by the bank.
`
`The appellant
`
`has been able to determine that the bank had total assets of $1.1
`
`Billion and 17 branches as of December 31, 1999.
`
`The banks website
`
`(www.hudsonriverbank.com)
`
`indicated on August 16, 2002 that the
`
`bank has 51 branches and total assets of $2.5 Billion.
`
`The website
`
`lists a MONEY MARKET PLUS ACCOUNT with a minimum opening deposit of
`
`$10,000, a MONEY MARKET ACCOUNT with a minimum opening deposit of
`
`$1,000 and a COMMERCIAL MONEY MARKET PLUS ACCOUNT with a minimum
`
`opening deposit of $1,000.
`
`No other money market accounts are
`
`listed.
`
`The first use in commerce, stated in Registration No.
`
`2,007,056, was January 2, 1995.
`
`-12-
`
`

`
`(6)
`
`The Number and Nature of Similar Marks in Use on
`
`SERIAL NO. 76/116,397
`
`Similar services.
`
`REGISTRATION NO.
`
`MARK
`
`INTERNATIONAL CLASS
`
`
`
`1,673,637
`
`SAFE LANDING PLAN
`
`
`
`Class 36 for
`administrating
`employee benefit
`plans
`Class 36 for
`financial services
`
`2,014,572
`
`2,093,096
`
`HARBOR
`
`SAFE FEDERAL CREDIT Class 36 for credit
`UNION
`union services
`
`SAFE FEDERAL CREDIT Class 36 for credit
`
`union services
`
`UNION
`
`
`
`
`
`2,120,689
`
`SAFE AND DESIGN
`
`Class 36 for
`personnel
`loan
`services
`
`2,125,333
`
`2,267,234
`
`SAFE HAVEN ACCOUNT Class 36 for
`administrating a
`savings account
`SAFE HARBOR PROGRAM Class 36 for
`FROM ANPAC
`watercraft insurance
`underwriting
`
`
`
`(7)
`
`The Nature and Extent of any Actual Confusion.
`
`Appellant is not aware of any actual confusion.
`
`(8)
`
`The Length of Time During and Conditions Under Which
`
`There Has Been Concurrent Use Without Evidence of Actual Confusion.
`
`Appellant has been using the mark “SAFE HARBOR CREDIT
`
`UNION"
`
`in commerce continuously since February 1, 2000. Appellant
`
`has not able to confirm current use of the "SAFE HARBOR INSURED
`
`MONEY MARKET ACCOUNT“ mark.
`
`(9)
`
`The Variety of Goods on which a Mark is Used or is
`
`Not Used.
`
`Appellants used the mark SAFE HARBOR CREDIT UNION in
`
`connection with credit union services permitted by Michigan Credit
`
`-13..
`
`

`
`SERIAL NO. 76/116,397
`
`Union laws. These services include checking account, savings
`
`accounts,
`
`loans,
`
`travelers checks, cash transfers, etc. all for
`
`credit union members. At a credit union chartered by the state of
`
`Michigan. Section 490.4 of Michigan compiled laws is titled Powers
`
`of Credit Unions generally; Rules Authorizing Exercise of
`
`Additional Powers.
`
`[M.S.A. 23.484] sec. 4.(2)(O) provides: Act as
`
`agent for its members and depositors in the purchase, sale, or
`
`other disposition of securities,
`
`interest in mutual funds, and
`
`interest or participation in any other type of investment, if the
`
`purchase, sale, or other disposition is done solely for the account
`
`of its members and depositors and is done on a nonrecourse basis.
`
`Under subparagraph (0), a State of Michigan chartered credit union
`
`cannot own securities such as money market accounts and cannot
`
`establish such accounts in which depositors can deposit money.
`
`If
`
`a Michigan credit union invested in a money market account as an
`
`agent for one of its members, any insurance coverage on the account
`
`would be provided by the institution that established the account.
`
`Registration 2,007,056 is for a mark used only to provide
`
`access to money market accounts insured up to a specified amount by
`
`the FDIC.
`
`(10) The Market Interface Between Applicant and the Owner
`
`of a Prior Mark:
`
`There is no known market interface between appellant and
`
`Hudson River Bank and Trust Company.
`
`(11) The Extent to Which Applicant Has a Right to Exclude
`
`Others from Use of its Mark on its Goods.
`
`-14..
`
`

`
`SERIAL NO. 76/116,397
`
`Appellant will only the right to keep others from using
`
`its entire mark to provide services permitted by credit union laws
`
`and regulations.
`
`(12) The Extent of Potential Confusion.
`
`The extent of potential confusion is de minimis.
`
`The
`
`registrant is a bank and applicant is a credit union.
`
`The phrase
`
`"CREDIT UNION“ is an important part of appellant's mark. As long
`
`as "CREDIT UNION" is included it would appear that confusion would
`
`be highly unlikely. There could be some possibility of confusion
`
`if appellant offered a money market account on a recourse basis and
`
`not as an agent for a member.
`
`Such an act would be illegal and is
`
`not likely to occur.
`
`The law could be changed at some future date.
`
`However appellant would still be a credit union.
`
`(13) Any Other Established Fact Probative of the Effect
`
`of Use.
`
`Appellant is unaware of a probative of use other than the
`
`matter set forth above.
`
`VI.
`
`CONCLUSION
`
`The phrase "SAFE HARBOR"
`
`in connection with a variety of
`
`financial service is suggestive and not entitled to strong
`
`protection. Addition of the disclaimed phrase "CREDIT UNION"
`
`to
`
`"SAFE HARBOR" is sufficient to distinguish "SAFE HARBOR CREDIT
`
`UNION“
`
`from the registered trademark "SAFE HARBOR INSURED MONEY
`
`MARKET ACCOUNT".
`
`For that reason and reasons set forth above, it
`
`is respectfully submitted that the examining attorney's refusal to
`
`register appellant's trademark on the Principal Register should be
`
`...15_
`
`

`
`reversed.
`
`Such action is requested.
`
`SERIAL NO.
`
`76/116,397
`
`Respectfully submitted,
`
`SAFE HARBOR CREDIT UNION
`
`By its attorney,
`
`By
`
`Robert L. Farris
`
`Registration No. 25,112
`5291 Colony Drive North
`Saginaw, Michigan
`48603
`989-799-5300
`
`CS
`Enc:
`
`- 16 _
`
`

`
`1‘
`
`'1r2B-2'1
`
`ONLINE COPYRIGHT INFRINGEMENT’
`
`§12B.02[A]
`
`PART I — LIMITATIONS ON LIABELITY
`
`§ 1213.02 Transitory Digital Network Communications
`
`As set forth above, the Online Copyright Infringement Liability Limitation
`Act_ creates four safe harbors.1 The first exemptionz covers “Transitory Digital
`Network Cor,nmunications.”3 Section 512 exempts service providers from
`liability for copyright infringement by reason of conduct relating to “communica-
`tions functions associated with sending digital communications of others across
`digital networks, such as the Internet and other on-line networks.”4 Examples
`could‘ include providing connectivity to a website (albeit not hosting that site).5
`
`[A]——-Eligible Transmissions
`
`In summary form, Section 512’s first limitation of liability comes into play
`when a service‘ providers is charged with copyright infringement by virtue of
`transrnission7 of material through its system. The exemption applies equally when
`interrnediate "or transient8 storage9 of that material occurs during the course of
`such transmission.“
`'
`‘
`'
`S
`
`For example, in the course of moving packets of information across digital
`. on~line networks, many intermediate and transient copies of the information
`may be made inrouters and servers along the way. Such -copies are created
`as an automatic consequence of the transmission process.“
`
`1 See § l2B.Ol[C][2] supra.
`
`2As previously noted, the statute creates, strictly speaking, “limitations on liability” rather than
`“exemptions.” See § 12B.0l[C][2] supra.
`'
`
`317 U.S.C. § 5l2(a) (caption).
`
`4 Commerce Rep. (DMCA), p.50.
`
`'
`
`5 Commerce Rep. (DMCA), pp.63~64; S; Rep. (DMCA), p.54.
`5 The statute refers to “a system or network controlled or operated by or for the service provid~
`er .
`.
`.
`.” 17 U.S.C. § 5l2(a). The reference to “by or for” extends protection to “both service
`providers who offer a service and subcontractors who may operate parts of, or an entire, system
`or network for another service provider.” Commerce Rep. (DMCA), p.50; Conf. Rep. (DMCA),
`p.73; S. Rep. (DMCA), p.20.
`
`7 “The use of the term ‘transmitting’ thro_ughout_new Section 512 is not intended to belimited
`to transmissions of ‘a performance or display.’ of ‘images or sounds’ within the meaning of Section
`101 of the Copyright Act.” Commerce Rep. (DMCA), p.51; 8. Rep. (DMCA), p.41. On the
`definition of “transmit” under the 1976 Act itself, see § 8.14[C][2] supra.
`
`3 “In this context, ‘intermediate and transient’ refers to such a copy made and/or stored in the
`course of a transmission, not a copy made or stored at the points where the transmission is initiated
`or received.” Commerce Rep. (DMCA), pp.50~51; S. Rep. (DMCA), p.41.
`
`9See § 12B.Ol[B][l] supra.
`
`10 For a parallel issue in the Digital Millennium Copyright Act relating to periods of transitory
`delay, see § 8.22[A][2][a] N. 26 supra.
`
`11 Commerce Rep. (DMCA), p.50; S. Rep. (DMCA), p.4l.
`(Matthew Bender & Co., Inc.)
`
`(Rel.S4»—'1l0l
`
`Pub.4b5)
`
`

`
`A
`
`§i2B.o4[e]
`
`'
`
`NIMMER oN COPYRIGHT
`
`1213-40
`
`the choicest vehicles for bringing that flag to the provider’s attention, or imparting
`
`actual knowledge to it.43
`
`From the opposite perspective, even a service provider that receives a
`notification of claimed infringement from the copyright owner remains free to
`refuse to “take down” the offending material.“ The penalty for that behavior
`isinot automatic liability“ — instead, the service provider simply loses the
`benefit of the safe harbor that Section 512 affords,“ and is relegated to‘ its
`defenses to copyright infringement under antecedent l_aw.47
`
`[B]—-—Elernents of Notification of Infringement
`
`The previous category contemplates notification to the service provider of
`allegedly infringing conduct. The question immediately" arises of what that
`notification must consist. Section 512 specifies in minute detail the necessary
`ingredients that make a notification of claimed infringement valid.“ Failure to
`comply with these provisions deprives the notification of its function of serving
`as a —“red flag’.’49 to wave before the service provider.h5°
`'
`i
`C"
`"F
`
`[1]+—Formal Contents. First, in orderto be effective anotification must
`consist of a “written communication.”51 Next, it must be made to the service
`
`all of ‘Section 5l2’s limitations of liability constitute affirmative defenses, the service provider
`must prove its eligibility. See I-I. Rep. (DMCA), p.26. But a service provider who offers competent
`testimony that it lacked actual knowledge shifts the burden of proof to the plaintiff to negate those
`claims. That last proof usually represents an insuperable hurdle for the plaintiff.
`.
`'
`
`42 The same consideration applies to a fatally defective notification. Commerce Rep. (DMCA),
`13.54. See § 12B.04[B] z"nfi'a.
`‘
`_
`C
`'
`'
`t
`-
`'
`'
`L‘
`
`43 It would seem that the structure of the Online Copyright Infringement Liability Limitation
`Act effectively prevents an owner from “lying in the weeds” by failing to provide notice,“a_nd
`then belatedly claiming that vast damages have accrued in the interim. For having failed to serve
`a notification of claimedinfringement, the owner will lose the caseias a whole, unless it can meet
`the high burdensof‘demonstratingeither a “red flag” or actual knowledge.
`‘
`A
`V
`44 Commerce Rep. (DMCA), p.54.
`‘
`’
`45 See § 12B.O6[B] infra.
`
`'
`
`F
`
`46 Commerce Rep. (DMCA), p.54.
`
`47 See § l2B.O1[A} supra.
`.
`_
`_
`43 17 U.S.C. § 512(c)(3). Even after jettisoning mandatory copyright notice to obtain compatibil-
`ity with the Beme Convention, U.S. copyright law seems destined to articulate multiple types of
`notifications as conditions to statutory rights being enforced or extinguished. See §§ 7.02,
`9A.O4[C][2] supra.
`
`49 See §
`l2B.O4[A][l] supra.
`50 “[N]either actual knowledge nor awareness of a “red flag” may be imputed to a service pro-
`vider based on information from a copyright owner or its agent that does not comply with the
`notification provisions .
`.
`.
`Commerce Rep. (DMCA), p.54.
`
`51 17 U.S.C. § 5l2(c)(3)(A).
`
`(Matthew Bender & Co., Inc.)
`
`(Rel.54—-1/01
`
`Pub,465)
`
`

`
`--
`
`§ i2B.u4[n]
`
`3
`
`NIMMERION COPYRIGHT
`
`1213-40
`
`the choicest vehicles for bringing that flag to the provider’s attention, or imparting
`actual knowledge to it. 43
`
`From the opposite perspective, even a service provider that receives a
`notification of claimed infringement from the copyright owner remains free to
`refuse to “take down” the offending rnaterial.‘_“r The penalty _for that behavior
`is not ‘automatic liability“ — instead, the service provider simply loses the
`benefit of the safe harbor that S_ection 512 affords,“ and is relegated to its
`defenses to copyright infringement under antecedent law.47
`C
`‘
`
`[B]——Elements of Notification of Infringement
`
`The previous category contemplates notification to the service provider of
`allegedly infringing conduct, The question immediately’ arises" of what that
`notification must consist. Section 512 specifies in minute detail the necessary
`ingredients that make a notification of claimed infringement valid. 43 Failure to
`comply with these provisions deprives the notification of its ‘function of serving
`as a “red flag‘.’49 to wave before the service p‘r0‘fider.‘5°.
`V
`l
`7’
`
`[ll-——-Formal Contents. First, in~orde‘r'to be effective a notification must
`consist of a “written communication.”51"NeXt, it must be made to the service
`
`all of ‘Section 5l2’s limitations of liability constitute affirmative defenses, the service provider
`must prove its eligibility. See H. Rep. (DMCA), p.26. But a service provider who offers competent
`testimony that it lacked actual knowledge shifts the burden of proof to the plaintiff to negate those
`claims. That last proof’ usually represents an insuperable'hurdle for the plaintiff.
`' 42 The same consideration applies to a fatally defective notification. Commerce Rep. (DMCA),
`p.54. See §’ 12B.O4[B] infra.
`.:
`.
`C
`v
`t
`2 r
`.
`C
`-'
`I‘
`‘
`43 It would seem that "the structure of the Online Copyright Infringement Liability Limitation
`Act effectively prevents an owner from “lying in the weeds” by failing to provide notice, and
`then belatedly claiming that vast damages have accrued in the interim. For having failed to serve
`a notification of claimediinfringement, the owner will lose the case as a whole, unless it can meet
`the high burdens of demonstrating either a “red flag” or actual knowledge. ’
`C
`44 Commerce Rep. (DMCA), p.54.
`"
`'
`45 See §
`l2B.O6[B] infra.
`
`45 Commerce Rep. (DMCA), p.54.
`
`47 See § l2B.0l[A] supra.
`43 17 U.S.C.
`512(c)(3). Even after jettisoning mandatory copyright notice to obtain compatibil-
`ity with the Berne Convention, U.S. copy