Southwest Financial Federal Credit Union

This Opinion is Not a Precedent of the TTAB Mailed: January 7, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board _____

In re Southwest Financial Federal Credit Union _____

Serial No. 98427867

Serial No. 98427875

(Consolidated)

_____

Darin M. Klemchuk of Klemchuk PLLC for Southwest Financial Federal Credit Union.

Colleen Orscheln, Trademark Examining Attorney, Law Office 132, Brandon Marsh, Managing Attorney.

_____

Before Heasley, Larkin, and Allard,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Southwest Financial Federal Credit Union ("Applicant") seeks registration on the Principal Register of the standard-character mark SOUTHWEST FINANCIAL and the composite word-and-design mark

both for services in International Class 36 ultimately identified as

1

- 2 -

Credit union services; Financial services, namely, banking services featuring financing loans for consumers; installment loans; savings account services; financing loans for automobiles; providing personal lines of credit; Financial services, namely, banking services featuring checking account services; Banking services featuring the provision of individual retirement account services; banking services provided via electronic device access allowing a consumer to use a telephone number to conduct basic banking transactions; audio response access being automated teller machine services; Financial services, namely, banking services featuring issuing of credit cards; banking services provided via personal computer account access; Financial services, namely, banking services featuring providing money market deposit accounts, and issuing debit cards; financial services, namely, banking services for electronic check acceptance services; Financial services, namely, banking services for financing loans for a mortgage.¹

The Examining Attorney has refused registration of both marks on two grounds. First, the Examining Attorney has refused registration of both marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the marks so resemble the mark PACIFIC SOUTHWEST FINANCIAL in typeset form, registered on the Principal Register for the services listed below in International Class 36 Financial analysis and consultation; financial

management and investment in the fields of asset

allocation and management, cash management, estates,

college funding, retirement, insurance and investment;

insurance consultation and brokerage; financial support

services, namely, providing consultation to professionals in

- 3 -

an [sic] variety of disciplines, namely, taxation, accountancy, underwriting, actuary;² as to be likely, when used in connection with the services identified in the '867 and '875 Applications, to cause confusion.

Second, the Examining Attorney has refused registration of Applicant's word mark under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that the words SOUTHWEST FINANCIAL are primarily geographically descriptive of the services, and has refused registration of Applicant's composite mark under Section 2(e)(2) and Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), unless Applicant disclaims the exclusive right to use SOUTHWEST FINANCIAL apart from the mark as shown.

Applicant appealed the refusals when the Examining Attorney made them final.³ Applicant and the Examining Attorney have filed briefs in each appeal.⁴Because the

2 The cited Registration No. 2687936 (the "'936 Registration") issued on February 18, 2003 based on a showing of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and was most recently renewed in 2023. The registrant has disclaimed the exclusive right to use FINANCIAL apart from the mark as shown. "Prior to November 2,

- 4 -

issues presented in both appeals are very similar and the records are virtually identical in each case, we consolidate the appeals sua sponte, In re S. Malhotra & Co., Ser. No. 79194076, 2018 WL 4660940, at *1 (TTAB 2018), and will decide them in a single opinion. We affirm the Section 2(d) refusals in both cases and do not reach the geographic descriptiveness and disclaimer refusals. In re Princeton Equity Grp. LLC, Ser. No. 97397212, 2025 WL 1638891, at *4 (TTAB 2025).

I. Prosecution Histories and Records on Appeal⁵ We briefly summarize below the prosecution histories of the '867 and '875 Applications, and their virtually identical records.

'867 Application

In the '867 Application, Applicant sought registration of its word mark based on a specimen consisting of multiple pages from its website at swfinancial.org.⁶The Examining Attorney issued an Office Action refusing registration on the basis of the cited '936 Registration and the geographic descriptiveness of the mark,⁷and required Applicant to amend its identification of services.⁸The Examining Attorney made of record USPTO electronic records regarding the '936 Registration,⁹third-party at 7 TTABVUE in the appeal in the '875 Application. Unless otherwise indicated, we will cite the briefs in the appeal in the '867 Application.

- 5 -

webpages of Wells Fargo, Bristol County Savings Bank, and BNC National Bank that she claimed showed the relatedness of the involved services, trade channels, and classes of consumers,¹⁰and an entry from Britannica.com captioned "Southwest."¹¹ Applicant responded by arguing against the likelihood of confusion refusal and purporting to amend its identification of services.¹²Applicant also argued that no disclaimer of SOUTHWEST FINANCIAL was required,¹³even though the Examining Attorney had not required a disclaimer as to the standard-character mark, but had instead refused registration of the mark in its entirety based on geographic descriptiveness. Applicant made of record pages from the website of bankrate.com discussing the differences between banks and credit unions,¹⁴and pages from its own website.¹⁵

The Examining Attorney then issued an Office Action making final the likelihood of confusion and geographic descriptiveness refusals, as well as the refusal based on the requirement of an amendment to Applicant's identification of services.¹⁶The Examining Attorney made of record additional third-party webpages of Citizens Bank, KeyBank, PNC, Regions, and Truist that she claimed "further provide that the

- 6 -

relevant services are provided under the same mark,"¹⁷third-party webpages from whatstates.com and sciencing.com regarding the meaning of the word "southwest,"¹⁸ and third-party webpages pages from compeer.com, smartasset.com, and vermillionfinancial.com that she claimed show that "the term FINANCIAL is often used in the industry as describing various banking services."¹⁹

'875 Application

The prosecution of the '875 Application proceeded in parallel with the '867 Application, and the records are virtually identical.²⁰In the '875 Application, the Examining Attorney required a disclaimer of the exclusive right to use the words SOUTHWEST FINANCIAL apart from Applicant's composite mark as shown,²¹and included that requirement in her final Office Action,²²together with the refusals based on likelihood of confusion and Applicant's failure to amend its identification of services.²³

- 7 -

II. Analysis of Likelihood of Confusion Refusals

"The Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion [or] mistake, or to deceive." In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination of the likelihood of confusion under Section 2(d) of the Trademark Act is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) ("DuPont"). Charger Ventures, 64 F.4th at 1379. We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).

"Two key factors in every Section 2(d) case are the first two factors regarding the similarity or dissimilarity of the marks and the goods or services, because the fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." DC Comics

v. Cellular Nerd LLC, Opp. No. 91246950, 2022 WL 17832492, at *10 (TTAB 2022) (internal quotations and quotation marks omitted).

Applicant focuses on these two key factors in its briefs. 4 TTABVUE 12-21 ('867 and '875 Applications. Applicant also discusses the fourth and eighth DuPont factors.

4 TTABVUE 21-23 ('867 and '875 Applications).

- 8 -

A. Similarity or Dissimilarity of the Marks

Under the first DuPont factor, "we consider the 'similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" In re Ye Mystic Krewe of Gasparilla, Ser. No. 90522364, 2025 WL 2953731, at *4 (TTAB 2025) (quoting DuPont, 476 F.2d at 1361). "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." Sage Therapeutics, Inc. v. Sageforth Psych. Servs., LLC, Opp. No. 91270181, 2024 WL 1638376, at *5 (TTAB 2024) (quoting In re Inn at St. John's LLC, Ser. No. 87075988, 2018 WL 2734893, at *5 (TTAB 2018) (citation omitted), aff'd per curiam, 777 F. App'x 516 (Fed. Cir. 2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) ("It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.") (citation omitted).

"The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). "The focus is on the recollection of the average purchaser, who normally 'retains a general rather than a specific impression of marks.'" Id. (quoting In re i.am.symbolic, llc, Ser. No. 85916778, 2018 WL 3993582, at *4 (TTAB 2018) (citations omitted)). The

"average purchasers" here include ordinary consumers who purchase the various financial and banking services that are identified in the '867 and '875 Applications.

- 9 -

1. '867 Application

The marks at issue in the '867 Application are SOUTHWEST FINANCIAL and PACIFIC SOUTHWEST FINANCIAL, both in standard characters. Applicant argues that the fact that "Applicant's Mark and the Cited Mark include some (but not all) of the same terms is not dispositive." 4 TTABVUE 13. According to Applicant, a "simple comparison of Applicant's Mark and the Cited Mark clearly demonstrates the differences between the marks in sight, sound, and connotation:

Applicant's Mark: SOUTHWEST FINANCIAL

The '936 Mark: PACIFIC SOUTHWEST FINANCIAL"

Id.²⁴Applicant argues that the Cited Marks [sic] are three-word marks—one including the term "Pacific" not present in Applicant's Mark and the other with a completely separate leading term. Likewise, the existence of additional and different terms in the Cited Mark distinguishes the marks in both sight and sound such that Applicant's Mark is distinguishable from the Cited Mark and no likelihood of confusion exists. Id. (emphasis in bold here in italics in the original). Applicant further argues that

[t]he leading, and therefore dominant, portion of the '936 Mark is "Pacific"—a term not even present in Applicant's Mark. And while the Examiner maintains that Applicant

"has merely removed the PACIFIC from the beginning of the wording in Reg. No. 2687936's mark to form its mark,"

this is decidedly inaccurate, as Applicant's Mark was created and in use for many years prior to any use of the

- 10 -

Cited Mark in commerce—as shown in the prosecution history for each mark, Applicant's Mark was first used in 1962 while the Cited Mark was not used until 1997. . . . The absence of this dominant term from Applicant's Mark means Applicant's Mark and the Cited Mark also convey distinct commercial impressions from one another, as the term "Pacific" in the Cited Mark makes clear and specific reference to the Pacific coast of the United States—a connotation not included in Applicant's Mark. Id. at 14-15 (citation omitted).

The Examining Attorney responds that "PACIFIC SOUTHWEST FINANCIAL and applicant's mark, SOUTHWEST FINANCIAL both contain locations (SOUTHWEST OR PACIFIC SOUTHWEST) followed by the descriptive term FINANCIAL. Thus, the marks share a highly similar sound, appearance, and overall commercial impression, and therefore are confusingly similar." 6 TTABVUE 5. The Examining Attorney argues that "consumers are likely to perceive applicant 's mark as merely a variant of registrant's mark when used on the services identified by the parties," and that "Applicant's mark is identical to registrant's mark except for the removal of the term PACIFIC from the beginning of the mark." Id. The Examining Attorney further argues that "Applicant argues that it did not remove PACIFIC to create the mark, as applicant claims the mark has been in existence since 1962, and registrant's mark was formed in 1997," but that Applicant's

"mark was not registered as a trademark in 1962, and applicant did not apply for trademark registration of the mark until 2024, over twenty years after registrant 's mark had registered." Id.

Before we discuss the similarity of the marks, we must note that Applicant's and the Examining Attorney's discussion of Applicant's "removal" of a word from the cited

- 11 -

mark in the formation of Applicant's mark confuses the issue.²⁵The TRADEMARK MANUAL OF EXAMINING PROCEDURE ("TMEP") summarizes the law as follows:

"Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted."

TMEP § 1207.01(b)(iii) (collecting cases). But the language discussing "additions or deletions to marks" should not be taken literally. Although an applicant could intentionally delete matter from a known prior mark (or add matter to a known prior mark), the inter partes discovery tools that could yield evidence regarding an applicant's selection of its mark are unavailable to the USPTO and applicants in the ex parte context. In this context, the issue is not whether Applicant deliberately

"removed" such matter, but rather whether the absence of such matter avoids a likelihood of confusion. In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48 (Fed. Cir. 2010) ("The presence of an additional term in [a] mark does not necessarily eliminate the likelihood of confusion if some terms are identical.").

Marks must be considered in their entireties, but "there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties." In re Jimenez, Ser. No. 97551823, 2025 WL 3126703, at *5

- 12 -

(TTAB 2025) (citing In re Detroit Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018) (quoting In re Nat'l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985))). We agree with Applicant that PACIFIC is the dominant portion of the cited mark PACIFIC SOUTHWEST FINANCIAL because it is the lead word in the mark, the second word SOUTHWEST was found by the Board almost 50 years ago to be "a geographical term referring to the southwestern section of the United States, and . . . a somewhat weak term," In re Allied Equip. Co., 1977 WL 22683, at *2 (TTAB 1977), and the registrant was required to disclaim the exclusive right to use the third word FINANCIAL apart from the mark as shown.²⁶In comparing the marks in their entireties, we will give greater weight to the word PACIFIC in the cited mark than to the other two words.²⁷ Although PACIFIC is the dominant portion of the cited PACIFIC SOUTHWEST FINANCIAL mark, the involved marks share the words SOUTHWEST FINANCIAL and "Applicant's mark is identical to the [second and third] word[s] of [the cited] mark and is entirely incorporated by it." Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *5. "Marks have frequently been found to be similar where one mark incorporates

- 13 -

the entirety of another mark, as is the case here." Id. (quoting TiVo Brands LLC v. Tivoli, LLC, Opp. No. 91221632, 2018 WL 6921323, at *16 (TTAB 2018)). See also Hunter Indus., Inc. v. Toro Co., Opp. No. 91203612, 2014 WL 1649332, at *11 (TTAB 2014) ("[l]ikelihood of confusion has been found where the entirety of one mark is incorporated within another") (finding the applicant's mark PRECISION and the opposer's mark PRECISION DISTRIBUTION CONTROL to be confusingly similar) (citing Mighty Leaf Tea, supra; Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324 (CCPA 1967); In re U. S. Shoe Corp., Ser. No. 446404, 1985 WL 72046 (TTAB 1985)).

"Similarity is not a binary factor but is a matter of degree." St. Helena Hosp., 774 F.3d at 752 (citation omitted). The PACIFIC SOUTHWEST FINANCIAL and SOUTHWEST FINANCIAL marks are similar in appearance and sound because of the presence of SOUTHWEST FINANCIAL in both marks, and they both connote financial services provided by an entity in the Southwest region of the United States. There are differences in appearance, sound, and meaning between the marks due to the presence of the dominant word PACIFIC in the cited mark, but we find that the marks are more similar than dissimilar in appearance, sound, and meaning because they share the phrase SOUTHWEST FINANCIAL. A consumer with a general rather than specific recollection of the cited mark PACIFIC SOUTHWEST FINANCIAL who separately encounters Applicant's mark SOUTHWEST FINANCIAL may notice the absence of the word PACIFIC in Applicant's mark, but is more likely than not to understand Applicant's mark to be a shortened version of the cited mark. Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *5 ("if consumers recognize the differences

- 14 -

in the marks, those consumers familiar with the registered GASPARILLA TREASURES mark may perceive Applicant's GASPARILLA mark as an extension of Registrant's product offerings under a shortened version of Registrant's mark" ) (citing Schieffelin & Co. v. Molson Cos., Opp. No. 69312, 1989 WL 277823, at *4 (TTAB 1989) ("Those consumers who do recognize the differences in the marks may believe that applicant's mark is a variation of opposer 's mark that opposer has adopted for use on a different product.")). The first DuPont factor thus supports a conclusion that confusion is likely with respect to the word mark shown in the '867 Application. Naterra, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir. 2024).

2. '875 Application

The marks at issue in the '875 Application are Applicant's composite mark and the cited standard-character mark PACIFIC SOUTHWEST FINANCIAL. Applicant argues that "[o]n their face, Applicant's SOUTHWEST FINANCIAL design mark and the Cited Mark are completely dissimilar in sight, sound, and commercial impression." 4 TTABVUE 11. Applicant argues that "[a] simple comparison of Applicant's Mark and the Cited Mark clearly demonstrates the differences between the marks in sight, sound, and connotation:

Applicant's Mark:

The Cited Mark: PACIFIC SOUTHWEST FINANCIAL"

- 15 -

Id. at 13.²⁸According to Applicant, [q]uite plainly, the Cited Mark is a three-word mark including the term "Pacific" not present in Applicant's Mark, while Applicant's Mark is a two-work mark that includes a distinct design element not included in the Cited Mark. The existence of an additional and different term in the Cited Mark and the design element in Applicant's Mark distinguishes the marks in both sight and sound such that Applicant's Mark is distinguishable from the Cited Mark and no likelihood of confusion exists. Id. at 14 (emphasis in bold here in italics in the original). Applicant also argues that the word PACIFIC is the dominant portion of the cited mark,²⁹but does not address the dominant portion of its composite mark. Id. at 15.

The Examining Attorney makes essentially the same arguments that she made in the appeal in the '867 Application, 7 TTABVUE 4-6, and also argues that the design element in Applicant's composite mark does not distinguish it from the cited mark because "the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services," id. at 5 (citations omitted), and "applicant's wording SOUTHWEST FINANCIAL is considered the dominant feature of the mark because consumers will likely remember and refer to the mark by the word portion when requesting the services." Id. at 6.

- 16 -

We agree with the Examining Attorney that the words SOUTHWEST FINANCIAL are the dominant portion of Applicant's composite mark. "In marks 'consisting of words and a design, the words are normally accorded greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods. '" Sabhnani v. Mirage Brands, LLC, Canc. No. 92068086, 2021 WL 6072822, at *16 (TTAB 2021) (quoting In re Aquitaine Wine USA, LLC, Ser. No. 86928469, 2018 WL 1620989, at *2 (TTAB 2018) (citing Viterra, 671 F.3d at 1366 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 158-82 (Fed. Cir. 1983))). "The verbal portion of a word and design mark 'likely will appear alone when used in text and will be spoken when requested by consumers."' Id. (quoting Viterra, 671 F.3d at 1366 (internal citation omitted)).³⁰In comparing the marks in their entireties, we will give greater weight to the words

"Southwest Financial" in Applicant's composite mark than to the design element to their left.

As noted above, the cited PACIFIC SOUTHWEST FINANCIAL mark is a standard-character mark that "'may be used in 'any particular font style, size, or color', including 'the same font, size and color as the literal portions of [Applicant's] mark.'" In re OSF Healthcare Sys., Ser. No. 88706809, 2023 WL 6140427, at *3 (TTAB 2023) (quoting Aquitaine Wine USA, 2018 WL 1620989, at *5 (quoting Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a))). Accordingly, we must assume that the entire

- 17 -

PACIFIC SOUTHWEST FINANCIAL mark, or just the phrase SOUTHWEST FINANCIAL within it, could be depicted in the same size and initial capital font style in which the words "Southwest Financial" appear in Applicant's composite mark. As discussed above in connection with Applicant's word mark, the cited mark and Applicant's composite mark have similarities and differences. The cited mark and Applicant's composite mark are similar in appearance and sound because of the presence of the words SOUTHWEST FINANCIAL in both marks, particularly when we assume the depiction of those words in the cited mark in the same size and font style as they appear in Applicant's composite mark, or in a manner that emphasizes them, and both marks connote financial services provided by an entity in the Southwest region of the United States.

The differences in appearance are slightly greater here because of the presence of the design element to the left of the words "Southwest Financial" in Applicant's composite mark, but we find that the marks are more similar than dissimilar in appearance as well as in sound and meaning. A consumer with a general rather than specific recollection of the cited mark PACIFIC SOUTHWEST FINANCIAL who separately encounters Applicant's composite mark may notice the absence of the word PACIFIC in Applicant's mark and the presence of Applicant's design element, but is again more likely than not to understand Applicant's mark to be a shortened version of the cited mark. Overall, the first DuPont factor supports a conclusion that confusion is likely with respect to the composite mark shown in the '875 Application. Naterra, 92 F.4th at 1119.

- 18 -

B. Similarity or Dissimilarity of the Services, Channels of Trade, and Classes of Consumers³¹

"The second DuPont factor considers '[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration . . . ." Detroit Athletic Co., 903 F.2d at 1306. "This factor considers whether 'the consuming public may perceive [the goods or services] as related enough to cause confusion about the source or origin of the goods or services.'" St. Helena Hosp., 774 F.3d at 752 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)). "In analyzing the services, the Board considers [t]he similarity or dissimilarity and nature of the services as described in an application or registration." OSF Healthcare, 2023 WL 6140427, at *4 (quoting In re Embiid, Ser. No. 88202890, 2021 WL 2285576, at *10 (TTAB 2021)).

The "'services need not be identical or even competitive to find a likelihood of confusion.'" Id. (quoting In re Country Oven, Inc., Ser. No. 87354443, 2019 WL 6170483, at *2 (TTAB 2019)).³²"They need only be 'related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [they] emanate from the same source." Id. (quoting Country

- 19 -

Oven, 2019 WL 6170483, at *2 (quoting Coach Servs., 668 F.3d at 1369 (internal quotation omitted)).

The relatedness of goods or services may be established based on (1) the language of the involved identifications of goods or services, which may show, on the face of the identifications, that the goods or services are literally or legally identical, or otherwise intrinsically related, and (2) evidence of third-party uses or registrations, which may show that the identified goods or services are commonly offered by the same entity under the same mark. Id. at *4 (quotations and citations omitted) ("Evidence of relatedness may include news articles or evidence from computer databases showing that the relevant goods [or services] are used together or used by the same purchasers; advertisements showing that the relevant goods [or services] are advertised together or sold by the same manufacturer or dealer; or copies of prior use- based registrations of the same mark for both applicant 's goods [or services] and the goods [or services] listed in the cited registration [and] [t]he application and registration themselves may provide evidence of the relationship between the [goods or] services.").

"[W]e must construe the services identified in the ['936] [R]egistration as broadly as reasonably possible 'to include all [services] of the nature and type described therein,'" id. at *5 (quoting In re Solid State Design Inc., Ser. No. 87269041, 2018 WL 287909, at *6 (TTAB 2018) (internal quotation omitted)), and "we must resolve any ambiguities regarding their coverage in favor of the cited registrant 'given the presumptions afforded the registration under Section 7(b) ' of the Trademark Act." Id.

- 20 -

(quoting In re C.H. Hanson Co., Ser. No. 77983232, 2015 WL 6121759, at *5 (TTAB 2015) (citing 15 U.S.C. § 1057(b)). "[W]e must also give the services identified in the application their full scope in our analysis of the second DuPont factor." Id. (citation omitted).

In both appeals, the Examining Attorney relies on third-party webpages as evidence of relatedness. In OSF Healthcare, the Board explained that "[w]ith respect to Internet evidence, in determining exactly what services are offered through the respective websites, we acknowledge that services may not be explicitly described at all, or may be described in colloquial language that does not track the technical language of acceptable identifications of goods and services in applications and registrations, including those involved here." Id. at *10 (citation omitted). "In such instances, we must determine the nature of the services that are offered, and decide whether they fall within the full scope of the language in the involved identifications."

Id. (citation omitted).

Applicant argues in both appeals that "proper evidence of the alleged relatedness of Applicant's goods [sic] with those of the Registrant must show that the same goods [sic] and services emanate from the same source or are complementary products that would be purchased and used together," 4 TTABVUE 17-18 ('867 Application); 4 TTABVUE 18 ('875 Application), and that

as between Applicant's Mark and the '936 Mark, the

operative goods and services are "credit union services" and

"financial management and investment in the fields of asset allocation and management, cash management, estates, college funding, retirement, insurance and investment" as well as "actuary services." Thus, evidence

- 21 -

of any alleged "similarity" must demonstrate that credit unions also offer financial management and investment services in the fields of asset allocation and management, cash management, estates, college funding, retirement, and insurance, and that wealth management or growth platforms also offer credit union services. The Examiner has failed to provide this evidence.

4 TTABVUE 18 ('867 and '875 Applications) (emphasis in bold here in italics in the original).

Applicant further argues that

[i]nstead, the Examiner posits that because banks

sometimes offer both checking and savings services as well as broad financial and accounting services, the same can be said for Applicant's services and those offered in connection with the Cited Mark. Yet, this is an apples to oranges analysis, as neither Registrant nor Applicant are a bank. Indeed, the Examiner relies on the provision of a wide range of financial services provided by banks, rather than credit unions; yet the two are completely separate types of entities governed by wholly distinct laws and separate regulatory bodies. Banks are subject to and ensured by the FDIC, while credit unions are regulated and ensured according to the NCUA. Further, credit unions are member only, non-profit entities, rather than a true commercial enterprise. . . . The Examiner has failed to appreciate the intentional differences between these types of institutions and the impact of those differences on consumers. That some unrelated banking institutions in the U.S. may offer checking and savings accounts as well as general financial services is not dispositive of whether Applicant—a credit union—offers goods or services that consumers will perceive originate with Registrant—a wealth growth platform. Thus, while the Examiner claims to have identified evidence demonstrating "the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function," none of

- 22 -

the evidence submitted by the Examiner pertains to credit unions (like Applicant) or wealth growth platforms (like Registrant).

4 TTABVUE 18-19 ('867 and '875 Applications) (record citation omitted; emphasis in bold here in italics in the original).

According to Applicant, "[t]he true issue is whether Registrant's goods [sic] or services and Applicant's good [sic] and services are likely to be seen as emanating from the same source," and "[a]s neither Registrant nor Applicant are a bank, the Examiner's evidence is not dispositive and fails to demonstrate a likelihood of confusion between Applicant's Mark and the Cited Mark." 4 TTABVUE 19 ('867 and '875 Applications) (emphasis in bold here in italics in the original). Applicant concludes that

[c]onsumers purchasing Registrant's asset allocation, cash management, estates, college funding, retirement,

insurance and investment services, as well as taxation,

accounting and actuary services, will not expect that

Registrant also provides credit union membership services

such as savings and checking accounts or share certificates, and vice versa. Thus, Applicant offers credit union

services in the form of checking and savings accounts and

loans distinct from the Registrant's very specific market for financial investment and consultation services, including

tax preparation and accounting services.

4 TTABVUE 20 ('867 and '875 Applications) (emphasis in bold here in italics in the original).

The Examining Attorney responds as follows:

While applicant argues that they are a credit union and not a bank, many of the services listed in applicant 's

identification are related to banking services and are not limited to credit unions only. Applicant's identification is

"Credit union services; Financial services, namely,

- 23 -

banking services featuring consumer loans, installment loans, savings accounts, auto financing, and personal lines of credit; Financial services, namely, banking services

featuring checking accounts, certificates of deposit, individual retirement accounts, and audio response account access; Financial services, namely, banking services featuring credit cards, automated teller machine network, and personal computer account access; Financial services, namely, banking services featuring money market deposit accounts, and debit check cards; Financial services, namely, banking services featuring mortgage loans." Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.

6 TTABVUE 6 ('867 Application); 7 TTABVUE 6-7 ('875 Application) (emphasis in original).

The Examining Attorney argues that the Internet evidence "establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark," that "the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use," and that "the goods and/or services are similar or complementary in terms of purpose or function,"

because "[a]ll of the previously provided evidence are services that are in the same field of financial services, and are not similar to applicant 's cited cases which are goods and services." 6 TTABVUE 6 ('867 Application); 7 TTABVUE 6 ('875 Application).

We agree with the Examining Attorney that the services other than "Credit union services" identified in the applications are not limited to services provided by credit

- 24 -

unions or to credit union members.³³In the absence of an express limitation in the identifications, we must consider whether the identified "financial services" and

"banking services" are related to one or more of the four distinct services identified in the cited '936 Registration.³⁴

The applications cover multiple financial and banking services, including

"Financial services, namely, banking services featuring financing loans for consumers;" "savings account services;" "financing loans for automobiles;" "providing personal lines of credit;" "Financial services, namely, banking services featuring checking account services;" "banking services provided via electronic device access allowing a consumer to use a telephone number to conduct basic banking transactions;" "automated teller machine services;" "Financial services, namely, banking services featuring providing money market deposit accounts, and issuing debit cards;" and "Financial services, namely, banking services for financing loans for a mortgage."

The Examining Attorney made of record webpages from financial institutions that offer one or more services that fall within the full scope of these services, in addition to services that fall within the broadest reasonable construction of the services

- 25 -

identified in the '936 Registration as "Financial analysis and consultation" and

"financial management and investment in the fields of asset allocation and management, cash management, estates, college funding, retirement, insurance and investment."³⁵We summarize those webpages below:³⁶

• Wells Fargo offers checking and savings accounts, and mobile app services which fall within the full scope of the services identified in the '867 and '875 Applications as "banking services provided via electronic device access allowing a consumer to use a telephone number to conduct basic banking transactions," in addition to services broadly described on the website as

"Financial guidance and support," including "digital tools" to help consumers budget and save, guidance on how to "start saving to meet your retirement goals," and "steps that may help you manage life -changing events," services which fall within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation;"³⁷

• BNC National Bank offers checking and savings account, home loan, and mobile banking services, in addition to services described on the website as

"wealth-building strategies," "management and wealth advisory [sic]," and a "plan to manage your funds and track your long-term financial goals,"

services which fall within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation;"³⁸

- 26 -

• Citizens Bank offers checking accounts, savings accounts, credit card services, and mobile and online banking services, in addition to the opportunity to "Meet with a Banker" to "help you focus on what's important and map out a plan for your future," a service which falls within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation;"³⁹

• KeyBank offers checking accounts, savings accounts, credit card services, and mortgage services, in addition to online access to information about

"Savings & Budgeting," "Life Events," "Home Ownership," "Banking 101,"

"What is Financial Wellness?," "Checking or Savings: How to Tell Which Account Your Money Should be In," "How to Pay When Traveling Abroad,"

and "How to Manage Debt as a Couple When Only Your Partner Has Debt,"

a service which falls within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation;"⁴⁰

• PNC offers checking and savings account, credit card, and online and mobile banking services, in addition to online access to information regarding the questions "What Can Personal Loans Be Used For?," "What is a High Yield Savings Account and How Does It Work?, and "What is a No-Spend Challenge?," among other subjects, and the opportunity to schedule a "Financial Wellness Conversation," services which fall within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation," and services described on the website as "Investing and Managing Wealth," which fall within the broadest reasonable construction of the services identified in the '936 Registration as "financial management and investment in the fields of asset allocation and management, cash management, estates, college funding, retirement, insurance and investment;"⁴¹

• Regions offers checking and savings accounts, credit cards, online and mobile banking, and mortgage services, in addition to online access to "Tips and Tools" to "Learn more about financial wellness," and to information about other financial matters, a service which falls within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation;"⁴²and

- 27 -

• Truist offers checking and savings accounts, credit cards, and mortgage services, in addition to online access to information about investing and retirement, and various financial matters, a service which falls within the broadest reasonable construction of the services identified in the '936 Registration as "Financial analysis and consultation."⁴³ Applicant does not dispute the quantity or quality of the Examining Attorney's evidence, which shows that financial institutions offering one or more of the services that fall within the full scope of services identified in the '867 and '875 Applications also offer services that fall within the full scope of the "financial analysis and consultation" services identified in the '936 Registration. Applicant instead argues improperly that the Examining Attorney must show that "credit unions also offer financial management and investment services in the fields of asset allocation and management, cash management, estates, college funding, retirement, and insurance, and that wealth management or growth platforms also offer credit union services," 4 TTABVUE 18 ('867 and '875 Applications), that the Examining Attorney has only shown that "banks sometimes offer both checking and savings services as well as broad financial and accounting services," id., and that the Examining Attorney "relies on the provision of a wide range of financial services provided by

banks, rather than credit unions." Id. (emphasis in bold here in italics in the original). As discussed above, the identified financial and banking services are not limited to services provided by credit unions to their members, and the evidence here is sufficient to show the relatedness of multiple services identified in the '867 and '875 Applications and the "financial analysis and consultation" services identified in

- 28 -

the '936 Registration. The second DuPont factor supports a conclusion that confusion is likely as to the marks in the '867 and '875 Applications. The third DuPont factor considers the "similarity or dissimilarity of established, likely-to-continue trade channels." DuPont, 476 F.2d at 1361. The record shows that the involved services are provided through the same channels of trade, the websites or brick-and-mortar offices of financial institutions, to the same classes of consumers, members of the general public who use banking services and who seek financial advice. The third DuPont factor supports a conclusion that confusion is likely with respect to the marks in the '867 and '875 Applications.

C. The Fourth DuPont Factor

The fourth DuPont factor considers "'[t]he conditions under which and buyers to whom sales are made, i.e. 'impulse' vs. careful, sophisticated purchasing.'" Heil Co., 2024 WL 4925901, at *34 (citing Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP,

746 F.3d 1317, 1323-24 (Fed. Cir. 2014) (quoting DuPont, 476 F.2d at 1361)). "[W]e look to the language of the identifications to ascertain the . . . degree of care in purchasing." Id. (citing Stone Lion, 746 F.3d at 1323-24). "A heightened degree of care when making a purchasing decision may tend to minimize likelihood of confusion ,"

while "[c]onversely, impulse purchases of inexpensive items may tend to have the opposite effect." Id. (citations omitted).

Under the argument heading "Sophisticated Consumers Seeking

Specialized Goods Eliminate the Likelihood of Confusion," 4 TTABVUE 21 ('867 and '875 Applications) (emphasis supplied by Applicant), Applicant argues that

- 29 -

"[h]ere, Applicant's Mark is not likely to cause confusion given the parties' separate channels of trade and their intended end-consumer, as well as the degree of care likely to be exercised by relevant consumers." Id. at 22 ('867 and '875 Applications). Applicant argues that "absent from the Examining Attorney's finding of a likelihood of confusion is any consideration for the conditions under which and the sophistication of the buyers to whom sales of the relevant goods/services are made."

Id. at 21-22 ('867 and '875 Applications). According to Applicant, [t]he Examiner does not dispute, but has failed to

appreciate, that even the least sophisticated consumers

will exercise greater care in choosing to participate as a

member in a credit union and in selecting an entity to

provide guidance in the fields of asset allocation, estates, retirement, college funding, taxation, and accounting. This

factor likewise weighs against a finding of likelihood of

confusion, particularly when considered in connection with

the overall differences between the marks themselves as

well as the goods and services.

Id. at 22 ('867 and '875 Applications).⁴⁴

Applicant further argues that "[c]onsumers purchasing a specialty item exercise a greater degree of care in distinguishing the source of the products and services,"

and that "even the least sophisticated consumers will exercise greater care in choosing to participate as a member in a credit union and in selecting an entity to

- 30 -

provide guidance in the fields of asset allocation, estates, retirement, college funding, taxation, and accounting." Id. at 23 ('867 and '875 Applications) (citation omitted).⁴⁵ The services identified in the applications include "banking services featuring financing loans for consumers;" "financing loans for automobiles;" "providing personal lines of credit;" "banking services featuring checking account services;" "banking services provided via electronic device access allowing a consumer to use a telephone number to conduct basic banking transactions;" "banking services featuring issuing of credit cards;" "banking services provided via personal computer account access;"

"banking services featuring providing money market deposit accounts, and issuing debit cards;" and "banking services for financing loans for a mortgage ."

The Federal Circuit and the Board have found, as a general matter, that some consumers of banking services may exercise a higher degree of care and others may not. See, e.g., Amalgamated Bank of N.Y. v. Amalgamated Trust & Sav. Bank, 842 F.2d 1270, 1274 (Fed. Cir. 1988) ("Banking is, we may take notice, unlike other business. Instead of buyers, banking has customers who may be creditors of the bank -- depositors -- or debtors to the bank -- borrowers and others to whom bank credit is extended. Some of both categories one would expect to select their bank after long and careful consideration. Others do not even know they will be customers of a bank until they discover that they are, i.e., when paper they have signed, payable to someone else, is assigned to a bank. We would suppose that bankers have to know

- 31 -

the habits of their customers, and the application of such knowledge is implicit in the agreement here involved. It would be strange for the customers of the banks to be confused about whom they were dealing with, and their bankers not know it."); Lincoln Nat'l Corp. v. Anderson, Opp. No. 91192939, 2014 WL 879506, at *15 n.18 (TTAB 2014) (where relevant purchasers of banking, financial planning, and investment services consisted of both ordinary and knowledgeable and sophisticated consumers, "this factor certainly would not weigh significantly in applicant 's favor. At most it is neutral in our overall likelihood of confusion determination based on all of the relevant duPont factors").

Against the backdrop of these cases and the recitations of services, we find that not all consumers of the identified banking services are sophisticated or likely to exercise a significant degree of care in purchasing. Applicant offers no evidence showing that consumers of banking services involving auto, home, and personal loans, checking accounts, on-line banking, and credit and debit cards, everyday services that are used by millions of members of the general public, are likely to exercise any particular care in purchasing and using those services. Where, as here, the purchasers of the identified services may include both businesses and ordinary consumers, "Board precedent requires the decision to be based on the least sophisticated potential purchasers." Stone Lion, 746 F.3d at 1325 (quotation and quotation marks omitted). We find that the least sophisticated potential purchasers of banking services involving auto, home, and personal loans, checking accounts, on- line banking, and credit and debit cards are unlikely to exercise more than ordinary

- 32 -

care in using those services. The fourth DuPont factors is thus neutral in our analysis of the likelihood of confusion.

D. The Absence of Evidence of Actual Confusion

The eighth DuPont factor considers "[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion."

DuPont, 476 F.2d at 1361. Generally, this factor is "not that important in ex parte cases unless the applicant provides us with contextual evidence that allows us to meaningfully assess the length of time and degree to which the applicant 's and registrant's commercial activities would have provided an opportunity for confusion to have manifested itself if it were likely." Embiid, 2021 WL 2285576, at *19 (citing In re Guild Mortg. Co., Ser. No. 86709944, 2020 WL 1639916, at *8 (TTAB 2020) ("our analysis as to the second, third, and fourth du Pont factors, discussing the similarity or dissimilarity of the services, channels of trade, and relevant consumers, is based, as dictated by precedent from the Federal Circuit, on the identifications as set forth in the application and the cited registration . . . [but] the eighth duPont factor, by contrast . . . requires us to look at actual market conditions, to the extent there is evidence of such conditions of record.") (emphasis in original; citations omitted)). In Guild Mortg., the applicant provided evidence of those "actual market conditions" in the form of a declaration from a corporate executive establishing facts regarding the applicant's use of its mark, as well as evidence regarding the use of the cited registered mark. Guild Mortg., 2020 WL 1639916, at *8-9. The record here is devoid of such evidence. Applicant instead argues that

- 33 -

[t]he fact that the Parties have co-existed in the marketplace for many years without any actual confusion further demonstrates the absence of any likelihood of confusion. Applicant has existed and used its marks since 1962 and the Cited Mark has been in use in commerce since 1997. That means that Applicant's Mark and the Cited Mark have co-existed in the marketplace for at least 35 years without any actual confusion between the marks.

4 TTABVUE 22-23 ('867 and '875 Applications). Applicant's arguments are meritless. The dates of use claimed in the '867 and '875 Applications and in the '936 Registration are not evidence of use of the involved marks, cf. DowntownDC Bus. Improvement Dist. v. Clarke, Opp. No. 91275100, 2024 WL 4449409, at *8 n.75 (TTAB 2024), and neither is the argument of Applicant's attorney. Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *6 n.15 (citing Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (internal citation omitted)). Moreover, "in this ex parte context, there has been no opportunity to hear from [the] [r]egistrant about whether it is aware of any reported instances of confusion. We therefore are getting only half the story." Guild Mortg., 2020 WL 1639916, at *9 (citations omitted). The eighth DuPont factor is neutral in our analysis of the likelihood of confusion.

E. Summary

The key first and second DuPont factors, and the third DuPont factor, support a conclusion that confusion is likely in each case, while the fourth and eighth DuPont factors are neutral in each case. The marks are more similar than dissimilar, the involved financial services are related, and those services are offered through the same channels of trade to the same classes of consumers. Consumers with a general

- 34 -

recollection of the cited mark used in connection with the "Financial analysis and consultation" services identified in the '936 Registration who separately encounter Applicant's word mark and composite mark used in connection with the various financial and banking services identified in the '867 and '875 Applications are likely to believe, mistakenly, that those services have a common source.

Decision: The refusals to register under Section 2(d) are both affirmed.⁴⁶