Farmers Mutual Hail Insurance Company

Trademark Trial and Appeal Board

May 5, 2014

No. 77779424 (T.T.A.B. May. 5, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Farmers Mutual Hail Insurance Company
_____

Serial Nos. 77777342 & 777794241
_____

Richard Blakely Glasgow of Wright Lindsey & Jennings LLP for Farmers Mutual
Hail Insurance Company.

Karen P. Severson, Trademark Examining Attorney, Law Office 117 (Brett J.
Golden, Managing Attorney).
_____

Before Quinn, Kuhlke and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Farmers Mutual Hail Insurance Company (applicant) seeks registration on
the Principal Register of the marks FARMERS MUTUAL HAIL INSURANCE
COMPANY OF IOWA (in standard characters) and FARMERS MUTUAL HAIL
INSURANCE COMPANY OF IOWA and design, shown below. Each application is
based on an allegation of first use and use in commerce since 1893 under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and a claim of acquired

1 In view of the common issues in these separate appeals, we are issuing our determination
as to each in a single decision.
Serial Nos. 77777342 & 77779424
2

distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), for
services ultimately identified as “insurance services, namely, writing multi-peril
crop insurance, hail crop insurance and re-insurance underwriting in the field of
multi-peril crop insurance” in International Class 36.2

Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d) in each application, on the ground that applicant’s mark, when
used with its identified services, so resembles the following four previously
registered marks (in typed form or standard characters)3, owned by Farmers
Insurance Group, as to be likely to cause confusion, mistake or deception:
1. FARMERS INSURANCE GROUP (INSURANCE
GROUP disclaimed) for “insurance services; namely,
underwriting, claims administration and agency

2 Application Serial Nos. 77777342 (filed July 9, 2009) and 77779424 (filed July 13, 2009),
respectively. The ‘424 application includes the following description of the mark: “The mark
consists of the wording FARMERS MUTUAL HAIL INSURANCE COMPANY OF IOWA
with a storm cloud design. The storm cloud has rain pouring onto a farm with a crop and
house with a barn.”
Applicant originally filed its applications under Section 1(a) only. In response to the
examining attorney’s refusal of the ‘342 application based on mere descriptiveness under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and the examining attorney’s
requirement in the ‘424 application that applicant disclaim all wording, applicant
disclaimed HAIL INSURANCE COMPANY OF IOWA in both marks. Applicant
subsequently amended the applications to seek registration based on a claim of acquired
distinctiveness as to the entirety of each mark, and limited the disclaimer to INSURANCE
COMPANY OF IOWA. The examining attorney accepted the 2(f) claims and the
disclaimers. As discussed below, the examining attorney now requires applicant to revise
the disclaimers to include the word HAIL.
3 “Standard character” drawings were known as “typed drawings” prior to November 2,
2003. Standard character and typed marks are legal equivalents. See TMEP § 807.03(i)
(April 2014).
Serial Nos. 77777342 & 77779424
3

services for property and casualty, life, automobile,
farm and ranch, flood, workers’ compensation,
mortgage protection (life), renters, townhouse,
condominium, and homeowners insurance;
underwriting and agency services of individual
retirement annuities (IRA) and flexible payment
annuities; administration of employee pension plans,”
in International Class 364;
2. FARMERS for “underwriting and claims
administration for property, casualty, life, mortgage
protection (life), automobile, farm and ranch, flood,
workers’ compensation, renters’, townhouse,
condominium, and homeowners insurance;
underwriting and administration of individual
retirement annuities (IRA) and flexible payment
annuities,” in International Class 365;
3. FARMERS INSURANCE EXCHANGE (INSURANCE
EXCHANGE disclaimed) for “underwriting, claims
administration and property, casualty and automobile
insurance agency services,” in International Class 366;
and
4. FARMERS BUSINESS INSURANCE EXPRESS
(BUSINESS INSURANCE EXPRESS disclaimed) for,
among other things, “Insurance brokerage services;
insurance services, namely, providing a full range of
business insurance and risk management services for
businesses, insurance underwriting, claims
administration and agency services,” in International
Class 367.
When the Section 2(d) refusals were made final, applicant filed appeals.
Applicant and the examining attorney filed briefs on the issue, and applicant filed
replies. Subsequently, the Board granted the examining attorney’s requests for
remand so that she could issue new requirements for revised disclaimer statements

4 Registration No. 1821673, issued February 15, 1994; renewed.
5 Registration No. 1899192, issued June 13, 1995; renewed.
6 Registration No. 1920139, issued on September 19, 1995; renewed.
7 Registration No. 3505986, issued on September 23, 2008.
Serial Nos. 77777342 & 77779424
4

to include the term HAIL, and to supplement the evidence of record (relevant to the
2(d) refusals) to include information about three applications that applicant
recently had filed.
The examining attorney issued final refusals in each application on the
ground that applicant did not comply with the requirement under Section 6(a) of the
Trademark Act, 15 U.S.C. 1056(a), to amend the disclaimer to include the generic
word HAIL.8 Applicant and the examining attorney filed supplemental briefs on
this issue as well as the relevance of applicant’s three other applications to the
likelihood of confusion issue, and applicant filed replies.
As discussed, below, we affirm the refusals. We consider the disclaimer
requirement first.
Disclaimer
As an initial point, we note that applicant already has included the word
INSURANCE in its disclaimers. This, combined with applicant’s 2(f) claims as to
the entirety of each mark, constitutes a tacit admission that the disclaimed wording
is generic for the identified services. See Alcatraz Media Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013) (“we note that respondent’s
disclaimer of the individual word TOURS in its Section 2(f) registration constitutes
a tacit admission that this individual term is generic for the identified services”),
citing In re Creative Goldsmiths Of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986)
(“it is within the discretion of an Examining Attorney to require the disclaimer of an
unregistrable component (such as a common descriptive, or generic, name) of a

8 The examining attorney continued the final refusal under Section 2(d) in each application.
Serial Nos. 77777342 & 77779424
5

composite mark sought to be registered on the Principal Register under the
provisions of Section 2(f).”); TMEP §1212.02(e).
According to the examining attorney, the wording HAIL INSURANCE is the
generic name for the insurance services offered by applicant, and therefore, the
proposed mark is unregistrable absent a disclaimer that includes the word HAIL. It
is applicant’s position, however, that crop insurance, rather than hail insurance, is
the generic term for applicant’s services “because hail is not what is insured,” and
that “HAIL describes the peril that the crop insurance protects against.” App. Supp.
Br., p. 11. Applicant also contends that the examining attorney has provided
insufficient evidence that HAIL INSURANCE is generic of applicant’s services.
We agree with the examining attorney. As discussed below, the evidence of
record is sufficient to prove that the term HAIL INSURANCE is the name for the
type or category of crop insurance against damage caused by hail.9 In other words,
HAIL INSURANCE tells the consumer what the product is. This finding of fact is
corroborated by the definition of the term “hail,” as well as applicant’s and third-
party use of the terminology “hail insurance” to identify a type or category of crop
insurance.
Section 6(a) reads, in relevant part, as follows: “The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
A disclaimer is a statement that the applicant or registrant does not claim the
exclusive right to use a specified element or elements of the mark in a trademark

9 We observe that applicant’s first argument is rather strained, and is akin to arguing that
“flood insurance” and “fire insurance” are not generic for insurance that protects property
against the “perils” of flood and fire.
Serial Nos. 77777342 & 77779424
6

application or registration. The Trademark Office may require a disclaimer as a
condition of registration if the term in the mark is generic with respect to at least
some of the goods or services in the genus, and registration is properly refused in
the absence of a disclaimer. In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1082
(TTAB 2010), citing In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff’d without pub. op., 971 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (registration
is properly refused if the subject matter for registration is generic of any one of the
goods for which registration is sought); and Creative Goldsmiths, 229 USPQ at 768
(TTAB 1986). Failure to comply with a requirement for a disclaimer is a basis on
which to refuse registration. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395,
1399-1400 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087,
1089 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (C.C.P.A.
1975); In re Nat’l Presto Indus., Inc., 197 USPQ 188, 190 (TTAB 1977); In re
Pendleton Tool Indus., Inc., 157 USPQ 114, 115 (TTAB 1968).
When a proposed mark is refused registration as generic, or a disclaimer is
required on that basis, the examining attorney has the burden of proving
genericness by “clear evidence” thereof. See In re Hotels.com, 573 F.3d 1300, 91
USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
Serial Nos. 77777342 & 77779424
7

The issue is whether the record shows that members of the relevant public
primarily use or understand the term sought to be registered to refer to the category
or class of goods or services in question. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
Making this determination “involves a two-step inquiry: First, what is the
genus of goods or services at issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to that genus of goods or
services?” Marvin Ginn, 228 USPQ at 530 (Fed. Cir. 1986). Evidence of the public’s
understanding of a term may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals, newspapers and other publications.
See Merrill Lynch, 4 USPQ2d at 1143 (Fed. Cir. 1987); In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We begin by finding that the genus of the services at issue in this case is
adequately defined by applicant’s identification thereof, namely, “insurance
services, namely, writing multi-peril crop insurance, hail crop insurance and re-
insurance underwriting in the field of multi-peril crop insurance.” See In re Country
Music Ass’n, 100 USPQ2d 1824, 1827-28 (TTAB 2011) citing Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper
genericness inquiry focuses on the description of services set forth in the
[application or] certificate of registration.”).
Serial Nos. 77777342 & 77779424
8

Turning to the second inquiry, how the public understands the term HAIL
INSURANCE, applicant points to a Wikipedia entry for “Crop Insurance” that was
attached to Applicant’s July 8, 2013 response to support its position that the
relevant public is limited to “commercial farmers in need of crop insurance.” App.
Supp. Br., p. 5. We have considered this evidence as the examining attorney had an
opportunity to rebut it in her September 12, 2013 subsequent Final Office action.
See In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1382 n.2 (TTAB 2012)
(Wikipedia evidence considered because examining attorney had opportunity to
rebut the evidence). However, applicant has read the entry too narrowly. The first
sentence of the entry identifies purchasers of crop insurance as “agricultural
producers, including farmers, ranchers, and others to protect themselves against
either the loss of their crops due to natural disasters, such as hail, drought, and
floods, or the loss of revenue due to declines in the prices of agricultural
commodities.” Based on this evidence and the identification of services, which is not
limited to commercial farmers, we find that the relevant public consists of farmers,
ranchers and agribusinesses seeking insurance to protect their crops from damage
from hail.
As noted above, the evidentiary burden of establishing that a term is generic
rests with the USPTO and the showing must be based on clear evidence. Merrill
Lynch, 4 USPQ2d at 1143 (Fed. Cir. 1987). Based on the record described below, we
find that there is clear evidence to support a finding that the relevant public, when
it considers HAIL INSURANCE in conjunction with the identified insurance
Serial Nos. 77777342 & 77779424
9

services, readily understands the term to mean insurance against damage to crops
caused by hail.
The examining attorney first submitted a dictionary definition from the
Merriam-Webster Online dictionary: “Hail” is a noun defined as “1. precipitation in
the form of small balls or lumps usually consisting of concentric layers of clear ice
and compact snow.” Thus, the term “Hail Insurance” means insurance against
damage caused by balls or lumps of precipitation consisting of snow and ice, i.e.,
hail. The combination of the words “hail” and “insurance” does not have an
incongruous meaning or form a unique commercial impression when used in
connection with applicant’s services such that the term “Hail Insurance” loses its
ordinary meaning. Accordingly, consumers of insurance against damage to crops
caused by hail will perceive the term HAIL INSURANCE in its ordinary dictionary
sense. See Gould Paper, 5 USPQ2d at 1112 (Fed. Cir. 1987) (“the combination of
‘SCREEN’ and ‘WIPE’ does not render Gould’s mark [SCREENWIPE] unique or
incongruous, the common descriptive aspect of applicant’s mark is not lost in the
combined form.”). In this regard, we note that applicant’s original identification of
services included the wording “hail insurance.”10
Although applicant does not disagree with the above definition of the term
”hail,” applicant cites In re American Fertility Society, 188 F.2d 1341, 51 USPQ2d
1832, 1836 (Fed. Cir. 1999) for the proposition that “the Board cannot simply cite
definitions and generic constituent terms of a mark … in lieu of conducting an

10 Applicant changed this wording to “hail crop insurance” after the Board remanded the
applications, when faced with the requirement to expand the disclaimer to include the word
HAIL.
Serial Nos. 77777342 & 77779424
10

inquiry into the meaning of the disputed phrase as a whole to hold a mark …
generic.” App. Supp. Br., p. 6. Applicant then argues that HAIL is merely
descriptive of applicant’s services, which protect against the peril of hail, but that
HAIL INSURANCE is not generic.
However, in addition to the dictionary definition of the word “hail,” the
examining attorney also submitted Internet evidence from applicant’s and various
third-party websites that either feature or discuss “hail insurance” as a type of
insurance to protect crops against damage caused by hail. For example:11
•Applicant’s website includes a web page that provides an
overview of applicant’s “Crop Hail Insurance Products,” and discusses three types
of policies under this heading.
•The Wikipedia page that applicant made of record notes different types of
crop insurance products, including “Crop-hail insurance,” and references the
earliest forms of “hail insurance” in the “early 1920’s.”
•A 2011 newsletter from the Iowa State University Extension and Outreach
division entitled “Adding Hail Insurance Coverage” discusses the damage hail can
cause crops, and the need for “hail insurance coverage” to protect against this
damage. In the section entitled “Three reasons to consider adding hail coverage,” the
author notes that “crop insurance companies are providing hail insurance at
historically low rates,” and in the section entitled “Explore various crop hail
policies,” the author discusses “a number of choices in crop hail insurance

11 We have supplied the emphasis in each example.
Serial Nos. 77777342 & 77779424
11

products.” The article concludes with this statement: “in all cases, 2011 may very
well be the year to add crop hail insurance to your risk management plan.”
•The first sentence of the “Hail Insurance” web page on the Fisher’s Ag
Insurance Services LLC website states: “What would a hail loss
mean to you?” The web page specifically discusses hail damage and “crop-hail
policies.”
•The first sentence of the “Hail Insurance” web page on the Gregory’s
Insurance website states: “The Production Hail crop hail policy
is an efficient alternative to more traditional hail insurance plans.”
•The “Crop & Hail Insurance” web page on the Kronk & Scaggs Insurance
website lists “Multi-Peril & Hail” crop insurance.
•The “Crop Hail” web page from the Grinnell Mutual Reinsurance website
discusses the benefits of “crop hail insurance policies” for
farmers.
•The “Crop Hail Insurance” web page from the Dacotah Bank website
states: “It’s good to know our agents can move as fast as the
wind when you need to place Crop Hail Insurance.”
•The “Crop and Life Insurance” web page from the Progressive Farm Credit
Services website states: “With today’s high cost of producing a
crop, crop insurance is as much a necessity as any other insurance product you buy.
Hail insurance provides protection for more than losses due to a hail storm.
Losses due to fire, whether in the field or grain bin, are also covered. Vandalism and
Serial Nos. 77777342 & 77779424
12

transit coverage to the first place of storage within a 100 mile radius are two other
benefits provided in a hail policy. With Mother Nature’s unpredictable wrath in this
part of the country, you’ll have peace of mind with crop hail insurance from
Progressive Farm Credit.”
In view of the foregoing, the examining attorney has met her burden to
establish that HAIL INSURANCE is generic for “insurance services, namely,
writing multi-peril crop insurance, hail crop insurance and re-insurance
underwriting in the field of multi-peril crop insurance,” and that neither application
is capable of registration on the Principal Register under Section 2(f) absent a
revision of the existing disclaimer of INSURANCE COMPANY OF IOWA to include
the word HAIL; that is, applicant must disclaim HAIL INSURANCE COMPANY
OF IOWA apart from the mark.
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
Comparison of the Marks
We first compare applicant’s standard character mark FARMERS MUTUAL
HAIL INSURANCE COMPANY OF IOWA and applicant’s composite mark
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Serial Nos. 77777342 & 77779424
14

EXCHANGE and BUSINESS INSURANCE EXPRESS), all of which is highly
descriptive, if not generic, of registrant’s insurance services, and appropriately has
been disclaimed. It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
In light of applicant’s 2(f) claims as to the entirety of each of its marks, we
presume that the marks are merely descriptive of applicant’s services. See The Cold
War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d. 1352, 92 USPQ2d 1626,
1629 (Fed. Cir. 2009). We therefore give additional weight to the placement of
FARMERS in the initial position, and find it to be more likely to be perceived as the
distinguishing element of applicant’s marks. See Palm Bay, 73 USPQ2d at 1692
(Fed. Cir. 2005); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (noting that “it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered.”). See also In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (finding
Serial Nos. 77777342 & 77779424
15

JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the commercial
significance of the descriptive and otherwise non-dominant terms JOSE, GOLD and
ALE are properly discounted). We further find that the design element in the ‘424
application does not overcome the dominance of the literal element FARMERS
shared by each of applicant’s and registrant’s marks. In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (when a mark consists of both words and a
design, the words are normally given greater weight because they would be used by
consumers to request the products).
Of course, where the common element of the marks is “weak” in that it is
highly suggestive of the services, other matter in the marks may be sufficient to
avoid likely confusion. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818
(Fed. Cir. 1986). In this regard, we acknowledge that FARMERS is highly
suggestive of the “farm and ranch” insurance services registrant offers under the
FARMERS and FARMERS INSURANCE GROUP marks. However, the same
cannot be said for the other types of insurance identified in any of the four
registrations. Moreover, there is no probative evidence of record, such as third-party
registrations or third-party uses, to demonstrate that the term “farmers” is
commercially weak for insurance services.12

12 In response to the first Office action, applicant submitted the first three of four pages of a
search of the USPTO TESS database for applications and registrations in International
Class 36 in which the term “farmers” was found in the “mark” field. The search results list
only the application serial number or registration number, mark, and status of the
applications or registrations (“live” or “dead”). Such a list, without copies or electronic
printouts of the applications or registrations, is insufficient to properly make the
applications or registrations of record. See In re Smith & Mehaffey, 31 USPQ2d 1531, 1532
n.3 (TTAB 1994). “However, while the examining attorney never objected to this evidence,
Serial Nos. 77777342 & 77779424
16

Because FARMERS is one of registrant’s entire marks, and the most
distinctive portion of the other three, because FARMERS also is the dominant
portion of each of applicant’s marks, and because all of the marks begin with the
word FARMERS (and they all share the generic word INSURANCE), we find that
there are significant similarities between each of applicant’s marks and each of
registrant’s marks in sight, sound and meaning, and that they create similar
commercial impressions. We further find that these similarities outweigh any
differences due to the additional wording and design. Because of the overall
similarities of the marks, consumers are likely to view applicant’s marks and
registrant’s marks as variations of each other, with all marks indicating a single
source for the services. Purchasers may likely assume that applicant’s FARMERS
MUTUAL HAIL INSURANCE COMPANY OF IOWA marks, with and without
design features, are simply other variants of registrant’s FARMERS and
FARMERS-inclusive marks, or that they identify another product in registrant’s
FARMERS line, namely, hail insurance.
In view of the foregoing, we find that when applicant’s marks and registrant’s
marks are compared in their entireties, they are sufficiently similar in appearance,
sound, connotation and commercial impression that, if used in connection with

and thus, we have considered the listing, it is of no probative value. We have no information
as to the [services] in the listed registrations and applications, we are not privy to the
records in the files of those cases, and, in any event, the Board is not bound by the actions
of examining attorneys in allowing those marks for registration. It has been said many
times that each case must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d
1227, 1229 (TTAB 2010) (internal citation omitted).
Serial Nos. 77777342 & 77779424
17

related services, confusion would be likely to occur. As such this du Pont factor
favors a finding of likelihood of confusion.
Comparison of the Services, Channels of Trade and Classes of Purchasers
We make our determination regarding the similarity of the services, channels
of trade and classes of purchasers based on the services as they are identified in the
applications and registrations, respectively. Stone Lion Capital Partners, LP v. Lion
Capital LLP, __ F.3d __, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc.
v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). Accordingly, we must compare applicant’s services,
which are identified as “insurance services, namely, writing multi-peril crop
insurance, hail crop insurance and re-insurance underwriting in the field of multi-
peril crop insurance” to registrant’s various insurance services. For ease of
reference, the cited marks and identified services are as follows:
1. FARMERS INSURANCE GROUP for “insurance
services; namely, underwriting, claims administration
and agency services for property and casualty, life,
automobile, farm and ranch, flood, workers’
compensation, mortgage protection (life), renters,
townhouse, condominium, and homeowners insurance;
underwriting and agency services of individual
retirement annuities (IRA) and flexible payment
annuities; administration of employee pension plans,”
in International Class 36;
2. FARMERS for “underwriting and claims
administration for property, casualty, life, mortgage
protection (life), automobile, farm and ranch, flood,
workers’ compensation, renters’, townhouse,
condominium, and homeowners insurance;
underwriting and administration of individual
Serial Nos. 77777342 & 77779424
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retirement annuities (IRA) and flexible payment
annuities,” in International Class 36;
3. FARMERS INSURANCE EXCHANGE for
“underwriting, claims administration and property,
casualty and automobile insurance agency services,” in
International Class 36; and
4. FARMERS BUSINESS INSURANCE EXPRESS for,
among other things, “Insurance brokerage services;
insurance services, namely, providing a full range of
business insurance and risk management services for
businesses, insurance underwriting, claims
administration and agency services,” in International
Class 36.
The record shows that the services identified in the applications and
registrations are related, and that it is common for insurance companies to offer
multiple types of insurance to consumers, including the types of insurance
identified in the applications and registrations. Indeed, applicant recently has
applied to register another FARMERS MUTUAL HAIL INSURANCE COMPANY
OF IOWA standard character mark (which is identical to the mark in the involved
‘342 application), another FARMERS MUTUAL HAIL INSURANCE COMPANY
OF IOWA and design mark (where the design is virtually identical to the design in
the involved ‘424 application), and a standard character mark, FARMERS
MUTUAL HAIL, all for insurance services that are identical, in part, to the services
identified in the cited registrations (property, automobile, farm and business
insurance), and all of which were filed based on applicant’s use of the marks in
commerce. Thus, applicant itself offers crop insurance as well as property,
automobile, farm and business insurance under identical or highly similar marks.
Serial Nos. 77777342 & 77779424
19

The examining attorney also submitted several use-based, third-party
registrations which show that various insurance companies have adopted a single
mark for crop insurance and some of the enumerated insurance services in the
registrations, such as property, casualty, motor vehicle, accident, automobile and
business owners insurance (e.g., Reg. Nos. 2228147, 27890986, 2762312, 3103817,
3251149 and 4000014). These registrations suggest, in general, that the insurances
services identified in the applications and various of the insurance services
identified in the registrations are of a type that may emanate from a single source.
See In re RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (internal citations
omitted).
As additional evidence that the insurance services identified in the
applications and registrations are related, the examining attorney submitted pages
from the websites of several insurance companies that offer crop insurance and one
or more of the types of insurance that registrant offers under one or more of the
cited registrations (e.g., Country Financial , Progressive
Farm Credit Services , and Goen & Goen, Inc. ).
Applicant simply argues that the services are not identical because the
registrations do not cover hail and multi-peril crop insurance, and that the services
are not competitive “because consumers do not choose, for example, between the
registrant’s automobile or property insurance and the [a]pplicant’s crop insurance.”
App. Br., p. 9. The authority is legion, however, that the services of applicant and
Serial Nos. 77777342 & 77779424
20

registrant need not be identical or directly competitive to find a likelihood of
confusion. It is sufficient that the services are related in some manner, or that the
conditions and activities surrounding their marketing are such that they would or
could be encountered by the same persons under circumstances which could,
because of the similarity of the marks, give rise to the mistaken belief that they
originate from the same source. See, e.g., Coach Servs. 101 USPQ2d at 1722 (Fed.
Cir. 2012) (internal citation omitted); Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not
whether purchasers would confuse the services, but rather whether there is a
likelihood of confusion as to the source of the services. In re Rexel Inc., 223 USPQ
830, 832 (TTAB 1984); see also, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960,
144 USPQ 435, 438 (CCPA 1965) (“The confusion involved, of course, is not
confusion of goods but a confusion of business ….”) (quoting Kautenberg Co. v. Ekco
Products Co., 251 F.2d 628, 116 USPQ 417, 419 (CCPA 1958)).
Overall, the evidence favors a finding of likelihood of confusion with respect
to the du Pont factor regarding the relatedness of the services.
Regarding the channels of trade and classes of purchasers, because the
services are so closely related, and there are no limitations in the identifications in
the applications or cited registrations, we must presume that they are offered in the
same channels of trade to the same classes of customers that are normal for these
services. Hewlett-Packard Co., 62 USPQ2d at 1005 (2002). As we found above,
Serial Nos. 77777342 & 77779424
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applicant’s customers consist of farmers, ranchers and agribusinesses. We must
presume that registrant’s customers also include farmers, ranchers and
agribusinesses. Id. Accordingly, the du Pont factors of channels of trade and classes
of purchasers favor a finding of likelihood of confusion.
Conditions of Purchase
We next consider the conditions under which and buyers to whom applicant’s
and registrant’s insurance services are sold, i.e., “impulse” vs. careful, sophisticated
purchasers. We recognize, as applicant contends, that some of the purchasers for
the insurance services offered by applicant and registrant under their respective
marks are commercial farmers, who could be expected to exhibit a degree of care
and deliberation in the purchasing decision. However, in this situation, where
applicant’s and registrant’s marks share the same source-identifying word
FARMERS, even sophisticated purchasers are likely to view the marks as
indicating a single source when they are used on closely related insurance services.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990). In view thereof, while this du Pont factor slightly favors applicant,
the similarity in the marks and services outweigh this factor.
Actual Confusion
As its last argument, applicant maintains that there has been no actual
confusion between applicant’s and registrant’s marks over 84 years (as to the
registered FARMERS and FARMERS INSURANCE EXCHANGE marks) despite
Serial Nos. 77777342 & 77779424
22

applicant’s prominent and extensive use of its marks. Applicant contends that this
factor strongly weighs in applicant’s favor, particularly in light of applicant’s
“extensive and highly effective advertising campaign,” which “is strong evidence of
the [a]pplicant’s long-term marketing success under the applied-for mark[s].” App.
Br., pp. 12-13. However, as the examining attorney points out, the lack of evidence
of actual confusion carries little weight, J.C. Hall, 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte context, where “registrant has no chance to
be heard from (at least in the absence of a consent agreement, which applicant has
not submitted in this case).” In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984) (internal citation omitted). In any event, the record is devoid of
probative evidence relating to the extent of use of applicant’s and registrant’s marks
and, thus, whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham, 55 USPQ2d at
1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
Conclusion
When we consider the record and the relevant likelihood of confusion factors,
and all of applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with registrant’s
insurance services offered under the FARMERS and FARMERS-inclusive marks
Serial Nos. 77777342 & 77779424
23

would be likely to believe, upon encountering applicant’s marks FARMERS
MUTUAL HAIL INSURANCE COMPANY OF IOWA and
for “insurance services, namely, writing multi-peril
crop insurance, hail crop insurance and re-insurance underwriting in the field of
multi-peril crop insurance” that the services originated with or are somehow
associated with or sponsored by the same entity. To the extent that any of
applicant's points raises a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Decision: The Section 2(d) refusal to register is affirmed in each application.
In addition, the requirement for a revised disclaimer to include HAIL is affirmed in
each application. However, if applicant submits the required disclaimer of HAIL
INSURANCE COMPANY OF IOWA in each application within thirty days, this
decision will be set aside only as to the affirmance of the disclaimer requirement.13
See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

13 The standardized printing format for the required disclaimer text is as follows: “No claim
is made to the exclusive right to use HAIL INSURANCE COMPANY OF IOWA apart from
the mark as shown.” TMEP § 1213.08(a)(i).