IP Law Daily, TRADEMARK—TTAB: Cancellation of registration granted in bank name dispute, (May 9, 2024)

By Kevin M. Finson

Cancellation was granted because there was no dispute that the marks and services were identical and that the petitioner began use of the mark years prior to the registrant.

A Tennessee bank that established priority in the mark UBANK was entitled to cancellation of a Texas bank’s registration for UBANK, the Trademark Trial and Appeal Board has held. The marks and services were identical and there was no dispute that the petitioner was the senior user of the UBANK mark. The registrant’s request for a geographic carve out to accommodate concurrent was denied as inappropriate in a cancellation proceeding (UBank [TN] v. UBank , No. 92078890 (TTAB. May 1, 2024)).

UBANK (Ubank TX) was the owner of a registration on the Principal Register for the standard character mark UBANK for “banking services” in International Class 36. UBANK (TN) (UBank TN) sought to cancel the registration based upon alleged prior common law use of the UBANK mark for “banking services.” After briefly finding that the alleged common law rights created a statutory cause of action, the Trademark Trial and Appeal Board considered priority and likelihood of confusion, and the affirmative defense of laches.

Priority. It was undisputed that UBank TN had priority. While it originally operated using the name Union Bank, it claimed to have begun using the UBANK logo in 2004 and formally changed its name with a press release and other supporting documentation in 2012. UBank TX’s registration arose from an application filed in 2016 and no evidence of use prior to the filing of the application was presented.

Likelihood of confusion. UBank TX conceded that the marks and services were identical. There was also evidence in the record of actual confusion by customers and vendors. UBank TX argued that confusion was not likely because UBank TN’s use was limited to one branch in a limited geographic region. The Board held, however, that the cancellation statute had no geographic limitations to it, and the Board noted it had no authority to partially cancel a registration by placing geographic limitations on a registration. While a geographic carve-out might be an appropriate remedy in a concurrent-use proceeding, that is not the type of proceeding that was before the Board.

Laches. UBank TX argued that the cancellation proceeding was barred by laches. The Board noted that the time between registration and the filing of the petition, approximately three years, had been held not sufficient to find laches in prior cases. The Board also found no evidence of prejudice from the delay, as UBank TX did not appear to have been at all affected by UBank TN’s usage.

The Board held that priority and likelihood of confusion had been established and the affirmative defense of laches did not apply, so ordered cancelation of Ubank TX’s registration.

The Case is Cancellation No. 92078890.

Judge: Allard, M.

Attorneys: Dorian B. Kennedy (Baker Donelson Bearman Caldwell & Berkowitz, PC) for UBank [TN]. William D. Wiese (Dubois, Bryant & Campbell, LLP) for UBank.

Companies: UBank (TN); UBank

Cases: Trademark USPTO