Farmers Mutual Hail Insurance CompanyDownload PDFTrademark Trial and Appeal BoardMay 5, 2014No. 77777342 (T.T.A.B. May. 5, 2014) Copy Citation 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 Serial N GROUP BUSINE appeara Veuve C Cir. 200 instead impress connect F.3d 13 addition one fea nothing Nationa A striking each m FARME marks, at 1692) significa os. 777773 , FARME SS INSU nce, mean licquot Po 5). “The ‘whether ion’ such t ion betwee 56, 101 US , while m ture of a improper l Data Cor ll of applic of which i ark. FAR RS also is not only be , but also nce than 42 & 7777 , wi RS, FAR RANCE ing and c nsardin F proper tes the marks hat person n the part PQ2d 171 arks must mark may in giving g p., 753 F.2 ant’s and s the appe MERS co the domin cause it a because it the oth 9424 th registr MERS IN EXPRESS ommercial ondee En t is not a are suffic s who enc ies.” Coac 3, 1721 (F be compa have mo reater we d 1056, 22 registrant arance of mprises t ant and m ppears fir is more d er wordi 13 ant’s four SURANC in their impressio 1772, 396 side-by-s iently sim ounter the h Servs., I ed. Cir. 2 red in the re signifi ight to the 4 USPQ 7 ’s marks s the word F he entiret ost signific st in those istinctive a ng (INSU marks F E EXCH entiretie n. See Pa F.3d 1369 ide compa ilar in te marks wo nc. v. Triu 012) (inter ir entiretie cance tha more sign 49 (Fed. C hare obvio ARMERS y of one ant featur marks (se nd has str RANCE ARMERS ANGE an s in ter lm Bay I , 73 USPQ rison of t rms of the uld be like mph Lear nal citatio s, it is we n another ificant fea ir. 1985). us similar in the ini of regist e of the ot e Palm Ba onger sou GROUP, INSURAN d FARM ms of so mports, In 2d 1689 ( he marks, ir comme ly to assum ning LLC, n omitted ll settled , and ther ture. See I ities, the m tial positio rant’s ma her three c y, 73 USP rce-identif INSURAN CE ERS und, c. v. Fed. but rcial e a 668 ). In that e is n re ost n in rks. ited Q2d ying CE 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 18 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 21 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). Copy with citationCopy as parenthetical citation