Synergy One Lending, Inc., Serial 88063174

• Decision Date: 04 September 2020
• Docket Number: Serial 88063174
• Court: Trademark Trial and Appeal Board
• Parties: Synergy One Lending, Inc.

Synergy One Lending, Inc.

Serial No. 88063174

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 4, 2020

This Opinion is Not a Precedent of the TTAB

Kit M Stetina of Stetina Brunda Garred & Brucker, for Synergy One Lending, Inc.

Joanna M. Shanoski, Trademark Examining Attorney, Law Office 104 Zachary Cromer, Managing Attorney.

Before Lykos, Adlin, and Dunn, Administrative Trademark Judges.

OPINION

Dunn Administrative Trademark Judge.

Synergy One Lending, Inc. ("Applicant") seeks registration on the Principal Register of the mark^[1] (Image Omitted) for "financial services, namely, mortgage lending services" in International Class 36. The application includes a disclaimer of LENDING, and describes the mark as "the words SYNERGY ONE LENDING to the right of the letter and number "S1" where the "1" appears in the middle of the letter "S."

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the ground that Applicant's mark, as applied to the services identified in the application, so resembles the two commonly-owned, previously registered marks on the Principal Register shown below as to be likely to cause confusion, to cause mistake, or to deceive.

Registration No. 4734443^[2]

Registration No. 2314276^[3]

(Image Omitted)

(Image Omitted)

The mark consists of a square with pointed corners on the top right and bottom left, and rounded corners on the top left and bottom right with a “S” inserted therein with a number “1” through the “S”.

Color is not claimed as a feature of the mark.

The mark consists of a rectangle containing the letter “S” with the number one drawn through it diagonally

ATM banking services; bank tendering, namely tendering of money; banking; banking and financing services; banking consultation; banking services; banking services featuring the provision of certificates of deposit; banking services provided by mobile telephone connections; electronic banking via a global computer network; financial services, namely, funding online cash accounts from prepaid cash cards, bank accounts and credit card accounts; home banking; investment banking services; investment banking services in the field of Employee Stock Ownership Plans (ESOP); issuance of bank checks; issuing of bank cheques; merchant banking and investment banking services; merchant banking services; mortgage banking; mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; on-line banking services; on-line banking services featuring electronic alerts that alert credit and debit card users when a single transaction exceeds a certain amount; online banking services accessible by means of downloadable mobile applications.; providing bank account information by telephone; savings bank services; telephone banking services, International Class 36.

Banking, in International Class 36.

After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register.

I. Likelihood of Confusion Refusal

Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA 1976). These factors, and the others now before us, are discussed below. We must consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 U.S.P.Q.2d 1160, 1162-63 (Fed. Cir. 2019).

A. Similarity or dissimilarity of the services and channels of trade

We turn first to consider the second and third DuPont factors regarding the similarity or dissimilarity between the services, and their trade channels. It is sufficient that the services of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 U.S.P.Q.2d 14711, 1476 (Fed. Cir. 2000) ("[A]lthough the services are different, it is reasonable to believe that the general public would likely assume that the origin of the services are the same"). We make our determination regarding the similarities between the parties' services and channels of trade based on the services as they are identified in the applications and registration. In re Detroit Athletic Co., 903 F.3d 1297, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 U.S.P.Q.2d 1813 (Fed. Cir. 1987). The services need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 U.S.P.Q.2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894, 1898 (Fed. Cir. 2000). The issue is not whether the services will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 54 U.S.P.Q.2d at 1898 ("[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.").

The cited registrations are for "banking" and services which include "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans." When we consider the similarity of the parties' goods and services, it is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods or services in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 U.S.P.Q. 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406, 1409 (TTAB 2015).

Applicant seeks to register its mark for "financial services, namely, mortgage lending services." Because the noun "loan" is defined as "money lent at interest" and the verb "lend" is defined as "to make a loan," we find that the registered mortgage loan services are legally identical to Applicant's mortgage lending services.^[4] See Double Coin Holdings, Ltd. v. Tru Dev., 2019 U.S.P.Q.2d 4877349 (TTAB 2019) ("the 'tires' identified in Tru's registration encompass, and thus are legally identical to, at least the 'vehicle wheel tires,' 'automobile tires,' and 'tires for vehicle wheels' identified in Double Coin's registration"); In re Hughes Furniture Indus., Inc., 114 U.S.P.Q.2d 1134, 1137 (TTAB 2015) ("Applicant's broadly worded identification of 'furniture' necessarily encompasses Registrant's narrowly identified 'residential and commercial furniture."').

With respect to the relationship between Registrant's banking services and Applicant's mortgage lending services, the record includes excerpts from the websites for the banks Bank of America, Wells Fargo, and Sun Trust showing the three different sources providing both banking and mortgage lending services.^[5] The record also includes fifteen third party use-based registrations showing the same entity registered the same mark for both the "mortgage lending" services offered by Applicant and the "banking" services offered by Registrant.^[6] See In re Country Oven, Inc., 2019 U.S.P.Q.2d 443903, *4-5 (TTAB 2019) ("Evidence of relatedness may include news articles or evidence from computer databases showing that the relevant goods and services are used together or used by the same purchasers; advertisements showing that the relevant goods and services are advertised together or sold by the same manufacturer or dealer; or copies of use-based registrations of the same mark for both the applicant's services and the goods listed in the cited registration.").

Because the services described in the application and the cited '443 registration are in part legally identical, we presume that the channels of trade are the same for "mortgage banking services, namely, origination acquisition, servicing, securitization and brokerage of mortgage loans" and "mortgage lending services." See In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Inn at St. John's, LLC, 126 U.S.P.Q.2d 1742, 1745 (TTAB 2018). With regard to the cited '276 registration, because the identifications in the application and cited registration have no restrictions on channels of trade, we must presume that the services travel in all channels of trade appropriate for such services. See In re Viterra Inc., 101 U.S.P.Q.2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001, 1005 (Fed. Cir. 2002)). According to the record, it is common for banks, in addition to providing banking services, to provide mortgage lending services.^[7] Based on the evidence showing that banks offer both banking services and mortgage lending services, we find that the channels of trade...