Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1161942
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`Filing date:
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`09/24/2021
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
`
`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91254295
`
`Defendant
`Apex Bank
`
`L CLINT CROSBY
`BAKER DONELSON BEARMAN CALDWELL & BERKOWITZ PC
`3414 PEACHTREE ROAD NE
`SUITE 1500
`ATLANTA, GA 30326
`UNITED STATES
`Primary Email: ccrosby@bakerdonelson.com
`Secondary Email(s): srussell@bakerdonelson.com, abald-
`ridge@bakerdonelson.com, achaloner@bakerdonelson.com
`615-726-5600
`
`Opposition/Response to Motion
`
`L. Clint Crosby
`
`ccrosby@bakerdonelson.com, lgoforth@bakerdonelson.com
`
`/L. Clint Crosby/
`
`09/24/2021
`
`210924 Apex Bank - Response to Motion for Summary Judgment - REDACTED
`.pdf(268681 bytes )
`210924 Apex Bank - Declaration of C Crosby and Exhibits A through M R
`EDACTED.pdf(4143316 bytes )
`210924 Apex Bank - Exhibits N through W.pdf(5494214 bytes )
`
`

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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91254295
`Mark: ASPIRE BANK & Design
`Application Nos.: 88573746, 88573752,
`88573752
`
`)))))))
`
`
`
`CC Serve Corporation
`Opposer,
`
`v.
`Apex Bank
`Applicant.
`
`APPLICANT’S RESPONSE IN OPPOSITION TO OPPOSER’S MOTION FOR
`SUMMARY JUDGMENT
`
`
`COMES NOW Applicant, Apex Bank, and in opposition to Opposer CC Serve
`
`
`
`Corporation’s pending Motion for Summary Judgment (“Motion”), states as follows:
`
`INTRODUCTION
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`This matter is a classic example of overreaching by an opposer with very narrow trademark
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`protection in connection with a limited type of services. Opposer—who is not even using the
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`ASPIRE mark in connection with credit card services—seeks to prevent Applicant from applying
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`for a different mark, ASPIRE BANK, in connection with a different type of services, banking and
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`financing services.
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`Applicant has submitted
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`three applications—Serial Nos. 88573746, 88573752,
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`88573752—for the ASPIRE BANK (and Design) marks, each in connection with banking and
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`financing services (collectively referred to herein as the “ASPIRE BANK mark”). The applied-
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`for marks have virtually the same stylization, except that two of the applications claim different
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`color combinations and one of the applications does not claim color.
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`The absence of any likelihood of confusion is underscored by the Trademark Examiner’s
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`approval of Applicant’s ASPIRE BANK applications over a letter of protest by Opposer without
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`so much as even an Office Action. In other words, the Trademark Examiner considered Opposer’s
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`
`
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`

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`ASPIRE registration and did not believe that there was any risk of confusion among consumers
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`that would warrant further inquiry. At a minimum, this suggests that reasonable persons could
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`disagree on the issue of likelihood of confusion.
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`Further, as set forth more specifically below, there are genuine disputes of fact as to the
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`issues of standing, priority, and likelihood of confusion, all of which preclude summary judgment.
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`Accordingly, the Board should deny Opposer’s Motion for Summary Judgment.
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`LAW AND ARGUMENT
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`A. Opposer has not met the standard for entry of summary judgment in its favor.
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`Summary judgment is appropriate only in cases where the moving party establishes that
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`there are no genuine issues of material fact which require resolution at trial and that it is entitled
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`to judgment as a matter of law. Fed. R. Civ. P. 56(c). An issue is material when its resolution
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`would affect the outcome of the proceeding under governing law. Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 248 (1986). A fact is genuinely in dispute if the evidence of record is such that a
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`reasonable factfinder could return a verdict in favor of the nonmoving party. Id. The nonmoving
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`party must be given the benefit of all reasonable doubt as to whether genuine issues of material
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`fact exist, and the evidentiary record on summary judgment, and all inferences to be drawn from
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`the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See
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`Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
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`Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
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`1992).
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`Opposer’s purported “Statement of Uncontroverted Facts” is largely incomplete and does
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`not identify sufficient facts which would establish that it is entitled to summary judgment. (See
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`Opposer’s Mem., pp. 7-8). Most notably, Opposer’s “Statement of Uncontroverted Facts” ignores
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`
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`2
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`

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`the genuine factual disputes relating to Opposer’s lack of use of its registered ASPIRE mark in
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`connection with “credit card services” and the genuine factual disputes relating to the likelihood
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`of confusion with respect to, at a minimum, (1) the degree of similarity or dissimilarity between
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`the marks, (2) the degree of similarity or dissimilarity between Applicant’s services and Opposer’s
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`services, (3) the degree of similarity or dissimilarity of established, likely-to-continue trade
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`channels, (4) the conditions under which and buyers to whom sales are made, (5) the number and
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`nature of similar marks in use on similar goods, and (6) the variety of goods on which a mark is or
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`is not used. It is Applicant’s position that the following facts are genuinely disputed:
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`1. Opposer does not use and has never used the ASPIRE mark in connection with
`“credit card services.”
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`2. Applicant’s ASPIRE BANK mark is different from Opposer’s ASPIRE mark in
`sound, appearance, and connotation, which eliminates any risk of confusion.
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`3. Applicant’s applied-for “banking and financing services” are different from
`Opposer’s registered “credit card services,” which eliminates any risk of confusion.
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`4. Applicant and Opposer use different trade channels, which eliminates any risk of
`confusion.
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`5. Applicant’s and Opposer’s customers are different, and Applicant’s customers of
`banking and financing services use a high degree of care, which eliminates any risk
`of confusion.
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`6. Opposer’s ASPIRE mark is weak in light of substantial third-party use of the word
`ASPIRE in connection with credit card services, as well as in connection with
`financial services more broadly, which eliminates any risk of confusion.
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`These genuine factual disputes preclude the entry of summary judgment in Opposer’s
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`favor. See Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55, 66 (1st Cir. 2013) (“Because the
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`likelihood of confusion analysis is a particularly fact-intensive one, resolving this issue on
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`summary judgment is disfavored.”); Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190,
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`1219 (9th Cir. 2012) (“[D]istrict courts should grant summary judgment motions regarding the
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`likelihood of confusion sparingly, as careful assessment of the pertinent factors that go into
`3
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`
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`

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`determining likelihood of confusion usually requires a full record.”); AHP Subsidiary Holding Co.
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`v. Stuart Hale Co., 1 F.3d 611, 616 (7th Cir. 1993) (“[A] motion for summary judgment in
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`trademark infringement cases must be approached with great caution.”); Country Floors, Inc. v.
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`P’Ship Composed of Gepner & Ford, 930 F.2d 1056, 1063 (3d Cir. 1991) (noting that in the
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`likelihood of confusion context “summary judgments are the exception”). Opposer’s Motion
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`should be denied.
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`B. There is a threshold issue as to whether Opposer has ever used the ASPIRE mark in
`connection with “credit card services” and, therefore, whether Opposer has standing
`and priority.
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`Opposer has conceded that any credit cards offered under the ASPIRE mark are actually
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`issued by Bank of Missouri, not by Opposer. (See Declaration of L. Clint Crosby ¶ 2, Ex. A
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`(Excerpt from Rule 30(b)(6) Deposition of Brian Stone, at p. 76:1-5, Feb. 25, 2021)). In fact, as a
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`matter of law, Opposer could not offer any credit cards under the ASPIRE mark because “you have
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`to be a licensed bank” to offer a credit card, and Opposer is not a licensed bank. (Id. at p. 78:6-
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`19, 99:25-100:2). Rather, Opposer is merely “a program manager for banks.” (Id. at p. 100:3-7).
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`The term “credit card services” has been recognized by the U.S. Patent and Trademark
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`Office to be “indefinite and overly broad because the nature of the activity provided is unclear.”
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`(See Crosby Decl. ¶ 3, Ex. B). Thus, it is not apparent whether Opposer’s registration is intended
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`to cover credit card authorization services, credit card payment processing services, issuing credit
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`cards, or some other more definite activity relating to credit cards.
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`Nevertheless, there is no evidence that Opposer actually performs any of these activities
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`under the ASPIRE mark.
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`
`
`4
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`
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` (See
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`

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`Crosby Decl. ¶ 2, Ex. A (Stone Tr. at p. 101:21-102:16)).
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`
`
`
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` (Id. at p. 76:1-5, 101:21-102:16,
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`107:2-8). Opposer has submitted no evidence regarding the relationship between it and these third-
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`parties which would afford it standing and priority in connection with credit card services.1
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`To the extent that Opposer’s registration and trademark rights have been abandoned for
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`lack of use in connection with credit card services and/or Opposer’s registration is invalid for fraud
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`on the Trademark Office in connection with untrue statements of use in connection with credit
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`card services, Opposer cannot genuinely claim to be damaged by the registration of the ASPIRE
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`BANK mark in connection with banking and financing services and lacks standing under 15 U.S.C.
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`§ 1063. Further, to the extent that Opposer has never used its ASPIRE mark in connection with
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`credit card services, it lacks priority over ASPIRE BANK in connection with credit card services
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`as well as banking and financing services.
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`C. Opposer’s ASPIRE Mark is a weak mark and therefore entitled to lesser protection
`based on substantial third party use of similar marks for similar goods and services.
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`TMEP section 1207.01(d)(iii) provides that “Evidence of third-party use falls under the
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`sixth du Pont factor – the ‘number and nature of similar marks in use on similar goods.’” (citing
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`In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973)). If the evidence
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`establishes that the consuming public is exposed to third-party use of similar marks on similar
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`goods, it ‘is relevant to show that a mark is relatively weak and entitled to only a narrow scope of
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`protection.’ Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 73
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`
`1 Opposer has pleaded that it is using the ASPIRE mark in connection with credit card services to
`millions of individual consumers and has pleaded no other basis for standing or priority. (See
`Notice of Opposition, ¶ 7).
`
`5
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`
`
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`

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`USPQ2d 1689, 1693 (Fed. Cir. 2005); see also In re FabFitFun, Inc., 127 USPQ2d 1670, 1675
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`(TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT
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`and SMOKIN’ HOT SHOW TIME to be “somewhat weak” based in part on evidence of third-
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`party use of the term on similar cosmetics goods and noting that such uses “tend to show consumer
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`exposure to third-party use of the term on similar goods”). In other words, evidence of a “crowded
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`field” of third-party uses of similar marks for the same or related goods or services can be used to
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`“show that customers…have been educated to distinguish between different…marks on the basis
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`of minute distinctions.” 2 McCarthy on Trademarks and Unfair Competition §11:88 (4th ed. 2015)
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`(citations omitted).
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`
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`The word ASPIRE is weak as applied to credit card services and should be afforded a
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`narrow scope of protection. When analyzing whether a likelihood of confusion exists, a key
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`consideration is the strength of the senior user’s mark. See, e.g., James Burrough, Ltd. v. Sign of
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`Beefeater, Inc., 540 F.2d 266 (7th Cir. 1976). The strength of a party’s mark is legal shorthand
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`used to quantify the breadth of protection to be afforded a mark. Waples-Platter Co. v. General
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`Foods Corp., 439 F. Supp. 551, 575 (N.D. Tex. 1977). A strong mark is entitled to a broad scope
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`of protection. See, e.g., J.B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 192 (9th Cir.
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`1975). A weak mark is entitled to a narrow scope of protection. Id.
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`
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`Numerous other businesses use the word ASPIRE in connection with credit cards and other
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`credit offerings throughout the country. Applicant’s research has revealed the following
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`representative list:
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`1. American Express’s offering of a HILTON HONORS AMERICAN EXPRESS
`ASPIRE CARD credit card (Crosby Decl. ¶ 4, Ex. C)
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`2. America’s Credit Union’s ASPIRE LIFESTYLE LENDING credit card and
`personal loan offering (Crosby Decl. ¶ 5, Ex. D)
`
`
`
`
`6
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`

`

`3. Capital One’s ASPIRE credit card (Crosby Decl. ¶ 6, Ex. E)
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`4. Columbus Bank & Trust Company’s ASPIRE VISA GOLD credit card (Crosby
`Decl. ¶ 7, Ex. F)
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`5. Kalsee Credit Union’s ASPIRE FINANCIAL COUNSELING program (Crosby
`Decl. ¶ 8, Ex. G)
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`6. SECU’s ASPIRE STUDENT VISA CARD credit card (Crosby Decl. ¶ 9, Ex. H)
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`7. Texell Credit Union’s ASPIRE credit card (Crosby Decl. ¶ 10, Ex. I)
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`8. ASPIRE FEDERAL CREDIT UNION in connection with a variety of lending and
`credit offering services (Crosby Decl. ¶ 11, Ex. J)
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`9. ASPIRE PAYMENTS in connection with credit card processing software and
`services (Crosby Decl. ¶ 12, Ex. K)
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`10. ASPIRE SERVICING CENTER in connection with payment processing services
`for repaying loans (Crosby Decl. ¶ 13, Ex. L)
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`Thus, even with respect to the services set forth in the pleaded registration, Opposer is entitled to
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`only limited protection in its ASPIRE mark.
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`
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`Further, in connection with the financial services industry more broadly, there are even
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`more instances of third-party use, which further weakens Opposer’s rights—to the extent it has
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`any—in connection with financial services. Applicant’s research has revealed the following
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`additional representative examples of third-party use of the word ASPIRE in connection with
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`financial services:
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`1. Addition Financial’s ASPIRE CHECKING checking account for college students
`(Crosby Decl. ¶ 14, Ex. M)
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`2. Fairfield County Bank’s ASPIRE checking account for students and young adults
`(Crosby Decl. ¶ 15, Ex. N)
`
`3. Greater Nevada Credit Union’s ASPIRE CHECKING checking account (Crosby
`Decl. ¶ 16, Ex. O)
`
`4. Guardians Credit Union’s ASPIRE CHECKING checking account (Crosby Decl. ¶
`17, Ex. P)
`
`
`
`
`7
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`

`

`5. LTi Technology Solutions’ ASPIRE asset finance solution (Crosby Decl. ¶ 18, Ex.
`Q)
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`6. Green Financial Services’ ASPIRATION debit card (Crosby Decl. ¶ 19, Ex. R)
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`7. HSA Solutions’ ASPIRE retirement planning solutions and retirement management
`systems (Crosby Decl. ¶ 20, Ex. S)
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`Opposer’s corporate representative, Brian Stone, was asked about a number of third-party uses
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`during his deposition, and he testified that Opposer had not given any of these entities permission
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`to use the ASPIRE mark. (See Crosby Decl. ¶ 2, Ex. A (Stone Tr. at p. 81:9-87:21)).
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`
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`Beyond these common law uses, there are also a number of third-party registrations for
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`marks containing the word ASPIRE in connection with similar goods and services. See Crosby
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`Decl. ¶ 21, Exs. T, U. Perhaps most notably, the Trademark Office recently registered the mark
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`ASPIRE CAPITAL ADVISORS in connection with investment management, financial planning,
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`financial advice, and a variety of other services in Class 36. (See Crosby Decl. ¶ 21, Ex. U (U.S.
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`Reg. No. 6,331,340)). There are also federal registrations for ASPIRE UNIVERSAL in
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`connection with financial management services (Crosby Decl. ¶ 21, Ex. U (U.S. Reg. No.
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`5,085,019)), and ASPIREVEST in connection with financial services, namely, investment advice,
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`investment management, investment consultation and investment of funds for others, including
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`private and public equity and debt investment services (Crosby Decl. ¶ 21, Ex. U (U.S. Reg. No.
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`4,699,320)), as well as various state registrations containing the word ASPIRE in connection with
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`banking, financial, and related services. (See Crosby Decl. ¶ 21, Exs. T, U).
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`The number of third-party uses and registrations is directly relevant to determining the
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`strength of a party’s mark. See, e.g., In re Lucky Co., 209 USPQ. 422, 423 (T.T.A.B. 1980). The
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`Eighth Circuit has recognized that “[d]etermining that a mark is weak means that consumer
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`confusion has been found unlikely because the mark’s components are so widely used that the
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`
`
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`8
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`

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`public can easily distinguish slight differences in the marks, even if the goods are related.” General
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`Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir. 1987) (finding that APPLE RAISIN CRISP
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`is a weak mark and not infringed by third-party’s use of OATMEAL RAISIN CRISP). As a result,
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`“where a party uses a weak mark, his competitors may come closer to his mark than would be the
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`case with a strong mark without violating his rights.” Kenner Parker Toys, Inc. v. Rose Art Indus.,
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`Inc., 963 F.2d 350, 353, 22 USPQ2d 1453 (Fed. Cir. 1992).
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`In light of the substantial third-party use of the word ASPIRE in connection with credit
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`card-related services, as well as in the financial services industry more broadly, consumers are
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`used to distinguishing between various uses of ASPIRE in connection with financial services. See
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`Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1338, 115 USPQ2d 1671 (Fed. Cir.
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`2015) (“[S]ufficient evidence of third-party use of similar marks can ‘show that customers . . .
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`‘have been educated to distinguish between different . . . marks on the basis of minute
`
`distinctions.’’”) (quoting 2 McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed.
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`2015)). This is particularly true in the banking industry in general, where consumers have become
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`accustomed to distinguishing between similar marks. (See Crosby Decl. ¶. 23, Ex. V (Excerpts
`
`from Rule 30(b)(6) Deposition of Santiago Cuccarese, at p. 53:13-16, Apr. 20, 2021 (“In the
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`banking industry, you have several financial institutions across different states using similar
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`names. Like, there are First Banks everywhere. Star Banks everywhere, or City Banks, et
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`cetera.”))); see also First National Bank in Sioux Falls v. First National Bank South Dakota, 153
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`F.3d 885, 889 (8th Cir. 1998) (holding that in the banking context “customers are more likely to
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`notice what, in other contexts, may be relatively minor differences in names”).
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`The number of third-party registrations is likewise “relevant to prove that some segment
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`of the composite marks which both contesting parties use has a normally understood and well-
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`
`
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`9
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`

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`recognized descriptive or suggestive meaning, leading to the conclusion that that segment is
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`relatively weak.” Juice Generation, 794 F.3d at 1339 (quoting 2 McCarthy on Trademarks and
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`Unfair Competition § 11:90 (4th ed. 2015)); see also Anthony’s Pizza & Pasta Int’l, Inc. v.
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`Anthony’s Pizza Holding Company, Inc., 95 U.S.P.Q.2d 1271, at *8 (T.T.A.B. Nov. 10, 2009)
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`(“The testimony, third-party registrations, and telephone listings are sufficient to show that the
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`name ‘Anthony’s’ has been extensively adopted, registered and used as a trademark for restaurant
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`services, in particular for Italian restaurants and pizzerias, and therefore that ‘Anthony’s’ has a
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`significance in this industry. Thus, the evidence corroborates the testimony that ‘Anthony’s’
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`suggests an Italian restaurant or even a New York style Italian restaurant. As a result, a mark
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`comprising, in whole or in part, the name ‘Anthony’s’ in connection with restaurant services
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`should be given a restricted scope of protection.”).
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`The extensive third-party use and registrations of the word ASPIRE in connection with
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`identical or similar goods and services indicates that the scope of protection afforded Opposer’s
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`ASPIRE mark is necessarily narrow and that confusion is not likely to result from the use of
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`Applicant’s ASPIRE BANK mark. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 768
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`(Fed. Cir. 1993) (finding TTAB erred in granting summary judgment where it failed to consider
`
`evidence of third party use and the effect of this factor on the strength of the mark and the
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`likelihood of confusion); Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1339 (Fed.
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`Cir. 2015) (finding TTAB erred in granting summary judgment where it overlooked the extensive
`
`evidence of third party use and “gave inadequate consideration to the strength or weakness of GS’s
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`marks”); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
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`S.L.U., 797 F.3d 1363, 1373-74 (Fed. Cir. 2015) (finding Board erred in concluding that this factor
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`was neutral in light of the “extensive evidence of third-party use and registrations”). At a
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`
`
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`10
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`

`

`minimum, this suggests that reasonable people could disagree regarding whether there is a
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`likelihood of confusion between Opposer’s ASPIRE mark and Applicant’s ASPIRE BANK mark
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`and that summary judgment would be improper.
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`D. The marks are not sufficiently similar for there to be a likelihood of confusion.
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`Keeping in mind the narrow scope of protection afforded Opposer’s ASPIRE mark,
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`Applicant’s ASPIRE BANK mark and Opposer’s ASPIRE mark are not similar in a way that is
`
`likely to cause confusion. In the crowded field of ASPIRE marks, Applicant’s mark stands out as
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`distinctly different because it ends in the word “bank.”
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`As a threshold matter, while the dominant portion of a mark may be given greater weight,
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`“each mark must still be considered as a whole.” First Sav. Bank, F.S.B. v. First Bank System,
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`Inc., 101 F.3d 645, 653 (10th Cir. 1996). ASPIRE BANK and ASPIRE do not sound alike.
`
`ASPIRE BANK has four syllables, while ASPIRE only has three syllables. Further, the addition
`
`of “bank” at the end of ASPIRE BANK brings an entirely new sound to ASPIRE BANK that is
`
`unlike that of ASPIRE alone. See First Sav. Bank, 101 F.3d at 653 (finding “[a]s to pronunciation
`
`‘First Bank System’ contains an additional word, and to that extent is pronounced differently than
`
`FirstBank.”).
`
`Further, ASPIRE BANK and ASPIRE are not alike in appearance. ASPIRE BANK
`
`consists of two words, rather than one. It is also applied-for in a particular stylized design, which
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`includes a mountain feature in the background. This design feature is not part of Opposer’s
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`registered ASPIRE mark2 and, particularly when viewed with the addition of the word “bank” in
`
`
`2 Opposer’s common law use of its stylized ASPIRE mark (as shown on p. 7 of Opposer’s
`Memorandum) was not pleaded and is not relevant for purposes of this analysis.
`11
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`
`
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`

`

`the ASPIRE BANK mark, results in a substantially different appearance from Opposer’s ASPIRE
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`mark.
`
`
`
`For example, in Caruso v. Estefan, 994 F. Supp. 1454 (S.D. Fla. 1998), Caruso owned
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`multiple federal trademark registrations for the mark BONGO for various clothing goods.
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`Estefan’s business also involved selling clothing, but under the mark BONGOS CUBAN CAFÉ
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`(both with and without a logo design). Caruso brought a trademark infringement suit against
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`Estefan. In its comparison of the parties’ marks, the court began by noting that in determining the
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`similarity of two marks, “[t]he marks are examined in their entirety, rather than simply by
`
`comparison of the similar terms of dominant features.” Id. at 1460. The court immediately noted
`
`that “[t]he mere fact that both marks incorporate a form of the common word “bongo” does not
`
`render the marks similar.” Id. In analyzing the two marks, the court concluded that “‘Bongo’ and
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`‘Bongos Cuban Café’ have distinct appearances and sounds” and “clearly convey different
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`commercial impressions.” Id.
`
`
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`Other courts have reached similar conclusions. See, e.g., Freedom Sav. & Loan Ass’n v.
`
`Way, 757 F.2d 1176, 1182 (11th Cir. 1985) (FREEDOM REALTY and FREEDOM SAVINGS
`
`AND LOAN ASSOCIATION were not so similar that they suggested a connection between the
`
`two entities, particularly considering the relative weakness of the registered marks); Conde Nast
`
`Publications, Inc., 507 F.2d at 1407 (holding that the dissimilarities between COUNTRY
`
`VOGUES and VOGUE outweigh their similarities); Colgate-Palmolive Co. v. Carter Wallace,
`
`Inc., 432 F.2d 1400, 1402 (C.C.P.A. 1970) (finding PEAK PERIOD does not look like PEAK);
`
`First Sav. Bank, F.S.B. v. First Bank System, Inc., 101 F.3d 645, 653 (10th Cir. 1996) (holding
`
`that FIRSTBANK and FIRST BANK SYSTEM have “apparent” visual differences); Spice
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`Islands, Inc. v. The Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (C.C.P.A. 1974)
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`(comparing words and design to words and design, SPICE TREE and tree design held not
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`confusingly similar to SPICE ISLANDS and tree design, both for spices). As these cases show,
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`any potential likelihood of confusion between marks sharing a common element can be
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`outweighed by additional, unshared elements.
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`ASPIRE BANK and ASPIRE are also dissimilar in commercial impression and
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`connotation. The word “bank” at the end of the ASPIRE BANK mark clearly suggests that
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`Applicant is a bank. Indeed, virtually all states in the United States prohibit the use of terms
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`indicating that a business is a bank unless the business is legally authorized to engage in banking.
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`See, e.g., Crosby Decl. ¶ 23, Ex. W (Virginia Code § 6.2-939; O.C.G.A. § 7-1-243; Utah Code §§
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`7-1-701, 7-22-102; R.C.W. §30A.04.020; Tenn. Code § 45-2-1709). The obvious reason for these
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`regulations is that consumers attribute significant meaning to the word “bank.” Thus, the use of
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`the word “bank” in the ASPIRE BANK trademark has a very specific connotation and indicates to
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`consumers that the services are being provided by a business authorized by law to engage in
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`banking activities.
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`The Federal Circuit has cautioned against looking at only the dominant portion of a mark
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`and emphasized that a mark should be viewed in its entirety. In In re Hearst, 982 F.2d 493 (Fed.
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`Cir. 1992), the court compared the marks VARGAS and VARGA GIRL for calendars, and,
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`notwithstanding the TTAB’s finding that the word “girl” was merely descriptive, found:
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`“The appearance, sound, sight, and commercial impression of
`VARGA GIRL derive significant contribution from the component
`“girl”. By stressing the portion “varga” and diminishing the portion
`“girl”, the Board inappropriately changed the mark. Although the
`weight given to the respective words is not entirely free of
`subjectivity, we believe that the Board erred in its diminution of the
`contribution of the word “girl”. When GIRL is given fair weight,
`along with VARGA, confusion with VARGAS becomes less likely.”
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`Id. at 494 (footnote omitted). The court concluded that the differences in “sound, appearance,
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`connotation, and commercial impression” between the marks was sufficient to negate the
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`possibility of a likelihood of confusion. Id.
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`In the instant case, the ASPIRE BANK mark should be viewed in its entirety, with the
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`word “bank” given fair weight. The addition of the word “bank” at the end of ASPIRE BANK,
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`creates a distinct commercial impression that avoids any likelihood of confusion.
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`E. Applicant’s services and Opposer’s services are not similar.
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`Opposer’s pleaded registration for the ASPIRE mark is for “credit card services.” As
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`explained above, this description it itself indefinite and overly broad, and it is not clear what is
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`meant by “credit card services” in the pleaded registration. On the one hand, Opposer itself seems
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`to provide back-end “program management” services for financial institutions offering credit
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`cards, but on the other hand, Opposer has presented itself in this Opposition as providing credit
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`card services to individual consumers. (See, e.g., Notice of Opposition, ¶ 7). Certainly, as to the
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`back-end “program management” services that Opposer provides to financial institutions, these
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`could hardly be considered similar to banking and financing services, which are offered to
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`individual bank accountholders.
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`Even to the extent Opposer’s registration is construed as covering offering credit card
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`products to individual cardholders, these services are different than the applied-for “banking and
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`financing services,” which involve “rais[ing] deposits,” and do not involve offering any credit
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`products. (Crosby Decl. ¶ 22, Ex. V (Cuccarese Tr., at p. 27:2-6, 28:2-11, 28:21-29:1)). Courts
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`that have considered similar issues have generally found that credit card services are “qualitatively
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`different from providing traditional banking services.” Accord Popular Bank of Fla. V. Banco
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`Popular de Puerto Rico, 9 F. Supp. 2d 1347, 1354 (S.D. Fla. 1998); see also KeyCorp v. Key Bank
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`& Trust, 99 F. Supp. 2d 814, 824 (N.D. Ohio 2000) (finding this factor was neutral where one
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`party offered secured credit card services and the other offered unsecured credit card services);
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`Universal Money Centers, Inc. v. American Tel. & Tel. Co., 797 F. Supp. 891, 895 (D. Kan. 1992)
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`(finding there was a “critical distinction between the cards: the AT&T card allows consumers to
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`purchase items on credit while the UMC card allows consumers to make deductions directly from
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`their own bank accounts”). Accordingly, Applicant’s applied-for “banking and financing services”
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`and Opposer’s “credit card services” are sufficiently distinct and will not result in a likelihood of
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`consumer confusion.
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`F. The trade channels for Applicant’s services and Opposer’s services are not similar.
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`As discussed above, Opposer’s related entity, Atlanticus uses the ASPIRE mark in
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`connection with offering services as “a program manager for banks.” (Crosby Decl. ¶ 2, Ex. A
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`(Stone Tr. at p. 100:3-7)).
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`
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` (See, e.g., id. at p. 100:18-101:23).3 On the other hand, Applicant’s customers
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`of its applied-for goods and services are expected to be individuals interested in setting up deposit
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`accounts through a virtual bank.
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`As a result of this distinction, the channels of trade and methods used to market the
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`respective services are different. The U.S. District Court for the District of Kansas considered a
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`similar situation in Universal Money Centers, Inc. v. American Tel. & Tel. Co., 797 F. Supp. 891
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`(D. Kan. 1992). In Universal Money Centers, the plaintiff, Universal Money Centers contracted
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`with various financial institutions to issue plastic “debit” cards, which were used for accessing
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`3 Throughout Mr. Stone’s deposition, counsel for Opposer objected to identifying the banks with
`which Opposer contracts on the basis that the identities of Opposer’s customers was protected from
`disclosure under TMBP 414. (See, e.g., Crosby Decl. ¶ 2, Ex. A (Stone Tr. at p. 27:17-28:5, 29:16-
`19, 30:18-31:2)).
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`ATMs and for making retail purchases, under the marks UNIVERSAL MONEY CARD,
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`UNIVERSAL MONEY, and UNIVERSAL MONEY CENTER. Id. at 892 & n.1. Universal
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`Money Centers sued AT&T over the alleged likelihood of confusion over AT&T’s use of the mark
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`AT&T UNIVERSAL CARD in connection with its combination telephone and retail credit card.
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`The Court distinguished the products on the basis that (1) there was a “critical distinction between
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`the cards: the AT&T card allows consumers to purchase items on credit while the UMC card allows
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`consumers to make deductions directly from their own bank accounts”; and (2) while AT&T’s
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`customers were the individual cardholders, “UMC’s true customers are the financial institutions
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`who utilize UMC’s services, rather than the individual cardholders.” Id. at 895-96.
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`Similarly, in this instance, Opposer markets its services directly to financial institutions
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`who seek to offer credit card products to individuals. On other hand, Applicant anticipates
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`marketing directly to individuals seeking to secure their deposits with an FDIC-insured bank. As
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`a result, the trade channels are markedly different, as in Universal Money Center. This cuts against
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`any likelihood of confusion.
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`Even to the extent the Board construed Opposer’s marketing activities as being directed
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`toward the individuals seeking to open credit cards with third-party financial institutions, the
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`marketing channels are still different.
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`at p. 51:21-53:19)).
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` (S