Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SEARS MORTGAGE CORPORATION
NORTHEAST SAVINGS F.A.
Cancellation No. 20,061
July 29, 1992
Before Sams, Cissel and Hanak
Members of the Board
Opinion by Cissel
Northeast Savings F.A. was issued Reg. No. 1,631,084 on January 8, 1991. The registered mark is "APPROVAL PLUS" and the services are identified as "mortgage banking and mortgage brokerage services." The word "APPROVAL" was disclaimed apart from the mark as shown. Use since September 15, 1989 was claimed.
On August 23, 1991 a Petition to Cancel was filed by Sears Mortgage Corporation. As grounds for cancellation petitioner asserted prior use and registration of the mark "APPROVALFIRST" for "mortgage payment financial consulting services" [FN1], and that respondent's mark, as used with the services set forth in the registration, so resembles petitioner's marks that confusion is likely. Respondent denied the essential allegations of the petition.
This case now comes up on respondent's motion for summary judgment, filed on January 22, 1992. Respondent essentially takes the position that even if the services, customers and trade channels were the same, there is no dispute as to the marks of the parties, and the undisputed facts require a finding that the marks are so dissimilar that confusion is unlikely as a matter of law.
Respondent submitted a brief in support of its motion as well as copies of portions of the application file which led to the registration of the mark asserted by petitioner; the declaration, with exhibits, of Carol Drake, respondent's marketing communications officer; and copies of numerous third-party registrations. Petitioner, in opposition to respondent's motion, submitted only a brief.
Petitioner argues a number of reasons why it contends the marks of the parties are similar, and petitioner disputes the effect that the evidence and arguments of respondent should have. Instead of identifying any genuine dispute as to issues of material fact, petitioner simply argues that the materials submitted at this juncture support the conclusion that confusion is likely. Indeed, in its brief, at p. 9, petitioner states that if the facts concerning the identity of the services, customers and trade channels, which respondent has conceded for purposes of considering its motion, were actually established by evidence, "likelihood of confusion could be found on summary judgment."
Fed.R.Civ.P. 56(c), provides that summary judgment
shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law....
As the Board stated in Flatley v. Trump, 11 USPQ2d 1284, at 1287:
The summary judgment procedure is a pre-trial device to dispose of cases in which there is no genuine issue as to any material fact, and the moving party is entitled to judgment as matter of law. See: Bongrain International v. Moquet Ltd., 230 USPQ 626 (TTAB 1986), affirmed in unpublished opinion, Appeal No. 86-1487 (Jan. 16, 1987 CAFC), and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986). On motion for summary judgment, a court may not resolve an issue of fact, but rather must determine whether there is any genuine issue of material fact in dispute, and, if not, render judgment in accordance with the law as applied to the established facts, or, if so, deny the motion and allow the case to proceed to a trial of the disputed facts. See: 6 Moore's Federal Practice Par. 56.11 [1.-0], at 56- 197 (2d ed. 1984); Wright, Miller & Kane, Federal Practice and Procedure: Civil 2d Section 2712 at 574-578 (1983); Scharf v. United States Attorney General, 27 FRServ2d 1127 (CA9 1979); Buzzelli v. Minnesota Mining & Mfg. Co., 480 F.2d 541, 178 USPQ 260 (CA6 1973); and Giant Food, Inc. v. Standard Terry Mills, Inc., supra. The moving party has the burden of establishing initially the absence of any genuine issue of material fact; only when this initial burden has been met does the burden then shift to the nonmoving party to produce sufficient evidence to support the claim that a genuine factual issue exists. See: Gutwein v. Roche Laboratories, 30 FRServ2d 642 (CA2 1984), and Bernard v. Gulf Oil Co., 27 FRServ2d 760 (CA5 1979). All doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party. See: United States Jaycees v. San Francisco Junior Chamber of Commerce, 175 USPQ 525 (NDCalif.1972), affirmed 513 F.2d 1226, 185 USPQ 257 (CA9 1975). Similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See: Cedillo v. International Association of Bridge and Structural Iron Workers, Local Union No. 1, 27 FRServ2d 1116 (CA7 1979); Saxony Products, Inc. v. Guerlain, Inc., 513 F.2d 716, 185 USPQ 474 (CA9 1975); and Brass Craft Mfg. Co. v. Teledyne Corp., 180 USPQ 486 (DCConn1973).
*2 Application of these principles to the facts of the case at hand requires granting respondent's motion for summary judgment. Neither party contends that facts concerning the similarity of the marks are disputed. Assuming, for the purpose of resolving the motion, that the parties render identical services through the same trade channels to the same customers, the mark used by respondent, "APPROVAL PLUS," is simply not similar enough to petitioner's "APPROVALFIRST" marks to be likely to cause confusion.
In Keebler Company v. Murray Bakery Products, Inc., 866 F.2d 1386, 9 USPQ2d 1736 (Fed.Cir.1989) and Kellogg Co. v. Pack 'Em Enterprises, Inc., 951 F.2d 330, 21 USPQ2d 1142 (FedCir.1991) summary judgment was granted to the defendants under circumstances very similar to the circumstances in this case. There were no disputes concerning the marks of the parties or the products with which they were used. In the Keebler case, "PECAN SHORTEES" for cookies was held not likely to cause confusion with "PECAN SANDIES" for the same goods. In the Kellogg case, "FROOTEE ICE" and design for flavored ice bars was held not likely to cause confusion with "FROOT LOOPS" for breakfast cereal and related products. In each case the term common to both marks in issue either was descriptive of the goods or was the phonetic equivalent of such descriptive term. In each case it was held that dissimilarity of the marks in their entireties was a sufficient basis upon which to grant summary judgment.
In the instant case respondent has established that the word "APPROVAL" is merely descriptive of the services of the parties. In the specimens submitted with the applications which matured into petitioner's pleaded registrations, the word is used repeatedly to describe the "APPROVALFIRST" service, which is explained as an "approval program" whereby a prospective home purchaser can get "approval" for a home loan which would require a certain monthly housing payment. Several references to "early approval" of the mortgage are made in the text of the specimens. Moreover, the third-party marks referred to in the search report made of record by respondent show that the word "APPROVAL" appears in several marks adopted and registered by others for services which appear to be similar to the services rendered by the parties in this proceeding.
Although respondent disclaimed the term under Section 6(a) of the Act because it is merely descriptive of the services, petitioner did not, nor was it required to do so. Disclaimer is not required by the Commissioner, under Patent and Trademark Office practice, where the descriptive term is only a part of a compound word making up a unitary mark. Our finding that "APPROVAL" is descriptive of those services is therefore not affected by the fact that petitioner did not disclaim it in its pleaded registrations.
It is entirely appropriate, in determining whether marks so resemble each other that confusion is likely, to recognize that ... "one feature of a mark may have more significance than another, and in such a case there is nothing improper in giving greater weight to the dominant feature." Somerset Distilling Inc. v. Spaymalt Whiskey Distributors Ltd., 14 USPQ2d 1539, at 1542, (TTAB 1989). The marks must still be considered in their entireties, however.
*3 In light of the fact that the term "APPROVAL" describes these services, prospective purchasers are apt to look to other elements of marks which include the term in order to distinguish between such marks.
When the marks in the case at hand are considered in their entireties, they are not so similar in sound, appearance or meaning that confusion is likely. "APPROVAL PLUS" does not closely resemble "APPROVALFIRST" in appearance or pronunciation, and the meaning of each is different. Although respondent concedes in its reply brief that it "may be true that both marks suggest an enhanced version of the approval process", we do not believe that, from this rather qualified concession, one could reasonably draw the inference that at trial petitioner could show that prospective purchasers of these services would find "APPROVALFIRST" and "APPROVAL PLUS" confusingly similar in connotation. That is to say, applicant's concession that both marks suggest enhanced versions of the approval process does not amount to a concession that the marks have the same connotation (any more than, for example, a concession that marks like "TURKEY" and "RAVEN" are suggestive of birds would be a concession that "TURKEY" and "RAVEN" have the same connotation). Cf. Howard Johnson Co. v. Ground Pat'i Inc., 214 USPQ 214 (TTAB 1982) [There, the Board found no likelihood of confusion in the use of the marks "THE GROUND PAT'I" and "THE GROUND ROUND," both marks applied to restaurant services; while both marks generally connoted "beef," the Board found that the two marks conveyed the suggestion of "beef" in different ways.] In the case at hand, in addition to the descriptive term "APPROVAL", the term "FIRST" in petitioner's mark relates to time as it is used in connection with these services, while the additional word in respondent's mark, "PLUS", is more general, suggesting "something extra." Petitioner's mark suggests that approval is provided before it is necessary, or prior to when it would be provided by someone else. Although the unspecified enhancement suggested by respondent's mark could theoretically include something related to timeliness, the two suggestions are, on their faces, not the same.
The differences in appearance, pronunciation and meaning are sufficient for us to conclude that these marks are not enough alike to be likely to cause confusion, even as used with identical services. Petitioner has not responded to respondent's motion by showing that any facts material to this issue are disputed, or that based on the undisputed facts, respondent is not entitled to judgment as a matter of law. Accordingly, respondent's motion for summary judgment is granted and the petition to cancel respondent's registration is denied.
Members, Trademark Trial and Appeal Board
FN1. Reg. No. 1,602,825, issued June 19, 1990, for the term in typed form; Reg. No. 1,602,827, also issued June 19, 1990; the term "APPROVALFIRST" is stylized in this registration.
*4 E. W. Hanak
I respectfully dissent from the result reached by the majority. The majority bases its finding of no likelihood of confusion, in part, on its determination that "the meaning of each [APPROVAL PLUS and APPROVALFIRST] is different." However, at page 3 of its reply brief, respondent states that "petitioner further advances the notion that both marks suggest an enhanced version of an approval process," and then respondent concedes that "this may be true." The majority's conclusion that the connotative property of the word "first" in APPROVALFIRST merely "relates to time" overlooks the fact that the word "first" also means "foremost in rank, quality," and that said definition is somewhat close to that of the word "plus." Webster's New Word Dictionary (2d ed. 1970).
Moreover, relying upon a trademark search report and various third-party registrations attached to respondent's brief, petitioner correctly notes that "in none of these registrations was the term [APPROVAL] used in the unusual manner in which it is used in the competing marks [APPROVAL PLUS and APPROVALFIRST]." (Petitioner's brief p. 5). In its reply brief, respondent notes "that petitioner has joined two terms together to create an unusual display of a mark." (Respondent's reply brief p. 2).
I believe that a trial is merited, among other reasons, to determine whether, to use respondent's own words, it "may be true" that the two marks have the same connotative properties and to determine, in light of respondent's acknowledgement of the unusualness or distinctiveness of petitioner's mark APPROVALFIRST, the strength of the mark APPROVALFIRST and respondent's intent in adopting the mark APPROVAL PLUS.
In granting summary judgment, the majority has improperly resolved disputes of fact or inferences in favor of the moving party (respondent) even though the moving party itself has admitted the existence of genuine disputes of fact by conceding that it "may be true" that both marks have the same connotative properties (reply brief p. 3) and by acknowledging the unusualness or distinctiveness of petitioner's mark APPROVALFIRST (reply brief p. 2). See Olde Tyme Foods Inc. v. Roundy's Inc., --- F.2d ----, 22 USPQ2d 1542, 1546 (Fed.Cir.1992).