Narrowing ID Scope Fails to Save Identical Mark and Related Financial Services From Likelihood of Confusion

Overview

This case involves an appeal by Bank of America Corporation regarding the refusal to register the standard-character mark MERCURY for a wide array of International Class 36 financial services.

The Trademark Trial and Appeal Board (TTAB) focused its analysis on whether the Applicant’s mark so resembled two existing MERCURY registrations for credit card-related services, that confusion would be likely.

Despite the Applicant’s attempts to differentiate its services through narrow exclusionary language and a limitation to "institutional investors," the Board ultimately found that the identity of the marks and the inherent relatedness of banking and credit card services created a clear likelihood of confusion.

Background

The Applicant filed an application seeking to register the mark MERCURY in standard characters for a variety of financial services in International Class 36.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing two existing registrations: a standard character mark MERCURY for credit card issuance in International Class 36, and a composite mark for promoting credit card sales, credit card payment processing, and administering incentive award programs.

In response, the Applicant voluntarily amended its identification of services to include a limitation stating all services were provided to "institutional investors" and "not for credit card services."

Following a final refusal and a denied request for reconsideration, the Applicant appealed to the Board.

Analysis

As a preliminary matter, the Board addressed a procedural violation. The Applicant’s reply brief was twelve single-spaced pages, violating both the ten-page limit established by Trademark Rule 2.142(b)(2) and the double-spacing requirement of Trademark Rule 2.126(b)(1). Because the Applicant did not seek leave to exceed these limits, the Board declined to consider the reply brief in its entirety.

DuPont #1: Similarity of the Marks

The Board found that the Applicant’s mark MERCURY was identical to the literal portion of the first cited registration. Regarding the second cited composite mark, the Board determined that the word MERCURY was the dominant portion, as the stylization and geometric design elements were minimal. Because the Applicant also acknowledged that "the marks are identical," the Board concluded that the first DuPont factor favored a finding of likelihood of confusion.

DuPont #2: Similarity of the Services

The Examining Attorney argued that the credit card and loyalty program services in the cited registrations were closely related to the Applicant's financial services, which included brokerage, debt settlement, funds transfer, and automated financial clearinghouse (ACH) services.

To support this, the Examining Attorney submitted extensive evidence consisting of third-party use-based registrations and several registrations owned by the Applicant itself. The Examining Attorney also provided evidence of actual marketplace use where major financial institutions offer both types of services under a single mark.

The Applicant argued that the services were dissimilar because they were not in competition and because the Applicant had specifically amended its identification to exclude credit card services. The Board rejected this argument, noting that services do not need to be competitive to be related, stating:

"The express exclusion of services related to credit cards and incentive award programs does not obviate likelihood of confusion. The question is not whether the services overlap or differ, but whether they are related such that the public will be confused as to their source...the exclusion does not affect consumer perception, because consumers are not aware of descriptions of services."

Based on the evidence of third-party registrations and marketplace usage, the Board found that the second DuPont factor favors a likelihood of confusion because consumers would believe these services emanate from a common source.

DuPont #3: Channels of Trade

The Board observed that the cited registrations contained no limitations on trade channels or classes of purchasers, meaning they are presumed to move through all normal channels of trade to all normal consumers.

The Applicant argued that its identification was limited to "institutional investors," creating specialized trade channels targeting direct trading platforms and broker-dealers. However, the Board noted that the Applicant provided no evidence to support this assertion.

Conversely, the Examining Attorney provided evidence showing that several banks, including Chase, Fifth Third, and Capital One, market their credit cards and loyalty programs specifically to corporate and business customers, who fall under the broad umbrella of "institutional investors." Because this evidence showed that financial institutions advertise both investment services and credit card services on the same websites, the Board concluded that the channels of trade and classes of customers overlap.

DuPont #4: Sophistication of Consumers

The Applicant argued that both credit card seekers and institutional investors are sophisticated and would exercise care, thereby avoiding confusion. However, the Board noted a lack of evidentiary support for this claim.

While the Board inferred that institutional investors would likely exercise greater-than-ordinary care when purchasing investment services, it found no evidence that this same level of care would be exercised when encountering credit card services. In the absence of evidence, the Board reasoned that even sophisticated consumers might simply assume the Applicant had expanded its financial offerings into the credit card market.

Consequently, the Board found this factor neutral due to the lack of evidence.

DuPont #6: Weakness of the Cited Marks

The Board analyzed both the conceptual and commercial strength of the cited marks. The Examining Attorney provided a dictionary definition of MERCURY as the Roman god of commerce, suggesting the mark has some suggestive significance in the financial field. The Applicant also pointed to several third-party registrations for MERCURY-formative marks to argue that the mark is weak and that the field is crowded.

Upon review, the Board found that many of the Applicant’s cited third-party marks were either canceled (MERCURY CASH and MERCURY GLOBAL FINANCIAL SOLUTIONS) or contained additional distinguishing wording (MERCURY CAPITAL ADVISORS and MERCURY FUND). The Board noted that canceled registrations have no probative value. Regarding the live registrations, the Board found they were too few in number to establish that the term MERCURY is commercially weak for credit card services. Furthermore, the Board emphasized that even if a mark is somewhat suggestive or "weak," it is still entitled to protection against the registration of an identical mark for related services. Consequently, the Board found the sixth DuPont factor to be neutral.

Board’s Decision

The TTAB affirmed the refusal to register the mark MERCURY under Section 2(d) of the Trademark Act. The Board concluded that the first, second, and third DuPont factors weighed heavily in favor of a likelihood of confusion.

I am a big advocate for amending identifications to narrow the scope of goods or services and restrict trade channels and classes of consumers. This strategy often works because it makes it hard for the examining attorney to establish a prima facie case through evidence. However, as this case demonstrates, there is only so much that strategy can accomplish.

The fact of this reminds me of another case that also has identical marks and related goods. The Board in that case did find the mark to be slightly weak. However, that weakness could not overcome the identical marks and closely related goods traveling through the same channels of trade.