Admiral Insurance Company

Trademark Trial and Appeal BoardOct 5, 2009

No. 77191848 (T.T.A.B. Oct. 5, 2009)

Mailed: October 5, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Admiral Insurance Company ___________ Serial No. 77191848 ___________ Daniel N. Calder of Volpe and Koenig for Admiral Insurance Company. Toby Ellen Bulloff, Trademark Examining Attorney, Law Office 117 (Loretta C. Beck, Managing Attorney). ____________ Before Walters, Kuhlke and Wellington, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Admiral Insurance Company has filed an application to register the mark ADMIRAL EXCESS EXPRESS on the Principal Register for “insurance administration and underwriting services in the field of commercial casualty,” in International Class 36.1 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1 Serial No. 77191848, filed May 29, 2007, based on use of the mark in commerce, alleging first use and use in commerce as of April 27, 2006. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77191848 2 1052(d), on the ground that applicant’s mark so resembles the mark ADMIRAL, previously registered for “underwriting and administering annuities,” in International Class 36,”2 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. The final refusal to register also included a requirement to disclaim EXCESS EXPRESS apart from the mark as a whole. However, the examining attorney, in her appeal brief, has withdrawn this basis for refusal and it has been given no further consideration. Applicant has appealed. Both applicant and the examining attorney have filed briefs. We reverse the refusal to register. 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 the likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 2 Registration No. 1591247, registered April 10, 1990. The registration is owned by Allstate Life Insurance Company. [Section 15 affidavit acknowledged; renewed.] Serial No. 77191848 3 In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. We turn, first, to a determination of whether applicant’s mark and the registered mark, when viewed in their entireties, are similar in terms of appearance, sound, connotation and commercial impression. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the goods or services offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and Serial No. 77191848 4 it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The examining attorney contends that the marks are substantially similar, noting that the word ADMIRAL in applicant’s mark is identical to the registered mark in its entirety. The examining attorney contends that ADMIRAL is the dominant portion of applicant’s mark because it is the first word in the mark and EXCESS and EXPRESS are commonly- used terms in the insurance industry. The examining attorney submitted copies of third-party registrations for marks including the term EXPRESS for insurance services in support of this latter statement; and a dictionary definition and excerpts from several websites establishing that EXCESS refers to a type of insurance called “excess insurance.” She states that “EXPRESS denotes the immediacy of the insurance/quotes and/or direct savings to customers based on direct buying from the underwriter.” (Brief, unnumbered p. 5.) Applicant submitted a copy of a third-party registration for the mark VANGUARD ADMIRAL FUNDS for “mutual fund investment services.” Applicant contends that the additional wording, EXCESS EXPRESS, in its mark, with the alliteration created because both words begin with “EX” and Serial No. 77191848 5 end with “ESS,” is sufficient to distinguish its mark from the cited registered mark. We find on this record that ADMIRAL, the mark in the cited registration, is an arbitrary term in connection with insurance and annuity services. The fact that one third- party registration exists for a mark that includes ADMIRAL for mutual fund investment services does not render it a weak mark in connection with the identified annuity services. It is axiomatic that each case must be decided on its own facts. Applicant has adopted registrant’s mark in its entirety and added to it the phrase EXCESS EXPRESS. The examining attorney has established that each of these terms is at least highly suggestive in connection with applicant’s identified services. In particular, the website excerpt (www.allbusiness.com) about AIG Excess Casualty’s introduction of AIG Excess Prime describes its product as “a 25 million dollar commercial liability program that provides insureds with additional excess limits.” From the third-party registrations submitted by the examining attorney in connection with her now-withdrawn disclaimer requirement, we see that the term EXPRESS appears in a number of marks pertaining to insurance, suggesting a streamlined service. While we agree with applicant that the alliteration of the two-word phrase EXCESS EXPRESS adds Serial No. 77191848 6 something to the commercial impression of applicant’s mark, we find that the suggestiveness of this term renders it weak relative to the arbitrary term ADMIRAL, which is also the first term in applicant’s mark. We conclude that ADMIRAL is the dominant term in applicant’s mark and note that it is identical to the registered mark. Thus, although the marks have certain differences, when we compare them in their entireties we find that on the whole they are similar in appearance, sound, connotation and commercial impression. We do not agree that the addition of EXCESS EXPRESS is sufficient to distinguish applicant’s mark from the cited registered mark. Turning to consider the services involved in this case, we note that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general rule that goods or services need not be identical or even competitive in order to Serial No. 77191848 7 support a finding of likelihood of confusion. Rather, it is enough that goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein; and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The examining attorney contends that the involved services are “very closely related as they are the types of services offered by a full-scale insurance or financial services company.” (Brief, unnumbered p. 7.) In support of this proposition, the examining attorney submitted eight3 third-party registrations that include underwriting and/or administering commercial casualty insurance and annuities in their identifications of a wide range of insurance and/or investment services. The examining attorney also submitted an excerpt from the website www.wikipedia.org, which describes an annuity as an insurance product; and she points to applicant’s original 3 Two of the third-party registrations are owned by the same entity. Serial No. 77191848 8 identification of services, “insurance administration and underwriting services for all types of insurance,” as an indication that applicant itself may offer both the services finally identified in this application and the annuity services recited in the cited registration. Applicant contends that the services are, in fact, quite different; and that its commercial casualty insurance services are expensive services offered to highly sophisticated commercial purchasers who will exercise great care in purchasing applicant’s insurance. Applicant contends that the annuity services recited in the cited registration are in an entirely different field and directed to an entirely different customer than applicant’s commercial casualty insurance services. In support thereof, applicant submitted the declaration of John E. Goodloe, the president of its Excess Division; an excerpt from applicant’s website showing context for its use of EXCESS EXPRESS; a definition from Merriam-Webster Online Dictionary (September 2008) of “annuity” as “(1) a sum of money payable yearly or at other regular intervals … (3) a contract or agreement providing for the payment of an annuity”; and a copy of the specimen submitted with registrant’s declaration of use in its registration file to demonstrate the nature of the annuity services offered under the registered mark. Serial No. 77191848 9 Mr. Goodloe made the following statements, inter alia, in his declaration: . . . 3. The “casualty insurance” field relates to the type of insurance concerning legal liability for losses caused by bodily injury to others or physical damage to property of others. The “commercial casualty” insurance field relates, in particular, to insurance policies issued to a commercial business for business use, as opposed to an individual for personal use. . . . 5. Commercial casualty insurance services … are often provided to businesses through insurance brokers who try and meet the specific needs of their clients. In my experience, such brokers are sophisticated clientele. 6. Commercial casualty insurance is often a significant expense for a business. Such policies can range from $1,000 to $25,000 depending on the specific needs of a business. . . . 8. The term “annuities” refers to an insurance contract that provides for a fixed or variable periodic payment to an individual, made from a stated or contingent date and continued for a specified period. Such insurance is directed to a completely different field and different customer than commercial casualty insurance. A typical customer of an annuity product is an individual who would obtain the annuity product for personal, family or household use, as opposed to applicant’s customers which are commercial enterprises [that] obtain our products for commercial use. Applicant has objected to the Wikipedia description of an annuity as an insurance product on the ground that Wikipedia is an unreliable source, citing In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007), in which the Board stated “[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a Serial No. 77191848 10 collaborative website that permits anyone to edit the entries.” Applicant noted that the excerpt submitted by the examining attorney included the bolded statement “[t]his article needs additional citations for verification.” We agree with applicant that we must look to other evidence to corroborate the content of a Wikipedia entry. In this regard, we refer to Mr. Goodloe’s declaration in which he characterizes an annuity as “an insurance contract”; and to the copy of registrant’s brochure describing several of its annuity products. The annuity products described have various properties, including tax- deferred saving, retirement income and principal guarantees. This information combined with the definition of an annuity submitted by applicant lead us to conclude that an annuity is a specialized product that includes some of the characteristics of insurance and some of the characteristics of an investment. However, it is immaterial for our likelihood of confusion determination whether an annuity is, in fact, an insurance product. What we must determine is whether the respective services are sufficiently similar or related that a prospective purchaser would believe that the services emanate from the same source. The third-party registrations submitted by the examining attorney suggest that purchasers may expect to see various insurance products and annuities marketed under the Serial No. 77191848 11 same marks. However, these registrations are not evidence of use of the marks therein in connection with the identified services. “Insurance” is a very broad field and we will not find a relationship between the two recited services simply because they may fall under the broad umbrella of “insurance.” Moreover, applicant has submitted evidence, particularly in the nature of Mr. Goodloe’s declaration, indicating that, even if both commercial casualty insurance and annuities are offered by the same companies that offer a wide range of insurance and/or investment products, the two products are quite different, serve very different needs for different purchasers, and are generally expensive products purchased with care. We find that applicant’s evidence is sufficient to rebut the examining attorney’s meager showing and, thus, we conclude that the examining attorney has not established that the services are sufficiently similar or related that, if identified by confusingly similar marks, confusion as to source is likely. We consider next the trade channels and purchasers of the respective services, and the level of care and expense of these services. There is no evidence in the record as to the trade channels through which annuities are purchased and, while Mr. Goodloe testified that commercial casualty insurance is Serial No. 77191848 12 usually purchased through brokers, there is no indication that it could not also be purchased directly from an insurance company. Therefore, the Du Pont factor regarding the channels of trade is neutral. Regarding the purchasers of the respective services, applicant has established that, by its very nature, commercial casualty insurance is purchased by businesses to insure against various liabilities; that it is likely to be expensive, with the cost rising along with the level of insurance purchased; and, thus, that it is likely to be purchased by knowledgeable business persons with care. Similarly, applicant has established that annuities are purchased by individuals as insurance and/or investment vehicles for personal savings and retirement; that such purchases are likely to be expensive, depending upon the amount invested; and that annuities are likely to be purchased with care. Certainly, there is an overlap in purchasers, where those purchasing casualty insurance for their businesses may also purchase annuities for themselves. However, these individuals are likely to be more knowledgeable about differences between these products and the companies offering such products. Additionally, where brokers are involved, clearly the level of professional knowledge is significant. Serial No. 77191848 13 We also note that there is likely to be a spectrum of sophistication among business purchasers, as some businesses purchasing casualty insurance may be small “mom-and-pop” operations, and their principals may be less knowledgeable about various insurance products. However, this is likely to be mitigated by the cost of casualty insurance, resulting in the exercise of care in purchasing casualty insurance. Similarly, the range of dollar amounts that may be invested in annuities ranges from several thousand dollars to much more significant sums, thus, although the purchasers of annuities encompass the general public, these purchases are likely to be made with care and often through a knowledgeable investment or insurance broker. When we consider the record and the relevant likelihood of confusion factors, we find that, while the commercial impressions of applicant’s mark, ADMIRAL EXCESS EXPRESS, and registrant’s mark, ADMIRAL, are substantially similar, the examining attorney did not establish that the services are more than very generally related. Additionally, applicant established that the purchasers of the respective services are primarily very different, the services are relatively expensive, and a high level of care is likely to be used to purchase the respective services. Therefore, we conclude that the Du Pont factors weigh against a finding of likelihood of confusion in this case. Serial No. 77191848 14 Decision: The refusal under Section 2(d) of the Act is reversed.