Bankers Life and Casualty Co.

Trademark Trial and Appeal Board

Mar 31, 1999

No. 75229671 (T.T.A.B. Mar. 31, 1999)

Paper No. 11
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bankers Life and Casualty Company
________
Serial No. 75/229,671
_______
Thomas E. Smith of Lee, Mann, Smith, McWilliams, Sweeney &
Ohlson for Bankers Life and Casualty Company.
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 101 (R. Ellsworth Williams, Managing Attorney).
_______
Before Cissel, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Bankers Life and Casualty Company has appealed from
the refusal of the Trademark Examining Attorney to register
SENIOR PROTECTION PLUS, with the words "Senior Protection"
disclaimed, for life insurance underwriting services.1
Registration has been refused pursuant to Section 2(d) of

1 Application Serial No. 75/229,671, filed January 22, 1997,
asserting first use and first use in commerce on April 1, 1996.
Ser. No. 75/229,671
2
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark, when used in connection with its
identified services, is likely to cause confusion with the
following marks, registered by separate entities:
SENIOR PROTECTOR , with the word "Senior"
disclaimed, for life insurance
underwriting services2
for voluntary
group term life
insurance offered
through employers
to employees3
Both applicant and the Examining Attorney have filed
briefs, and applicant has filed a reply brief.
Before turning to a consideration of the issue of
likelihood of confusion, we must make some preliminary
comments. During the course of examination, it appears
that as a result of a conversation between the Examining
Attorney and applicant’s attorney, the Examining Attorney
entered an amendment in which applicant, in addition to
disclaiming exclusive rights to the word "Senior,"
disclaimed "Senior Protection." The Examining Attorney

2 Registration No. 1,814,524, issued December 28, 1993; Section
8 and 15 affidavit filed, awaiting examination.
3 Registration No. 1,915,426, issued August 17, 1994.
Ser. No. 75/229,671
3
stated in that amendment that the Section 2(d) refusal
would be withdrawn. Subsequently, apparently after review
of the file by the Examining Attorney’s Managing Attorney,
the refusal based on likelihood of confusion with the two
registered marks was reinstituted.
In its main brief applicant makes the comment that the
requirement to disclaim "Senior Protection" was done with
the understanding that the Section 2(d) refusal would be
withdrawn, and "there is a certain unfairness about
requiring a disclaimer on the understanding that the
Section 2(d) refusal would be withdrawn and then reneging
on that offer after the disclaimer had been entered." p.
2.
Obviously, it is unfortunate that applicant was first
told that the refusal would be withdrawn and then, upon
further review, the refusal was reinstated. However, the
mandate of the Trademark Examining Operation is to refuse
registration of marks which are likely to cause confusion
with registered marks, and that must take precedence over
any inconvenience to applicant caused by the decision (of
which applicant was notified just 20 days later) to
reinstate the refusal.
With respect to applicant’s comment about unfairness
because it offered the additional disclaimer of
Ser. No. 75/229,671
4
"Protection" on the assumption that the refusal would be
withdrawn, we do not regard this comment as a request for
the withdrawal of the disclaimer of "Protection." If
applicant had wanted to withdraw the disclaimer, it should
have done so by clear language, and not in its appeal
brief, but rather in response to the November 25, 1997
Office action. Moreover, the arguments made by applicant
in its brief with respect to the descriptive nature of the
word "Protection" in its mark are contrary to any claim
that a disclaimer of "Protection" is not warranted.
Turning to the issue of likelihood of confusion, we
will discuss this question separately with respect to each
citation. Although our opinion focuses primarily on the
points argued by applicant and the Examining Attorney, our
determination of likelihood of confusion is based on all
appropriate du Pont factors. See In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
First we will consider whether applicant’s mark SENIOR
PROTECTION is likely to cause confusion with the cited
registration for SENIOR PROTECTOR.
The services identified in applicant’s application and
the cited registration--life insurance underwriting
services--are identical. Accordingly, we must presume the
services to be offered through the same channels of trade
Ser. No. 75/229,671
5
to the same class of consumers which, as applicant’s
specimen brochures indicate, are "mature adults."
It is a well established principle that "when marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines." Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). Here, the marks begin with the same
word, SENIOR. Although applicant points out that this word
has been disclaimed in both marks because of its
descriptive significance, it still forms part of each mark
and cannot be ignored in determining likelihood of
confusion.
The second word in each mark has the root "Protect."
In the case of the cited mark, "Protect" has the suffix
"or," to form the word PROTECTOR, while in applicant’s mark
the suffix is "ion", to form the word PROTECTION. Although
these suffixes are admittedly different, there are strong
visual and aural similarities between the words PROTECTOR
and PROTECTION.
Thus, despite the fact that there are differences in
the suffixes, and that applicant’s mark has the additional
third word PLUS, when the marks SENIOR PROTECTOR and SENIOR
Ser. No. 75/229,671
6
PROTECTION PLUS are considered in their entireties, they
are very similar in appearance and pronunciation.
Further, although applicant asserts that "protector"
and "protection" convey different connotations, we note
that "protector" is defined as "a person who protects;
guardian" and one of the definitions of "protection" is
"one that protects," as well as "the act of protecting" and
"the condition of being protected."4 "Protect" is defined
as "to keep from harm, attack, or injury; to guard."
Although there may be subtle differences in meaning between
"Protector" and "Protection," the overall impression is
similar and, when these words are viewed in the context of
the respective marks, we consider the connotations to be
very close. Both SENIOR PROTECTOR and SENIOR PROTECTION
PLUS for life insurance underwriting services have the
connotation of life insurance that protects the elderly,
with the PLUS in applicant’s mark indicating that the
insurance provides something more than just regular life
insurance.
Thus, while there are specific differences in the
marks, we do not find them sufficient to distinguish the

4 The American Heritage Dictionary of the English Language, new
coll. ed. ©1976. The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/229,671
7
marks. The "mature adults" who are the target consumer for
applicant’s services may not even notice the difference
between the suffixes "or" and "ion" in the context of the
entire marks. This is particularly possible if the
insurance service offered under one of the marks is
recommended to them by word of mouth, and they then
encounter the insurance offered under the other mark.
Further, although they may note the word PLUS in
applicant’s mark, they may well view this mark as a variant
of the SENIOR PROTECTOR mark, used to indicate an insurance
plan that offers something more, rather than as an
indication that SENIOR PROTECTION PLUS identifies services
from a different source.
As has been frequently pointed out, under actual
marketing conditions, consumers do not have the luxury to
make side-by-side comparisons between marks, and instead
they must rely on hazy past recollections. See Dassler KG
v. Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
Accordingly, we find that applicant’s mark is likely
to cause confusion with Registration No. 1,814,524 for
SENIOR PROTECTOR.
This brings us to the question of likelihood of
confusion vis-à-vis PROTECTPLUS, registered in the stylized
Ser. No. 75/229,671
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form shown below, for "voluntary group term life insurance
offered through employers to employees."
We note that applicant authorized the Examining
Attorney to amend its identification of services to "life
insurance underwriting services offered directly to
individuals" if that would avoid the likelihood of
confusion refusal. The Examining Attorney took the
position that it would not, and therefore did not enter the
amendment. Because of this, however, we have considered
the proposed amendment in our determination of likelihood
of confusion. That is, we have not treated applicant’s
identification as encompassing the registrant’s identified
group life term insurance offered through employers to
employees.
While applicant’s and registrant’s services are not
identical, we still view them as being closely related.
Both are life insurance services; the only difference is
that applicant’s are offered to individuals and the
registrant’s are offered through employers to employees as
part of group plans. That is, the only differences in the
services are the channels of trade through which they are
Ser. No. 75/229,671
9
offered. Despite the differences in how the insurance
services are offered, they are still likely to be
encountered by the same individuals. For example, a person
who is offered registrant’s life insurance through work may
still want to obtain additional insurance on an individual
basis, or that employee may encounter applicant’s insurance
because he or she may wish to purchase life insurance for a
spouse or child.
Because of the identical nature of the services and
the fact that they may be encountered by the same
consumers, we find that applicant’s and the registrant’s
services are closely related and, if they were offered
under the same or confusingly similar marks, confusion is
likely to result.
With respect to the marks, the words PROTECTON PLUS
are very similar to the words PROTECT PLUS in the cited
mark. We should point out that, while the cited mark
telescopes these words together, because of the manner in
which they are depicted, they would be readily recognized
as PROTECT PLUS. The fact that the word PROTECTION in
applicant’s mark has the suffix "ion", while in the cited
mark the word is PROTECT per se, is not likely to be noted
or remembered by the customers of the services. Given that
the registrant’s services are offered through employers to
Ser. No. 75/229,671
10
employees, and applicant’s services would be offered to
individuals, the services will necessarily be offered at
different times and in different environments, and
consumers are not likely to have an opportunity to view the
marks side-by-side. In such circumstances, the slight
differences between the words PROTECTION and PROTECT are
not likely to be noticed.
We recognize that applicant’s mark does begin with a
totally different word, SENIOR, than does the cited mark.
However, because of the descriptive nature of this word,
consumers are likely to regard SENIOR PROTECTION PLUS as a
variant of the registrant’s stylized PROTECTPLUS mark,
indicating a life insurance product emanating from
registrant that is specially for seniors. That is,
consumers are not likely to accord the word SENIOR in
applicant’s mark a source-identifying function, such that
they will distinguish the marks based on the presence of
this word.
It is well established that in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, 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
Ser. No. 75/229,671
11
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). For the reasons given
above, in comparing the marks SENIOR PROTECTION PLUS and
PROTECTPLUS (stylized), we have given less weight to the
word SENIOR.
Although applicant has not alluded to this, we
acknowledge that the three marks involved herein must be
considered weak, with all of them being composed of highly
suggestive or descriptive words. However, even highly
suggestive marks are entitled to protection, and for the
reasons we have discussed above, we find that applicant’s
mark SENIOR PROTECTION PLUS, used in connection with
applicant’s identified services, is likely to cause
confusion with both SENIOR PROTECTOR and PROTECTIONPLUS
(stylized) for the services identified in the respective
registrations.
Finally, although we have no doubt about our decision,
because of the reversal of position by the Examining
Attorney, we think it appropriate to point out that, if
there were any doubt on the issue of likelihood of
confusion, it must be resolved in favor of the prior user
or registrant. In re Pneumatiques, Caoutchouc Manufacture
et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729
(CCPA 1973).
Ser. No. 75/229,671
12
Decision: The refusals of registration, based on both
Registration Nos. 1,814,524 and 1,915,426, are affirmed.
R. F. Cissel
E. J. Seeherman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board