811 F.2d 1490 (Fed. Cir. 1987), 86-1351, Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat. Ass'n

Docket Nº:Appeal No. 86-1351.
Citation:811 F.2d 1490
Party Name:1 U.S.P.Q.2d 1813 CANADIAN IMPERIAL BANK OF COMMERCE, Appellant, v. WELLS FARGO BANK, NATIONAL ASSOCIATION, Appellee.
Case Date:February 17, 1987
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1490

811 F.2d 1490 (Fed. Cir. 1987)

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

February 17, 1987

Page 1491

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

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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....

Turning to the respective marks, it is our view that...

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