IP Law Daily, TRADEMARK—TTAB: BELAY FINANCIAL likely to be confused with unregistered mark BELAY MORTGAGE GROUP, (Jan 4, 2022)

By Cheryl Beise, J.D.

Opposer established prior use of its common law mark and likelihood of confusion.

A company that provided mortgages to individuals in three states established that it has used the unregistered mark BELAY MORTGAGE GROUP in commerce in connection with mortgage brokerage services prior to the date the applicant applied to register the mark BELAY FINANCIAL for banking and mortgage lending services, the Trademark Trial and Appeal Board has ruled in sustaining the mortgage company’s opposition to registration based on likelihood of confusion. The Board has little trouble in finding that the marks were similar and were used in connection with related financial services that traveled in some of the same channels of trade to some of the same classes of customers (Belay Mortgage Group, Inc. v. FB Corporation, December 23, 2021, Kuczma, L.).

FB Corporation applied to register on the Principal Register the mark BELAY FINANCIAL, in standard characters, for “Banking services; Financial trust operations; Mortgage banking; Mortgage lending,” in International Class 36. Belay Mortgage Group, Inc. opposed registration on the basis of priority and likelihood of confusion with its common law mark BELAY MORTGAGE GROUP for use with mortgage brokerage services.

Priority of use. The applicant did not submit evidence of use, and therefore had to rely on its application filing date, February 21, 2019, as its constructive use priority date. The opposer’s founder testified that Belay Mortgage Group obtained regulatory approval to provide mortgages in the states of Washington and Oregon in April 2018, and in California two months later. She also testified that the opposer has maintained an active Facebook page “since about February 15, 2018” and an active Yelp page since about August 29, 2018. On September 13, 2018, another mortgage broker posted on the opposer’s Facebook page, “Use Belay Mortgage for your home loan, you will be glad you did.” In addition, four consumer reviews appeared on Belay Mortgage Group’s Yelp page in 2018. This evidence established that the opposer’s mark was advertised in connection with mortgage brokerage services prior to the applicant’s constructive use date, according to the Board.

The applicant raised several objections to the opposer’s reliance on Yelp reviews to establish priority, but none were persuasive. Contrary to the applicant’s assertion, the opposer’s mark was sufficiently displayed on its Yelp landing page and in the reviews to indicate source. Moreover, the fact that the reviewers may have sought out the applicant’s founder personally rather that the opposer itself did not negate the opposer’s use of the mark in connection with mortgage services ultimately rendered. Finally, the applicant’s argument that the opposer’s mark was limited to use in Clark County, Washington, was not relevant. “In the context of this opposition proceeding, “market penetration” is not relevant for purposes of establishing priority,” the Board said.

Likelihood of confusion. Turning to likelihood of confusion, the Board noted that the applicant conceded that the parties’ marks were similar because the common term BELAY was predominant and the other terms were descriptive in both marks.

The Board also had little trouble in finding that the parties’ services and channels of trade were likely to be confused. “Opposer’s mortgage brokerage services facilitate Applicant’s mortgage lending services. Accordingly, we find that the parties’ services are highly complementary and therefore related,” the Board said. The record showed that that the opposer’s mortgage brokerage services and lending services offered by the applicant were part of the same real estate transactions for the same consumers. Accordingly, the parties’ services traveled in some of the same channels of trade to some of the same classes of customers.

The opposition based on priority and likelihood of confusion was sustained.

The case is Opposition No. 91251959.

Attorneys: Tim Billick (Tbillick Law PLLC) for Belay Mortgage Group, Inc. Peter W. Salsich III (Capes Sokol) for FB Corporation.

Companies: Belay Mortgage Group, Inc.; FB Corporation

Cases: Trademark USPTO GCNNews