Guardian Life Insurance Company of America

Trademark Trial and Appeal Board

Mar 12, 2008

No. 78538469 (T.T.A.B. Mar. 12, 2008)

Mailed:
12 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Guardian Life Insurance Company of America
________

Serial No. 78538469
_______

Virginia R. Richard of Winston & Strawn LLP for Guardian
Life Insurance Company of America.

Karen P. Severson, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Quinn, Drost, and Bergsman, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 27, 2004, applicant, Guardian Life
Insurance Company of America, applied to register the mark
GUARDIAN IS BIG ON SMALL BUSINESS (in standard character
form) on the Principal Register for “financial services,
namely, group health, life and disability insurance for
small businesses and brokerage services related thereto” in
Class 36. Serial No. 78538469. The application is based
on applicant’s allegation of a bona fide intention to use
the mark in commerce. Applicant also claims ownership of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78538469
2
numerous registrations including Nos. 18538111; 22524982;
22681453; 26431974; and others for various GUARDIAN marks.
In subsequent papers, applicant included a list of more
than thirty registrations for various marks containing the
term GUARDIAN for various insurance, trust, pension
planning, and similar services.
The examining attorney5 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark WE’RE BIG ON SMALL BUSINESS (in standard character
form) for “underwriting of commercial property and casualty
insurance; insurance administration and insurance claims
processing services which are accessible online and via the
Internet” in Class 36.6
The examining attorney argues that:

1 GUARDIAN for insurance underwriting services in the field of
disability insurance.

2 This registration has now been cancelled.

3 THE GUARDIAN LIFE INSURANCE COMPANY OF AMERICA for services
including group and individual life, disability, accident, health
and dental insurance underwriting services and pension planning
services.

4 GUARDIAN and design for services similar to those in the
previous registration.

5 The current examining attorney was not the original examining
attorney in this case.

6 Registration No. 3042610 issued January 10, 2006.
Ser No. 78538469
3
Applicant’s mark consists of the house mark GUARDIAN
and the wording IS BIG ON SMALL BUSINESS.
Registrant’s mark is WE’RE BIG ON SMALL BUSINESS.
Accordingly, the respective marks share the identical
wording BIG ON SMALL BUSINESS. Applicant’s addition
of GUARDIAN IS merely serves to identify the WE’RE in
Registrant’s mark.

Brief at unnumbered p. 5.

The examining attorney also maintains that the
services are closely related.
On the other hand, applicant argues that its mark is
famous and that “[c]onsumers in the insurance and financial
industries have been conditioned to distinguish marks used
in the industry on the basis of different elements used by
different parties” and that there has been widespread use
of the phrase ‘Big on Small Business.’” Brief at 11.
Furthermore, applicant maintains that “[l]ife and health
insurance are wholly separate from commercial property and
casualty insurance services and are sold by different
insurance companies specializing in these fields and by
different sales people licensed to sell specific types of
insurance.” Brief at 15.7
When the refusal was made final, applicant filed this
appeal.

7 The examining attorney has objected to new evidence that was
either submitted or referred to in applicant’s brief. We will
not consider evidence presented for the first time on appeal. 37
CFR § 2.142(d).
Ser No. 78538469
4
Inasmuch as the issue here involves the question of
likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
We begin our analysis by comparing applicant’s and
registrant’s services. Applicant’s services include
financial services involving group health, life and
disability insurance for small businesses services while
registrant’s services include underwriting of commercial
property and casualty insurance. We must determine the
issue of likelihood of confusion based on the identified
services. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). See also Paula
Ser No. 78538469
5
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”).
In support of her argument that the services are
closely related, the examining attorney has submitted
numerous registrations to show that property and casualty
insurance services and health, life, and disability
insurance services are registered by the same entity under
a common mark. Some examples follow:
No. 2342776 – “life insurance, property and casualty
insurance, and health and disability insurance”

No. 2298234 – “life insurance, health insurance, auto
insurance, home insurance, and property and casualty
insurance”

No. 2524770 – “insurance underwriting services in the
fields of multi-line property and casualty insurance
and life insurance”

No. 2572948 – “underwriting insurances, namely,
providing individual and group life, health, and
annuity insurance, personal and commercial property
and casualty, new and used motor vehicle, surety,
employer’s liability, commercial multiple peril, farm
multiple peril, homeowner’s multiple peril, and
business interruption insurance”

No. 2654094 – “writing and underwriting of casualty
insurance, property insurance, liability insurance,
life insurance and annuities”

No. 2686633 – “Insurance underwriting in the fields of
property and casualty insurance, life insurance”

Ser No. 78538469
6
These registrations can be used to suggest that goods
or services are related. See In re Infinity Broadcasting
Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The
registrations show that entities have registered their
marks for both television and radio broadcasting services.
Although these registrations are not evidence that the
marks shown therein are in use or that the public is
familiar with them, they nevertheless have probative value
to the extent that they serve to suggest that the services
listed therein, including television and radio
broadcasting, are of a kind which may emanate from a single
source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB
1988)”).
In order to be related, it “has often been said that
goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that 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 thereon, to a mistaken belief
that they originate from or are in some way associated with
Ser No. 78538469
7
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, 1388 (TTAB 1991). See also
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002). We agree with the examining attorney
that this evidence supports her determination that the life
and health insurance and property and casualty insurance
services are closely related.
In addition to finding that the services of applicant
and registrant are closely related, we also find that the
prospective purchasers of these services would overlap.
Applicant’s group health, life and disability insurance
services are specifically identified as being “for small
businesses.” Applicant argues that “registrant’s
commercial property and casualty insurance is specifically
marketed to property owners seeking liability coverage for
property, not life and health insurance for small business
employees.” Brief at 15. However, a small business
seeking insurance for its operations would likely be in the
market for commercial property and casualty insurance as
well as group life, health and disability insurance.
Registrant’s services include commercial property and
casualty insurance underwriting. These commercial
Ser No. 78538469
8
insurance services would include commercial property and
casualty insurance for small businesses.
Applicant also argues that the purchasers of these
services are sophisticated purchasers.
The circumstances regarding the purchase of insurance
products further eliminates any likelihood of
confusion. The parties’ respective services are
offered at high price points. In addition, the
insurance products offered by the parties are not the
subject of impulse buying. They are the subject of
careful consideration and research by the small
business consumer and, particularly, the employees of
small business in charge of selecting an insurance
carrier. The nature of the insurance business
necessitates frequent contact between the insurance
provider and the policyholder, in the form of premium
invoices, policy updates, benefits inquiries, payment
of claims, explanatory insurance coverage and claims
payment policies and procedures, and the like, all of
which ensure that policyholders know exactly which
company they are dealing with when they purchase an
insurance policy, and throughout the life of the
policy. The degree of inquiry made prior to purchase
by the sophisticated, highly trained and educated
purchasers of insurance services is so thorough as
virtually to preclude confusion as to the source of
those services.

Reply Brief at 16-17.

We have several problems with applicant’s arguments
that prohibit us from giving them much weight. First,
there is little evidence in the record that would permit us
to draw the specific conclusions that applicant asserts to
be facts. Also, small businesses would include a variety
of entities with different levels of experience. The
examining attorney (Brief at 14) “is not disputing that the
Ser No. 78538469
9
respective parties’ consumers are relatively
sophisticated.” However, while these purchasers may be
relatively sophisticated, it is hard to imagine that all
owners of restaurants, convenience stores, and similar
small businesses are “sophisticated, highly trained and
educated purchasers.” It is not clear why some of these
purchasers would not include novices who are starting their
first business with little business experience. Third,
while no one is arguing that the purchase of business
insurance is an impulse purchase, we cannot conclude based
on this record that these decisions are always the result
of very careful study and analysis. Fourth, we are
concerned with the decision to purchase. The fact that
subsequent to the purchase the small business owner may
understand that the actual company is a different entity
than what the purchaser originally thought does not
eliminate the likelihood of confusion. Finally, we add
that even sophisticated purchasers are not immune to being
confused. In this case, purchasers, who were aware of the
insurance industry practices as demonstrated by the
examining attorney’s third-party registrations, are likely
to believe that the source of these related services was
the same or at least associated in some way. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Ser No. 78538469
10
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005)
1695 (“[E]ven more sophisticated purchasers might be aware
that champagne houses offer both types of products under
similar marks, and could easily conclude that VEUVE ROYALE
was Veuve Clicquot's sparkling wine”).
We now move on to consider the marks of applicant and
registrant. This “first DuPont factor requires examination
of ‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports, 73 USPQ2d at
1691 (quoting In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)). It is not
disputed that both marks contain the identical expression
“Big on Small Business.” Applicant refers to the slogan as
an “inherently weak slogan.” Reply Brief at 8. The
examining attorney describes the expression as a “play on
words.” Brief at 8. Applicant submits several excerpts
from publications and argues that the “common nature of the
phrase BIG ON SMALL BUSINESS in the cited mark precludes a
finding that the mark can function as a source-identifier.”
Brief at 10.8 However, these references are not used in a

8 We will assume that applicant here is not attacking the
validity of the entire registered mark. Applicant is, of course,
prohibited from doing so. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). But we will not
entertain applicant’s additional argument (Reply Brief at 10)
Ser No. 78538469
11
trademark manner and the uses do not appear to be “in the
relevant industry.” Examining attorney’s brief at 7.
Nissan Bets Big on Small
BusinessWeek, March 4, 2002

Postini’s E-Mail Security Big on Small Biz
www.internetnews.com

Betting Big on Small Jets
www.ocala.com

China big on small carmakers
www.boston.com

Riverside thinks big on small equity deals
http://smallbusiness.yahoo.com

Penn thinks big on small-scale research
www.upenn.edu

Betting Big on Small Companies
www.kiplinger.com

Whirlpool thinks big on small kitchen appliances
http://economictimes.indiatimes.com

GM Canada bets big on small cars in 2004
www.globeinveestor.com

IBM to bet big on small enterprises
www.tmcnet.com

BIG ON SMALL COMPONENTS
Wholesale distributorship services for items of metal
hardware
Registration No. 3022099

Furthermore, most of these uses are not even for
registrant’s entire expression “Big on Small Business.”

that the “cited mark is merely a secondary slogan mark that does
not function as a service mark in the absence of the close
proximity to a distinguishing mark.”
Ser No. 78538469
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Also, there is no requirement that a trademark be used only
in association with the trademark owner before it could be
a source identifier. Obviously, applicant’s GUARDIAN
marks, which themselves consist of a common word, would
conflict with such a test.9 We point out that none of the
articles (or the registration) appears to refer to
insurance-related services. SBS Products Inc. v. Sterling
Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6
(TTAB 1988) (“[E]ven if evidence of such third-party use
were submitted, it would be of no aid to respondent herein
where the third-party usage was for goods unrelated to
either petitioner's skin care products or respondent's
stuffing box sealant”). The fact that authors of news
articles have used a similar term as part of a story’s
title hardly establishes that the term “Big on Small
Business,” when used in association with registrant’s
services, has no source-identifying significance.
Inasmuch as the ending of the marks are identical and
not devoid of trademark significance, the next question
becomes whether the differences in the beginning of

9 Guardian is defined, inter alia, “a person who guards,
protects, or preserves.” The Random House Dictionary of the
English Language (unabridged) (2d ed. 1987). We take judicial
notice of this definition. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78538469
13
applicant’s and registrant’s marks result in the marks
being dissimilar. Applicant’s mark begins GUARDIAN IS,
while registrant’s mark begins WE’RE. Both applicant and
the examining attorney agree that applicant’s mark includes
its house mark “Guardian.” Applicant’s brief at 3;
Examining attorney’s brief at 5. Interestingly, applicant
argues that “Consumers cannot identify any source
of origin from the cited mark alone. The cited mark must
be used in connection with the cited registrant’s house
mark, as the ‘WE’RE’ portion of the cited mark fails to
identify a specific source or service.” Reply Brief at 10.
However, this type of mark meets the statutory definition
of a service mark: “The term ‘service mark’ means any
word… used by a person… to identify and distinguish the
services of one person, including a unique service, from
the services of others and to indicate the source of the
services, even if that source is unknown.” 15 U.S.C.
§ 1127 (emphasis added). There simply is no requirement
that a trademark or service mark contain a reference to a
specific source in order for it to function as a trademark.
There have been numerous cases that involve a
situation where a party adds a house mark to another
party’s registered mark. The addition of a house mark to a
another’s mark often does not avoid confusion. Menendez v.
Ser No. 78538469
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Holt, 128 U.S. 514, 521 (1888). Indeed, “such addition may
actually be an aggravation of the likelihood of confusion
as opposed to an aid in distinguishing the marks so as to
avoid source confusion.” In re Christian Dior, S.A., 225
USPQ 533, 534 (TTAB 1985) (LE CACHET DE DIOR confusingly
similar to CACHET). “However, there is no arbitrary rule
of law that if two product marks are confusingly similar,
likelihood of confusion is not removed by use of a company
or housemark in association with the product mark.” New
England Fish Company v. The Hervin Company, 511 F.2d 562,
184 USPQ 817, 819 (CCPA 1975)(BLUE MOUNTAIN KITTY O’s and
KITTY not similar).
One situation where the addition of a house mark does
avoid confusion is in cases where the common part of the
marks is weak. See Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005) (“In terms
of overall commercial impression, we find that although the
word ESSENTIALS is the entirety of the commercial
impression created by opposer's mark, in applicant's mark
it contributes relatively less to the mark's commercial
impression than does the house mark NORTON MCNAUGHTON… [W]e
find that the word ESSENTIALS is highly suggestive as
applied to the parties’ clothing items and as it appears in
both parties’ marks, especially in applicant's mark”). In
Ser No. 78538469
15
this case, we have not found that the common portion of the
marks is descriptive or even highly suggestive. While the
mark WE’RE BIG ON SMALL BUSINESS is not arbitrary and it
does suggest that the registrant is directing its services
toward small businesses, we cannot conclude that it is a
very weak mark. Therefore, the Knight Textile case, upon
which applicant relies, does not support applicant’s
argument that there is no likelihood of confusion here.
Another situation is where “there are some
recognizable differences between the assertedly conflicting
product marks, so that the addition to one of a trade name
or house mark or other such matter may be sufficient to
render the marks as a whole distinguishable and thus to
avoid confusion.” In re C. F. Hathaway Co., 190 USPQ 343,
344 (TTAB 1976). See also Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967)
(ROCKWOOD BAG-O-GOLD for candy not confusingly similar to
CUP-O-GOLD for candy). Here, the common part of the marks
is identical, “Big on Small Business,” so there is no
“recognizable difference” between the marks besides the
initial portion of both marks.
At this point, we add that even assuming that
applicant is the owner of famous mark, this fact does not
permit the famous mark owner to appropriate the marks of
Ser No. 78538469
16
others and avoid confusion by simply arguing that
prospective purchasers will believe its mark is not owned
by the registrant. C. F. Hathaway Co., 190 USPQ at 344
(Board rejected applicant’s argument that “registrant's
rights should not be extended to preclude applicant from
combining the words ‘golf’ and ‘classic’ with its famous
mark ‘HATHAWAY’”). See also Guardian Products Co., Inc. v.
Scott Paper Co., 200 USPQ 738, 740 (TTAB 1978):
Applicant has incorporated within its mark the entire
mark of opposer, namely, “GUARDIAN” and merely added
the name “SCOTT” which is nothing more than a house
mark of applicant. While such house mark cannot be
ignored in evaluating applicant's mark, we cannot lose
sight of the fact that marks generally identify an
anonymous source, and the resemblance between “SCOTT
GUARDIAN” and “GUARDIAN” is such that to those who
notice the term “SCOTT,” the association may carry
over to opposer's mark as well as that of applicant.
Thus, we conclude that applicant's mark “SCOTT
GUARDIAN” is confusingly similar to opposer's mark
“GUARDIAN.”

The cases that applicant cites simply demonstrate that many
factors can influence the question of whether there is a
likelihood of confusion. For example, in King of the
Mountain Sports Inc. v. Chrysler Corp., the goods and
services were not closely related. 185 F.3d 1084, 51
USPQ2d 1349, 1354 (10th Cir. 1999)10 (“However, in a case
involving pure sponsorship confusion, the parties may have

10 Applicant refers to the district court decision. 968 F. Supp.
568 (D. Colo. 1997).
Ser No. 78538469
17
little similarity in their products or manner of marketing.
Here, KOM's clothing is only marginally related to
defendant's ski event. This disconnection greatly reduces
the relevance of the similarity of products factor”). In
Genovese Drug Stores, Inc. v. TGC Stores, Inc., the marks
were found to have different meanings. 939 F. Supp. 340
(D.N.J. 1996) (“[T]he two names connote different meanings-
Genovese's emphasis is that it will take good care of its
customers; whereas, take good care teaches its customers
how to take good care of themselves”).
Applicant also points to a non-precedential board case
in which the board found that applicant’s “Guardian” marks
“enjoy[ed] considerable renown.” Guardian Life Insurance
Co. of America v. England, Opp. No. 91118054 (TTAB March
21, 2000).11 Whether a mark is famous is a question of
fact, and the Federal Circuit has indicated a reluctance to
take judicial notice of a mark’s fame. Packard Press Inc.
v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356
(Fed. Cir. 2000) (“We consequently decline to consider

11 Applicant cites other nonprecedential board decisions. In at
least one instance (Reply Brief at 4), it refers to the reasoning
in, inter alia, a nonprecedential case as “controlling.” We
remind applicant that nonprecedential cases by definition are not
precedential decisions and are not binding on the board or the
examining attorney. More generally, we add that the citation of
opinions that are designated as “NOT A PRECEDENT OF THE TTAB” is
a poor substitute for relying on the precedential decisions of
the courts and this board.
Ser No. 78538469
18
whether to take judicial notice of the fame of HP's
marks”).12 See also Hard Rock Cafe Licensing Corp. v.
Elsea, 48 USPQ2d 1400, 1408 (TTAB 1998) (Hard Rock Cafe
Licensing Corp. alleged that its marks were famous. “[W]e
cannot conclude from this record, as discussed infra, that
opposer's marks are famous. Nor do we have a stipulation
that the HARD ROCK CAFE marks are famous, as was present in
Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc.,
776 F. Supp. 1454, 21 USPQ2d 1368, 1370 (W.D. Wash. 1991).
Further, while applicant does not appear to dispute
opposer's allegations of fame, he has not admitted that
opposer's marks are famous and we will not take judicial
notice of fame”). The fact that a non-precedential board
decision found that applicant’s mark had “considerable
renown” does not relieve applicant of the obligation to
establish the fame of its mark in this proceeding.
We also note that this is not a traditional house mark
case in which one party takes another’s entire mark and
adds its house mark to that mark. Here, applicant has
changed the initial part of registrant’s mark by deleting

12 The Packard Press court noted that the Federal Circuit “on one
occasion in the past, [had] taken judicial notice of the fame of
a mark when considering a Board decision on appeal. See B.V.D.
Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 728 [6
USPQ2d 1719] (Fed. Cir. 1988).” In that case, the term B.V.D.
appeared as a dictionary entry. 6 USPQ2d at 1720.
Ser No. 78538469
19
the term “We’re” and substituting “Guardian is.” Applicant
acknowledges that the source of the services of the cited
registration is not identified and its mark does identify
"Guardian" as the source of its related services.
Consumers familiar with registrant’s mark are likely to
believe, when they encounter applicant’s mark that
substitutes “Guardian is” for “We’re,” that the previously
anonymous source has now chosen to identify itself.
Thus, for purposes herein, the “LUMBERJACK” marks of
the parties are identical. In such a situation, the
addition of applicant's house mark “HILL-BEHAN'S”
thereto is not deemed sufficient to distinguish the
marks as a whole and to avoid confusion in trade.
This is especially so when one considers that a
trademark or a service mark identifies an anonymous
source so that the average consumer in the marketplace
is, more often than not, unaware of the producer of
the goods sold under a mark and often doesn't care, so
long as the quality of the goods identified by the
mark remains the same. Thus, if those individuals
familiar with registrant's “LUMBERJACK” products were
to encounter “HILL-BEHAN'S LUMBER JACK” stores at
which lumber products are sold, there is nothing to
preclude them from assuming that “HILL-BEHAN” is the
source of the "LUMBERJACK" products and has
established retail outlets to market them. Whether it
be confusion of source or sponsorship, the likelihood
of such confusion is there and, as a consequence,
registrant's registered mark is a bar to the
registration sought by applicant.

In re Hill-Behan Lumber Co., 201 USPQ 246, 249-50 (TTAB
1978). See also In re Fiesta Palms LLC, 85 USPQ2d 1360,
1364 (TTAB 2007) (“When, as in this case, the common part
of the marks is identical, purchasers familiar with the
Ser No. 78538469
20
registrant’s mark are likely to assume that the house mark
simply identifies what had previously been an anonymous
source”).
In likelihood of confusion cases, we must not just
compare the individual elements, but we must look at the
similarities and dissimilarities of the marks in their
entireties. We conclude that the differences in the marks
in their entireties are not significant. Applicant points
out that the registrant’s mark identifies an anonymous
source and applicant’s mark identifies a specific source.
When consumers who are familiar with registrant’s mark
encounter applicant’s mark with the identical “Big on Small
Business” portion, they are likely to believe that these
closely related services come from a common source. Under
these circumstances, we find that the marks GUARDIAN IS BIG
ON SMALL BUSINESS and WE’RE BIG ON SMALL BUSINESS are
similar in sound, appearance, meaning, and commercial
impression. For example, applicant argues that its mark
conveys the meaning that it is “focused on providing
insurance and financial services targeted to small
business.” Brief at 7. It is not clear why the identical
language “Big on Small Business” would not convey the
identical meaning that an unidentified entity is also
“focused on providing insurance … services targeted to
Ser No. 78538469
21
small business.” The difference between the initial terms
is not likely to lead purchasers to believe that the
underlying services originate from different sources.
To the extent that we have any doubts, we resolve
them, as we must, in registrant’s favor. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988); In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.