By Jill M. Goldman
A name is a name is a name . . . except when it is a consumer identifier, otherwise known as a trademark or service mark. That is why we see the same names in the marketplace that represent different goods and services.The United States Patent and Trademark Office (PTO) recognizes that a trademark (for goods) and service mark (for services) is merely a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others.
You may be asking: How do I protect my bank’s name when there may be the same name in the marketplace? Many banks co-exist and perform the same services while using the same terms such as “First,” “Bank,” “Federal,” “Trust,” but give a different consumer impression. The PTO accounts for this during the application process for federal protection of a mark by looking at the following considerations:
- Likelihood of confusion with other marks
- Similarity of the marks: sight, sound, meaning, consumer impression
- Relatedness of goods and services
- Strong versus weak marks
- Non-registerable elements
To give you an example of how this works, 151 live applications and registrations contain “ABA” with the PTO. In fact, besides the American Bankers Association, the following entities also use the “ABA” abbreviation: American Bar Association, American Board of Anesthesiology, Alabama Bankers Association, Adams-Bickel Associates and American Boating Association to name a few. Nevertheless, federally registered marks of “ABA” are also used by Lettuce Entertain You Enterprises Inc. for “restaurant and bar services,” by Morgan Advanced Materials for “brazing alloys, excluding hose and pipe connectors and clamps” and by Armor Holdings Products, LLC, for “bullet proof and bullet resistant body armor and clothing.”
Further, abbreviations.com shows 72 possible meanings for “ABA” that include “Applied Behaviors Analysis,” commonly used as a medical therapy for autism, or other organizations like the American Bus Association, American Birding Association, Australian Broadcasting Authority, American Bicycle Association, American Bass Anglers, American Beverage Association and so on.
While the concept that many ABAs may co-exist is confusing, the underlying consumer impression is not. If bankers are speaking about the “ABA,” it is highly unlikely that they mean the American Birding Association. Context is everything.
The reasons the same mark can be legally protected by multiple users is that it either represents different goods and services or a specific design mark has disclaimed the right to the use of “ABA” separate and apart from the design mark itself.
Those seeking federal protection have provided enough evidence in the application to overcome a possible rejection based on the aforementioned considerations. Then the ultimate test is use in commerce. If the consumer identifier is not actively used in that capacity, then the federal protection can be cancelled. Besides, the visual impression of ABA’s stylized “ab” design is distinctive from other registered “ABA” design marks found on the publicly available records of the PTO. It is important to note that the use of third party consumer identifiers below are for informational and educational purposes only and do not imply, advocate, sponsor or endorse the mentioned parties or their respective marks and are considered nominative fair use under the Lanham Act.
While American Bankers Association is represented on the left for “association services” to the financial services industry, the center mark is for “behavioral health services.” While the mark on the right co-exists with us for association services but to a very different audience of the legal profession. Visually there are many differences between the marks, so they can co-exist. A sophisticated consumer would not easily confuse the marks above. One is in lowercase joined script; the other two are in capitalized letters. One is just the letters and the other two have added geometric design elements and different uses of color.
Each forms a different consumer impression on its face. Specifically, few consumers would confuse the Bar Association’s geometric design or KH Holding’s tree image with ABA’s styled “ab.” As noted above, we only use an “ab” instead of an “ABA” in our design. While the American Bankers Association owns the stylized “ab,” we most commonly use our family brand with the full word mark of “American Bankers Association,” which has separate federal protection, as set forth below.
So while it is fun to entertain the notion of multiple meanings for the same mark, I highly doubt that any bankers that pay for ABA’s Stonier Graduate School of Banking diploma would expect to receive a case of wine instead of a registration to an educational program, even though “Stonier” for “Wine” co-existed with ABA’s registration until its cancellation in 2018. (Fun fact: an individual applied with the PTO in 2009 for the mark of “Federal Reserve” for wine, but never received the mark as use in commerce was not demonstrated.)
This is due to the U.S. system for protecting marks based on actual use in commerce as a consumer identifier. Without the context brought by the consuming public, it would be very difficult to separate the names that share a common element. This is how marks are examined during the application process and how they are used in commerce after registration. Context is key!
Jill Goldman is VP and senior counsel for contracts and intellectual property at ABA. This article is for informational and educational purposes only. It is not offered as and does not constitute legal advice or legal opinions. The information contained in the article should not be used as a substitute for seeking professional legal advice. If legal or other expert assistance is required, the services of a competent professional should be sought.
