Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat. Ass'n

• Decision Date: 17 February 1987
• Docket Number: No. 86-1351,86-1351
• Citation: 811 F.2d 1490,1 USPQ2d 1813
• Parties: CANADIAN IMPERIAL BANK OF COMMERCE, Appellant, v. WELLS FARGO BANK, NATIONAL ASSOCIATION, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1490

811 F.2d 1490

1 U.S.P.Q.2d 1813

CANADIAN IMPERIAL BANK OF COMMERCE, Appellant, v. WELLS FARGO BANK, NATIONAL ASSOCIATION, Appellee.

Appeal No. 86-1351.

United States Court of Appeals, Federal Circuit.

Feb. 17, 1987.

James F. Browne, Laurence Brown and Associates, P.C., Arlington, Va., argued, for appellant. With him on brief, was Laurence R. Brown.

Thomas J. Moore, Bacon and Thomas, Alexandria, Va., argued, for appellee. Richard E. Backus, Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal., was on brief, for appellee.

Before FRIEDMAN, Circuit Judge, BENNETT, Senior Circuit Judge, and EDWARD S. SMITH, Circuit Judge.

FRIEDMAN, Circuit Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board (Board), sustaining an opposition to registration of the trademark COMMCASH for "banking services" on the basis of the prior use and registration of the trademark COMMUNICASH for "banking services." 228 USPQ 689 (TTAB 1986). We affirm.

I

The pertinent facts are as follows:

In May 1981, the appellant Canadian Imperial Bank of Commerce (Canadian Bank) filed an application to register COMMCASH as a service mark for "banking services." Crocker National Bank (Crocker), now Wells Fargo Bank, N.A., opposed the application on the basis of Crocker's prior use and registration of the mark COMMUNICASH for "banking services."

As the Board stated, the only contested issue in this proceeding was "whether use of the respective marks on the respective services would be likely to cause confusion as to source or origin under Section 2(d) [of the Lanham Act, 15 U.S.C. Sec. 1052(d) ]." 228 USPQ at 689.

Although Canadian Bank's application and Crocker's registration cover the use of their respective marks for "banking services," both marks are currently used only in connection with the highly specialized service of electronic cash management. This service apparently is used solely by large corporations and banks. The Board found that Canadian Bank's proffered testimony supported Canadian Bank's contention that

the degree of care taken in purchasing these services is extremely high and the purchaser of the services is much more discerning and sophisticated than a member of the public seeking banking services for his or her personal needs.

228 USPQ at 690. Nonetheless, the Board concluded that

[i]t is well settled that in a proceeding such as this, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in applicant's application vis-a-vis the goods and/or services recited in an opposer's registration, rather than what the evidence shows the goods and/or services to be. See: CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.Cir.1983); 1 McCarthy, Trademarks and Unfair Competition Sec. 20: 4A, 1024 (2d. ed. 1984) and cases cited therein [sic].

In the present case, the relevant analysis of likelihood of source confusion may not be limited to electronic banking services to corporate and institutional customers since the recitation of services in Turning to the respective marks, it is our view that while they are not identical, they are strikingly similar in appearance, sound and in the commercial impression engendered....

applicant's application and in opposer's registration is not so limited. On the contrary, applicant seeks registration of the "COMMCASH" mark for banking services with no restrictions whatsoever. Similarly, the services covered by opposer's pleaded registration for "COMMUNICASH" include banking services, per se. Therefore, applicant's banking services as well as those of opposer are assumed to be all services that would ordinarily be considered to fall under the heading of banking services....

....

Since we find that "COMMCASH" and "COMMUNICASH" are similar in appearance, sound and meaning and since the marks are used in connection with identical banking services which are presumed to be banking services rendered to all ordinary bank customers, we conclude that source confusion is likely.

228 USPQ at 690-91.

II

Canadian Bank's principal contention is that the Board erred in basing its determination of likelihood of confusion upon the use of the mark specified in the application for registration and the existing registration of Crocker for the broad category of "banking services" instead of the narrower use that Canadian Bank and Crocker made of the marks for the specialized services of electronic cash management.

Canadian Bank asserts that decisions of this court and its predecessor require the Board to base its decision upon the narrower actual use of the marks in the marketplace, and that because the customers of the specialized service are sophisticated and discerning, there is no likelihood of confusion.

Our decisions, however, do not justify the conclusion that Canadian Bank draws from them. Instead, they support the decision of the Board.

A. In CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.Cir.1983) (which, as noted, the Board cited, but which Canadian Bank did not even refer to in its opening brief), this court reversed a decision of the Trademark Trial and Appeal Board dismissing an opposition to registration of the mark THINKER TOYS based upon the likelihood of confusion with the registered mark TINKERTOY. The application for registration of THINKER TOYS described the goods involved as "includ[ing] 'electronic components and circuit boards,' but ... not includ[ing] 'electronic terminals, keyboards, screens, printers, computers or programs or software for games or toys.' " 708 F.2d at 1580, 218 USPQ at 199. The opposer's mark TINKERTOY was registered "for 'games, toys, and children's building-blocks.' " Id.

In holding that registration of the applicant's mark "should ... be refused" because "as applied to applicant's goods, [the mark] so resembles opposer's registered mark that it is likely to cause confusion," 708 F.2d at 1582, 218 USPQ at 200, the court stated:

Where likelihood of confusion is asserted by an opposer with respect to a trademark for which an application for registration has been filed, the issue must be resolved on the basis of not only a comparison of the involved marks, but also on consideration of the goods named in the application and in opposer's registration and, in the absence of specific limitations in the application and registration, on consideration of the normal and usual channels of trade and methods of distribution. The description of the goods in the application for registration is critical because any registration that issues will carry that description. Moreover, although a registrant's current business practices may be quite narrow, they may change at any time from, for example, industrial sales to individual consumer sales.

Id. at 1581, 218 USPQ at 199 (citations omitted); see also 1 J. McCarthy, Trademarks and Unfair Competition, Sec. 20:4A at 1024 (2d ed. 1984) ("In determining likelihood of confusion in an opposition, it is the mark as shown in the application and as used on the goods described in the application which must be considered, not the mark as actually used by applicant").

The court also rejected the applicant's argument that

confusion from use of the marks is not likely because its customers are by and large sophisticated, well-educated, technically oriented persons, in contrast to the generally juvenile buyers of the wooden stick toys that opposer manufactures. However, there is no restriction on the nature of the "games" identified in opposer's registration.

708 F.2d at 1581, 218 USPQ at 199-200.

CBS fully supports the Board's ruling that "in a proceeding such as this, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in applicant's application vis-a-vis the goods and/or services recited in an opposer's registration, rather than what the evidence shows the goods and/or services to be." In CBS, the court held that the issue of likelihood of confusion must be resolved not only by comparison of the marks themselves, "but also on consideration of the goods named in the application and in opposer's registration and, in the absence of specific limitations in the application and registration, on consideration of the normal and usual...