BULKY DOCUMENTS
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`(Exceeds 100 pages)
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`Filed:
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`4[18[2011
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`Title: OPPOSER’S RESPONSE TO APPLICANT’S
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`MOTION FOR SUMMARY I QDGMENT.
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`Part
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`lof 1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TTAB
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`FLAGSTAR BANK, FSB,
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`Opposer,
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`v.
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`FREESTAR BANK, National
`Association,
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`Applicant.
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`VVVWVWV
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`Opposition No. 91 177943
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`fil7gg/(70/é
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`OPPOSER’S RESPONSE TO APPLlCANT’S
`MOTION FOR SUMMARY JUDGMENT
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`5.; 5;.
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`

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`(‘Serial No.2 78/915,706
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`Atty. Docket No: FSSOl89OC
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`I.
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`INTRODUCTION
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`Applicant Freestar Bank, FSB (“Freestar”), has not established as a matter of law that
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`there is no likelihood of confusion between Opposer Flagstar Bank, FSB’s (“Flagstar”) existing
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`FLAGSTAR BANK marks and the Applicant’s application for FREESTAR BANK “LIFE
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`KEEPS GETTING BETTER!” (App. No. 78/915,706).
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`The relevant DuPont‘ Factors
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`overwhelmingly weigh in favor of finding that there is a likelihood of confusion. Specifically,
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`when all reasonable inferences are weighed in the Opposer’s favor, there is a question of fact
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`regarding the likelihood of confusion because:
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`0
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`0
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`0
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`0
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`the marks are objectively similar
`commercial impression;
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`in appearance,
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`sound, connotation and
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`the parties provide identical banking goods and services;
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`the parties are deemed to have and, in fact, do distribute their goods and services
`through the same trade channels, directed towards the same type of consumer; and_
`there is a greater likelihood of confusion when the average consumer is not
`expected to exercise a high degree ofcare, and the Applicant’s own officer admits
`that Freestar banking customers often do not exercise a high degree of care.
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`Further, as the Opposer has been prominently using the FLAGSTAR BANK mark for 15 years it
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`is indisputably the senior user. As such, Flagstar is entitled to the benefit of any doubt as to the
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`likelihood of confusion between its marks and the Applicant’s proposed registration.
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`For these and other reasons discussed more fully below, the Applicant’s Motion for
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`Summary Judgment should be denied in its entirety.
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`I In re E.I. DuPont DeNem0urs & Co., 476 F.2d 1357, 1361 (CCPA 1973).
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`1
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`3
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`Serial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`ll.
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`BACKGROUND
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`Approximately 15 years ago in 1996, Opposer Flagstar adopted the business names
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`FLAGSTAR and FLAGSTAR BANK. Between 1996 and 2009, Flagstar has obtained multiple
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`FLAGSTAR—based registrations: FLAGSTAR (U.S. Reg. No. 2,015,294) for “savings and loan
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`services;” FLAGSTAR BANK and Design (U.S. Reg. No. 2,123,471) for “savings and loan
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`servicesg” FLAGSTAR BANK and Design (U.S. Reg. No. 3,188,184) for “savings and loan
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`services;” and FLAGSTAR THE NEW WAVE IN BANKING and Design (U.S. Reg. No.
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`3,593,602) for “savings and loan services and mortgage banking services, namely, origination,
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`acquisition, servicing, securitization and brokerage of mortgage loans.”2 See Exh. A, USPTO
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`Flagstar Reg. Records. As of December 31, 2010, Flagstar used and advertised its FLAGSTAR-
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`based marks in 162 banking centers (for ‘full service banking) throughout Michigan, Indiana and
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`Georgia, and in its 27 home loan centers (for mortgagelending) in 13 states} See Exh. B,
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`Flagstar 2010 SEC 10-K. For each year between 2007 and 2009, Flagstar incurred $10.3 — 12.3
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`million in advertising costs. Exh. D, Flagstar 2009 Annual Report at p. 106.
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`In 2006, Applicant Freestar, formerly known as Pontiac National Bank, adopted the
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`business name of FREESTAR BANK. See Exh. E, Aff. of Vogelsinger at 115. Freestar now
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`seeks a registration for the mark FREESTAR BANK “LIFE KEEPS GETTING BETTER!”
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`(U.S. App. No. 78/915,706) for “banking services.” As illustrated below,
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`the dominant
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`FREESTAR portion of the Applicant’s mark is similar in a number of respects to the Flagstar
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`2 FLAGSTAR (U.S. Reg. No. 2,015,294), FLAGSTAR BANK and Design (U.S. Reg. No.
`2,123,471) and FLAGSTAR BANK and Design (U.S. Reg. No. 3,188,184) are specifically
`asserted in these Opposition proceedings (hereinafter collectively “the Flagstar Marks).
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`3 Flagstar previously operated home loan centers in Illinois, but no longer does so. Exh. C,
`Glinka Aff. at 1B. There is now only one wholesale lending office in Chicago, Illinois. Id.
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`2
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`

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`Berial No.: 78/915,706
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`Atty. Docket No: FSSO] 890C
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`Marks, and especially FLAGSTAR BANK and design (U.S. Reg. No. 2,123,471) shown below
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`(hereinafter singularly referred to as “the STAR Mark”):
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`‘*''-‘“‘V-
`f'.l3Ill75T4‘.'1H
`‘I45... mum
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`-
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`,
`FREE$T£'iI?
`BAA£K
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`“Life keeps getting etter!”
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`The STAR Mark is Flagstar’s original mark and it is still used daily on the signage of some bank
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`branches. See Exh. F, Rogers Dep. at pp. 40-45', 100 referring to photos attached at Exh.
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`As the Board can see, the FREESTAR BANK portion of the Applicant’s mark mimics
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`the STAR Mark in that:
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`6
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`both consist of two syllables with the second syllable being STAR;
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`0 both utilize a similar bold, block type font and slanted presentation;
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`0
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`0
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`both use the same format, 1'. e., the word FLAGSTAR/FREESTAR is dominant,
`and the word BANK appears below in an indented, subdominant position;
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`both marks include a star graphic superimposed over the “A” in the suffix.
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`Likely in attempt to insulate its application from challenge, the Applicant nominally adds the
`slogan “Life keeps getting better!” However, the FRBESTAR portion of the mark is clearly
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`dominant as it appears in capital letters and several fonts larger than the slogan. Furthermore, the
`Applicant admits that it uses FREESTAR BANK as a standalone mark, without the slogan. See
`Exh." H, Freestar Ans.
`to Req.
`for Admissions at 11111-2.
`The .Applicant also uses both
`FRBESTAR and FREESTAR BANK as standalone marks on its website Gland, even when
`FREESTAR BANK is used with the slogan on the site, the FREESTAR portion of the mark is
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`‘Serial No.: 78/915,706
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`Atty. Docket No: FSSO] 890C
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`presented more prominently than any other lettering in the mark.4 See Exh. I, Freestar Website
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`shots; Exh. J, Carswell Aff.
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`Finally,
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`the parties are direct competitors. Both offer identical banking goods and
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`services, advertise through the same type of media channels, and target the same type of
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`customer. See Exh. F at p. 27; Exh. L, Hamilton Dep. at p. 23; Exh. M, Flagstar Ans. to
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`Interrogs. at 111] 16-17; Exh. N, Vogelsinger Dep. at pp. 44-45.
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`Based on all of these factors alone, a reasonable fact finder could find that there is a
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`likelihood of confusion between the parties’ respective marks. Therefore,
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`the Applicant’s
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`Motion for Summary Judgment should be denied in its entirety.
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`A.
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`Summary Judgment Is Not Warranted
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`III.
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`ARGUMENTS
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`Summary judgment is “to be cautiously granted.” US. Steel Corp. v. Vasco Metals
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`Corp., 157 USPQ 627, 629 (CCPA 1968). Under Fed. R. Civ. P. 56(c), summary judgment is
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`only proper “if the pleadings, depositions, answers to interrogatories, and admissions on file,
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`together with the affidavits, if any, show that there is no genuine issue as to any material fact and
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`that the moving party is entitled to a judgment as a matter of law.” “In order to establish that a
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`factual dispute is genuine, the non-moving party ‘need only present evidence from which a jury
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`might return a verdict in [its] favor.’” Olde Tyme Foods, Inc. v. Roundyl’s, Inc., 961 F.2d 200,
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`4 It is also notable that on its current website, Freestar appears to have abandoned the black and
`"green lettering claimed in the application in favor of all_ white lettering, the same as the ‘all white
`lettering Flagstar" has _ used in its print, advertising" and currently on its
`site.
`' See
`https://www.flagstar.com/ (Note that _Opposer’s counsel was unable to capture Flagstar’s website
`logo via a printout of the site; perhaps as a security measure, the logo itself would not print.);
`Exh. I; Exh. K, Sample Flagstar Advertisements.
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`4
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`Berial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`202, 22 USPQ2d 1542 (Fed. Cir. 1992) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`257 (1986)).
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`Additionally, because the Board must View all evidence in a light most favorable to the
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`non-movant, “[t]he evidence submitted by the non-movant,
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`in opposition to a motion for
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`summary judgment, ‘is to be believed, and all justifiable inferences are to be drawn in [its]
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`favor.’” Opry Land USA -Inc. v. Great American Music Show, Inc., 970 F.2d 847, 850, 23
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`USPQ2d 1471 (Fed. Cir. 1992) (quoting Anderson, 477 U.S. at 255). Furthermore, “[s]ince
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`opposing factual inferences may arise from the same set of undisputed subsidiary facts, [and] the
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`Board must draw all reasonable inferences in favor of the non-movant. .
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`.
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`. there need not be a
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`conflict in the evidence of the underlying facts to preclude summary judgment.” Olde Tyme
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`Foods, 96l F.2d at 202 (citations omitted).
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`Given the similarity of the marks and the parallels in the parties’ respective uses, there is
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`a question of material fact as to likelihood of confusion. Therefore, the Applicant’s request for
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`summary judgment should be denied.
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`B.
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`All Relevant DuPont Factors Weigh InThe Opposer’s Favor
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`The Board may refuse to register a trademark that so resembles a registered mark “as to
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`be likely, when used on or in connection with the goods of the applicant, to cause confusion, or
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`to cause mistake, or to deceive.” 15 U_.S.C_. §1052(d). Whether a likelihood of confusion exists
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`is determined on ‘a case-by—case basis, applying the relevant DuPont Factors, which in this case
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`include:
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`1.
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`The similarity or dissimilarity of the marks in their entirety as to
`appearance, sound, connotation and commercial impression.
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`fierial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`2.
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`3.
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`4.
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`6.
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`7.
`8.
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`The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a
`prior mark is in use.
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`The similarity or dissimilarity as established,
`charmels.
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`likely-to-continue trade
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`The conditions under which and buyers to whom sales are made,
`“impulse vs. careful, sophisticated purchasing.”
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`1'. e.
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`* * *
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`The number and nature of similar marks in use on similar goods.
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`The nature and extent of any actual confusion.
`The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
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`DuPont, 476 F.2d at 1361. The weight to be given the relevant factors varies from case to case.
`Id at 1362. But, “[a]ny doubts about likelihood of confusion ... must be resolved against
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`[the] applicant as the newcomer.” Olde Tyme Foods, 961 F.2d at 205 (citations omitted;
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`emphasis added).
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`Considering the similarities in the marks and the identical goods and services, trade
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`channels and target market, there is no basis to find that the Applicant is entitled to summary
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`judgment as a matter of law. On the contrary, a reasonable fact finder could find that the
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`' relevant DuPont factors overwhelmingly weigh in favor of finding that there is a likelihood of
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`confusion. '
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`1.
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`_ Factor 1:
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`The Marks Are Similar In Appearance,‘ Sound,
`Connotation And Commercial Impression
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`'
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`The first factor considers the similarity or dissimilarity of the marks in their entirety as to_
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`appearance, sound, connotation and commercial impression. DuPont, 476 F.2d at 1361. The
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`‘Serial No.2 78/915,706
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`Atty. Docket No: FSSO] 890C
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`Board must view the marks as a whole and compare them “in light of what happens in the
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`marketplace and not merely by looking at the two marks side-by-side.” AutoZ0ne, Inc. v. Strick,
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`543 F.3d 923, 929-30 (7”‘ Cir. 2008). See also Opryland USA, 970 F.2d at 851. Also, when
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`marks would appear on identical goods, a lesser degree of similarity between the marks is
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`necessary to support a finding of likelihood of confusion. See Century 21 Real Estate v.
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`Century Life, 970 F.2d 874, 877, 23 USPQ2d 1698 (Fed. Cir. 1992). Here, when the parties’
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`marks are considered in their entirety as consumers are likely to experience them there are a
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`number of similarities in appearance, sound, connotation and_ commercial impression.
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`a.
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`Appearance
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`First, as to appearance, the above-referenced standards for assessing similarity were aptly
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`demonstrated under analogous circumstances in Aut0Zone, Inc. v. Strick, supra, where the owner
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`of the AUTOZONE mark (used in conjunction with retail automobile parts) asserted a claim of I
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`infringement against the defendant’s use of the marks OIL ZONE and WASH ZONE (used in
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`conjunction with automotive services).5 Two of the marks at issue were:
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`6
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`In finding on summary judgment that the similarity of the marks factor weighed in the plaintiffs
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`favor, the ,AutoZ0ne court considered that both marks bore the same ZONE suffix, used larger
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`5 The AutoZone Court was evaluating likelihood of confusion in the context of a, claim of
`trademark infringement. However, the court employed an analysis substantially similar to that
`used by the Board to assess the similarity of marks. See AutoZone, 543 F.3d at 929-930.
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`6 The court did not provide an illustration of the WASH ZONE mark.
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`' 7
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`Serial No.: 78/915,706
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`Atty. Docket No: FSS0l 890C
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`lettering for the first
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`letter of the prefix and suffix, utilized the same font and slanted
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`presentation, and included “bar” graphic designs, stating:
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`[T]he marks in this case are similar enough that a reasonable fact finder
`could find that a consumer would believe that the marks are connected to the
`same source.
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`Here, both parties’ marks are comprised of two words. All marks have
`“zone” as the second word. The words are in the same font. They are
`slanted in the same direction. The first letter of both words is larger than the
`other letters in all of the marks. All marks feature bar designs that suggest
`movement or speed.
`AutoZone, 543 F.3d at 930 (emphasis added).
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`Further, while the AutoZ0ne Court
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`acknowledged that there were also dissimilarities between the marks, when the facts were
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`viewed in the non-movant’s favor it found that the prominent similarities sufficiently
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`outweighed any differences to preclude summary judgment.
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`Ia’.
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`- Likewise here, there are a number of parallels between the FLAGSTAR BANK and
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`FREESTAR BANK marks. Specifically, as stated:
`V I
`both consist oftwo syllables with the second syllable being STAR; I
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`0
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`both utilize a similar bold, block type font and slanted presentation;
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`.0
`‘
`on
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`both use the same format, 1'. e., the word FLAGSTAR/FREESTAR is dominant,
`and the word BANK appears below in an indented, subdominant position; and
`as compared with the STAR Mark, both include a star graphic superimposed over
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`,
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`the “A” in the suffix.
`. As in Aut0Zone, while there are also stylistic differences between the marks,
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`they are far
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`outweighed by the similarities in the most ‘prominent part of the respective marks—_—FLAGSTAR
`S and FREESTAR——particularly since the marks are used in conjunction with identical goods and
`a lesser degree of similarity is required.‘ Indeed, this Board has stated that, “although the marks
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`at issue must be considered in their entireties, it is well-settled that one feature of a mark may
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`V
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`Atty. Docket No: FSS0l89OC
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`be more significant than another, and it is not improper to give more weight
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`to [a]
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`dominant feature in determining the commercial
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`impression created by the mark.”
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`Barbara ’s Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1288 (TTAB 2007)(emphasis
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`added).
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`The slogan the Applicant includes in its mark is not a significantly distinguishing feature
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`because it is presented in significantly smaller script and subdominant to FREESTAR. Under
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`analogous circumstances, the Federal Circuit in In re Coors Brewing Company, 343 F.3d 1340,
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`1344 (Fed. Cir. 2003), upheld the Board’s refusal to find nominally depicted wording in
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`Applicant’s proposed mark to be a distinguishing factor when the prominent part of the mark
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`was otherwise similar to the registered mark, stating:
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`Both marks contain the words "Blue Moon" in all capital letters, and those words
`are prominent in each mark. The Coors mark ‘contains the disclaimed words
`"Brewing Co.," but because those words appear at the bottom of the mark in
`significantly smaller font, it was reasonable for the Board to find that those
`words do not significantly contribute to distinguishing the two marks.
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`(emphasis added). Furthermore, the Applicant admits that it uses FREESTAR BANK without
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`the slogan and that fact is demonstrated repeatedly on the Applicant’s website. See Exh. H;
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`Exh. 1.
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`Finally, the Applicant’s citation to First Savings Bank, FSB v. Firstl Bank System, Inc.,
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`101 F.3d 645, 653 (10th Cir. 1996), in support of its assertion that the parties’ proposed marks are '
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`dissimilar in appearance is inapposite.
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`In First Savings Bank, the court ‘found that the marks
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`FIRSTBANK and FIRST BANK SYSTEM were dissimilar in appearance because of differences
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`in script, format, coloring, and a logo added to one of the marks:
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`Contrary to the district court, we find that a reasonable jury could only conclude
`that the similarity between First Bank which is written as one word and spelled
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`‘Serial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`FirstBank and the [First Bank System mark] is minimal. The [First Bank System
`mark] is written in a fancy script and the words are vertically stacked. The words
`appear against a distinct, black television background. FirstBank, on the other
`hand,
`is arranged left-to-right.
`The words are pushed together and are
`accompanied by the distinctive walking—one logo. The visual differences are
`apparent.
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`First Savings Bank, 101 F.3d at 653 (footnote omitted).
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`In contrast, in the instant case the
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`dominant portion of parties’ marks appear in a very similar font, a very similar format, and the
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`Applicant’s mark includes a star graphic similar in appearance to the Opposer’s STAR Mark.
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`There is, at a minimum, a question of fact as to whether the marks are sufficiently similar
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`in appearance to create a likelihood of confusion.
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`b.
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`Sound
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`With respect to sound, notwithstanding the Applicant’s convoluted dissection of the
`phonetic differences in the FLAG and FREE prefixes, the fact of the matter is that the second
`syllable of each mark is STAR which indisputably causes the marks tosound similar. While
`there are linguistic differences in FLAG and FREE, “[t]he focus is on the recollection of the
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`average purchaser, who normally retains the general, rather than a specific,
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`impression of
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`trademarks.” * Barbara ’s Bakery, 82 USPQ2d at 1288. And, the Applicant’s contention that its
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`slogan helps to distinguish the mark as to sound, again. is unavailing because the slogan is not
`prominently asserted in the mark and the Applicant uses the mark without the slogan._
`(iiving the Qpposer the benefit ofall reasonable inferences, a reasonable fact finder could
`find that the ‘common STAR portion of the respective marks render them sufficientlyisimilar in
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`sound to create a likelihood of confusion.
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`Serial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`c.
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`The Marks Are Similar In Connotation And
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`Commercial Impression
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`There are indisputable similarities in the connotation and commercial impression of the
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`parties’ respective marks. The commercial
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`impression of a trademark includes the mental
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`reaction it evokes. Spice Islands, Inc. v. Frank Tea & C0., 505 F.2d 1293, 1296 (CCPA 1974).
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`Here, a reasonable fact
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`finder could agree that
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`the dominant FLAGSTAR and
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`FREESTAR portions of the parties’ respective marks may in many consumers evoke the well-
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`established imagery of the United States flag, patriotism, and the freedoms associated therewith.
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`The Applicant argues that other interpretations of the parties’ marks are possible. However, the
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`fact that other interpretations of either mark are possible does not negate the fact that the average
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`consumer could and likely would find that both marks evoke imagery of freedom, patriotism, and
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`the American flag.
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`lndeed, that such imagery is evoked was demonstrated during the depositions of the '
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`parties’ respective corporate representatives. Edward Vogelsinger, former President and CEO of
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`Freestar Bank, candidly agreed that the mark FLAGSTAR “plays_off of” the impression of
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`patriotism or freedom. Exh. N, Vogelsinger Dep. at p. 54. He further agreed that FREESTAR
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`BANK also “possibly” plays off of an impression of freedom, and that he associates freedom
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`with patriotism.
`Id. Likewise, when David Joyce, Flagstar’s First Vice President Director of
`Marketing,‘ was asked his opinion of the commercial impression of the FREESTAR mark, Mr.
`Joyce responded that it was ‘f[p]robably sort ofnationalistic, patriotic.” Exh. 0,, Joyce Dep. at p.
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`16-17. Mr. Joyce also stated the opinion that “Flagstar itself [has] a connotation of being
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`national,” because “it sort of alludes to the national flag.” Id. at p. 8. Further, Mr. Joyce said
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`that he considered the words free and flag to have similar meaning and connotation because
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`“they both relate to patriotism and nationalism.” Id. at p. 17.
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`The candid reactions of Mr. Vogelsinger and Mr. Joyce to the parties’ respective marks
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`are an apt example of the possible, and perhaps probable, reaction of the average consumer. At a
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`minimum, Mr. Vogelsinger and Mr. Joyce’s testimony raises a question of fact as to whether the
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`parties’ respective marks convey a similar connotation and commercial impression.
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`In light of these similarities in appearance,
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`sound, connotation and commercial
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`impression, and all reasonable inferences which must be construed in the Opposer’s favor, the
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`first DuPont factor weighs in favor of finding a likelihood of confusion.
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`2.
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`Factor 2: The Parties Offer Identical Goods And Services
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`Under the second DuPont factor, the Board must consider the similarity and nature of the
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`goods or services as described in an application orregistration. See DuPont, 476 F.2d 1361.
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`Notably, “[w]hen marks would appear on virtually identical goods or services, the degree of
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`similarity necessary to support a conclusion of likely confusion declines.” Century 21, 970 F.2d
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`at 877.
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`In the instant case, the Opposer’s registrations are for banking and related services and
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`the Applicant, likewise, seeks to register its mark for “banking services.” See Exh. A ; Exh. P,
`Freestar USP"fO Record. Also, both parties utilize their marks in conjunction with a number of
`identical. goods and services,
`including personal savings accounts, personal and_ business
`checking accounts, money market‘ accounts, certificates of deposit, home. mortgage loans, on-line
`banking and on-line mortgage applications. See Exh. M at 1[16; Exh. N at pp. 44-45. Therefore,
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`12
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`‘Serial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`it is indisputable that the parties’ goods and services are sufficiently related that a reasonable
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`consumer could attribute the marks to a single source.
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`The second DuPont factor also weighs in favor of finding a likelihood of confusion.
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`3.
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`Factor 3:
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`The Parties Advertise In The Same Type of
`Media and Trade Channels
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`When an opposer and an applicant advertise through the same media, offer the same
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`services to the same type of purchasers, and employ the same trade channels, the likelihood of
`confusion is enhanced. See Century 21, 970 F.2d at 877.
`In this case, the Opposer and the
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`Applicant both utilize print and on-line media to advertise. See Exh. F at p. 27; Exh. I; Exh. L at
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`p. 23; Exh. Q, Flagstar Website shot. The parties also offer a number of identical goods and
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`services and target
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`the same audience—personal and business banking and home lending
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`consumers. See Exh.
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`at 1[17; Exh. N at p. 44.
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`The third DuPont Factor weighs in favor of finding a likelihood of confusion.
`
`4.
`
`Factor 4:
`
`There Is No Basis To Presume
`A High Degree Of Care
`
`The fourth DuPont Factor requires consideration of “[t]he conditions under which and
`
`buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
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`476 F.2d at 1361. Where the average consumer is not expected to exercise a high degree of care,
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`there is a greater likelihood of confusion.
`
`See AutoZ0ne, 543 F.3d at 933; Connecticut
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`Community Bank v. The Bank ofGreenwich, 578 F.Supp.2d 405, 421 (D. Conn. 2008).
`
`With respect to banking consumers, courts recognize that there is no ‘basis to presume
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`that the average customer seeking routine banking services is significantly more sophisticated or
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`exercises a greater degree of care:
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`Atty. Docket No: FSS0l89OC
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`[T]he ordinary purchaser of banking services giving the attention an average
`personal banking customer pays to simple daily transactions is not the highly
`sophisticated class of people BOG attempts to portray, regardless of their
`account balance. A simple review of the instances of actual confusion noted
`above prove this point.
`.
`.
`. The average customer has little incentive to
`investigate the identity of the bank in which it closes or opens an account.
`The average bank customer seeking to merely deposit a check or make a
`withdrawal has no incentive to thoroughly investigate the name of a bank
`when it appears to be the bank he or she is looking for at first glance.
`Similarly, customers have little incentive to investigate the identity of a [bank]
`from which they seek financing. Not every individual in the relevant population
`group is the experienced, savvy attorney who frequently deals with local banks,
`although apparently even he gets confused.
`
`_ Connecticut Community Bank, 578 F.Supp.2d at 421 (emphasis added). Notably also, even when
`
`a purchaser is considered sophisticated, the TMEP states that “[t]he fact that purchasers are
`
`sophisticated or knowledgeable in a particular field does not necessarily mean that they are
`
`immune from source confusion.” TMEP §1207.01(d)(vii) (citing In re Decombe, 9 USPQ2d
`
`1812 (TTAB 1988); In re Pellerin.Milnor Corp., 221 USPQA558 (TTAB 1983)). Moreover,
`
`where the parties’ marks are similar and there is an overlap in goods and services “it is more
`likely that even an informed and sophisticated consumer will mistakenly attribute the parties’
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`products and services to a common source.” CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d
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`660, 683 (7"‘ Cir. 2001).
`
`Significantly,
`
`the experiences of the Applicant’s Executive Vice President and Chief
`
`Operating Officer, Linda Hamilton, bear out the observations of the Connecticut Community
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`Bank Court and the Board. That is, during her deposition Ms. Hamilton acknowledged that
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`Freestar’s customers in particular often. do not exercise an elevated degree of care in selecting a
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`bank:
`
`Q.
`
`In your experience, how careful are customers in selecting a bank?
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`‘Serial No.: 78/915,706
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`Atty. Docket No: FSS0l89OC
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`***
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`A.
`
`Sometimes I don’t think they’re Very picky at all, and sometimes I think
`they are, it depending [sic] on the customer.
`
`So there’s a wide range, wide spectrum?
`
`A.
`
`Yes.
`for.
`
`It depends on what they want.
`
`It depends on what they’re looking
`
`Exh. L at pp. 22-23. Ms. Hamilton’s observations based on her actual experiences dispels the
`
`notion that all or even most customers exercise a high degree of care with respect to all banking
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`services.
`
`In fact,
`
`the Applicant has presented no evidence that the average banking customer
`
`targeted by these parties is particularly sophisticated or which contradicts the observations of its
`
`own officer. Furthermore, a reasonable fact finder could find that even consumer sophistication
`would not diminish the likelihood of source confusion in this case given the similarity of"the
`
`marks, that they are used in conjunction with identical goods and services, that they are marketed
`via the same trade channels, and that the parties target the same types ofconsumers,
`For these reasons, the fourth DuPont factor weighs in favor of the Opposer.
`
`5.
`
`Factor 6:
`
`The Fact That Other Star-Formative
`
`Registrations Exist Does Not Diminish The
`Likelihood of Confusion
`
`the Applicant cites a host of existing registrations for
`For the sixth DuPont Factor,
`banking services which include the words star and/or a star graphic as purported evidence that
`consumers are accustomed to distinguishing between banks which incorporate such terms and
`graphics. However, it is settled that the mere fact of third-party registrations which incorporate
`elements of the subject mark is given little weight in the likelihood of confusion analysis absent
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`evidence of the gap; of the third-party uses cited. See Palm Bay Imports, Inc. v. Veuve
`
`Clicquot Ponsardin Maison Fondee En I 772, 396 F.3d 1369, 1373-1374 (Fed. Cir. 2005) (“The
`
`probative value of third-party trademarks depends entirely upon their usage. .
`
`.
`
`. As this
`
`court has previously recognized[,] where the ‘record includes no evidence about the wctent
`
`of [third-party] uses
`
`[t]he probative value of this evidence is at best minimal.”’) (citations
`
`omitted; first emphasis added; second emphasis in original); Olde Tyme Foods, 961 F.2d at 203
`
`(“Much of the undisputed record evidence relates to third party registrations, which are
`
`admittedly given little weight but which nevertheless are relevant when evaluating a likelihood
`
`of confusion.”)(emphasis added).
`
`The rationale for the Board’s reluctance to give weight
`
`to bald registrations is
`
`demonstrated by the fact that the mark FIRSTAR and design (U.S. Reg. Nos. 1,591,263 and
`
`1,666,049), upon which the Applicant relies heavily, has not been in use in the marketplace since
`
`2001 or 2002 when the registrant merged with U.S. Bancorp and adopted the U.S. Bank name.
`
`See Exh. R.
`
`Therefore, because the App’licant presents no evidence of the extent of the actual use of
`
`any of the cited registrations in the marketplace, the cited registrations should be afforded, at
`
`most, minimal weight. Moreover, even despite the Applicant’s failure to present any evidence of
`
`the extent of use of the cited registrations, none of them share the same combination of
`
`similarities as the Applicant’s mark,
`
`i.e., for example, the similar font, slanted presentation,
`
`unitary two-syllable principle mark incorporating the term STAR anda star graphic, and a prefix
`
`with a similar connotation and commercial impression.
`
`For all of these reasons, the sixth Du_Pont Factor is, at best, neutral.
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`‘ser1a1 No.2 78/915,706
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`Atty. Docket No: FSS0l89OC
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`6.
`
`Factors 7 And 8: The Opposer Is Not Required To Prove
`Actual Confusion
`
`The seventh and eighth DuPont Factors weigh “[t]he nature and extent of any actual
`
`confusion” and “[t]he length of time during and conditions under which there has been
`
`concurrent use without evidence of actual confusion.” DuPont, 476 F.2d at 1361.
`
`It is well-
`
`settled, that it is not necessary for an opposer to show actual confusion in order to establish
`
`likelihood of confusion, because the test is likelihood of confusion and not actual confusion. See
`
`Weiss Associates Inc. v. HRL & Associates In_c., 902 F.2d 1546, 1549, 14 USPQ2d 1840 (Fed.
`
`Cir. 1990). Therefore, the absence of evidence of confusion in and of itself fig be weighed
`
`against the Opposer. Id. The Board may only weigh the absence of actual confusion when there
`
`has been a period of concurrent use under circumstances where there. were ample opportunities
`
`for confusion to occur. Carefirst of Maryland, Inc. v. Firsthealth of the Carolinas, Inc., 77
`
`USPQ2d 1492, 1511 (TTAB 2005). That is not the case before this Board. '
`
`While the Applicant’s mark has been in use since 2006,
`
`the Applicant’s use and
`
`advertisement of its mark has been limited to three counties in Central Illinois. See Exh. E at
`
`1[1[20-21. The Opp_oser, however, does not have any banking centers in Illinois, and the home
`
`loan centers that it once operated in Illinois were not located in any of the three counties where
`
`the Applicant’s banks are located. See Exh. C at 11112-4. Therefore, the narrow scope of the
`
`Applicant’s use and advertising of its mark and the fact that the Opposer has not had any
`
`physical banking centers or loan centers in that same geographic area has not presented
`
`significant opportunities for confusion to have occurred in the past. See Carefirst ofMaryland,
`
`77 USPQ2d at 1511 (“The parties’ remote uses, not to mention the relatively small business of
`
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`lSeria1No.: 78/915,706
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`Atty. Docket No: FSS0189OC
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`applicant, greatly diminish the likelihood of many opportunities for confusion to have
`
`occurred.”) Therefore, Factors 7 and 8 are also neutral.
`
`IV.
`
`CONCLUSION
`
`All of the re