Hartford Fire Insurance Co.

Trademark Trial and Appeal Board

Jul 9, 2002

No. 76207423 (T.T.A.B. Jul. 9, 2002)

Mailed: July 9, 2002
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hartford Fire Insurance Company
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Serial No. 76/207,423
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John R. Garber of Cooper & Dunham, L.L.P. for applicant.
Anthony J. Tambourino, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Hartford Fire Insurance Company has filed an
application to register the mark @VENTURE for “risk
management information services.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, in
1 Application Serial No. 76/207,423, filed February 9, 200l, and
asserting first use and first use in commerce as of November 15,
1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/207,423
2
view of the prior registration of the mark reproduced
below,
for “forming strategic alliances and joint ventures,
providing technical assistance and making acquisitions and
investments in order to develop and promote the
commercialization of electronic content, products and
services via a global computer network and other electronic
media.”2
When the Examining Attorney made the refusal final,
applicant appealed. Both applicant and the Examining
Attorney filed briefs, but an oral hearing was not
requested. We reverse the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E.I. du Pont de Nemours and Co.,
2 Registration No. 2,118,677 issued December 9, 1997.
Ser No. 76/207,423
3
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key factors are the similarities
between the marks and the similarities between the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The marks are substantially identical in appearance;
the only difference being that applicant’s mark is singular
and the cited mark is plural. The marks would also be
pronounced essentially the same. Further, applicant has
not presented evidence or argument that the marks would
have different connotations because of differences in the
services. In sum, the commercial impressions created by
the marks are substantially identical.
The substantial identity of the marks makes it likely
that, if the marks were used in connection with related
services, confusion would result. In this regard, the
board has stated that “[i]f the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a holding of likelihood of confusion.” In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
The Examining Attorney argues that the involved
services are related because applicant may be providing
Ser No. 76/207,423
4
information with respect to risk management in the same
financial fields where registrant operates. According to
the Examining Attorney:
The registrant’s services include “forming
strategic alliances and joint ventures.”
Joint ventures are business undertakings
in which profits as well as losses are
shared. (footnote omitted) If the
registrant assists its customers in forming
strategic alliances and joint ventures then
it must be able to identify potential areas
of loss, measure what those losses may be
and control the possibility of those losses
occurring. This is the crux of what is
provided in risk management information.
Therefore, there is a likelihood of
confusion because consumers may go to
the applicant, who provides general risk
management information, when they want
specific assistance handling the risks
associated with the areas in which the
registrant operates.
(Brief, p. 5).
In support of the refusal, the Examining Attorney submitted
with his appeal brief the following dictionary entries:3
risk management: Programme of identifying,
measuring and controlling risk. It includes
measures adopted to minimize financial risk
(e.g., through insurance, hedging or spreading
the risk). International Dictionary of Insurance
and Finance.
risk management: Procedure to minimize the
adverse effect of possible financial loss by
(1) Identifying potential sources of loss;
3 While evidence submitted for the first time with an appeal
brief is untimely and generally not considered by the Board, the
Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
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(2) Measuring the financial consequences of a
loss occurring; and (3) Uusing controls to
minimize actual losses or their financial
consequences. Dictionary of Insurance Terms.
joint venture: A business undertaking in which
more than one company shares ownership, control
of production, and/or marketing, profits, and
losses. Dictionary of International Business
Terms.
Essentially conceding the substantial identity of the
marks, applicant has focused its arguments on the
differences in the services and the asserted differences in
their channels of trade and classes of purchasers.
Applicant points out that it is an insurance company and
that its services are offered to insureds and potential
insureds to evaluate potential risks as they relate to
insurance and insurance rates. According to applicant,
“[t]he services covered by the cited [registration] in no
way, shape or form relate to risk management services,” but
rather relate to “the commercialization of electronic
content, products and services.” (Brief, p. 3). Applicant
acknowledges that every commercial venture in some way
involves risk, e.g., the venture may fail, but maintains
that this is not the type of risk classified as risk
management.
After careful consideration of the arguments of
applicant and the Examining Attorney and the limited record
Ser No. 76/207,423
6
before us, we are not persuaded that the services involved
herein are related. It is not enough, as the Examining
Attorney contends, that applicant and registrant may
operate in the same financial fields. There is simply no
evidence that services of the type offered by applicant and
registrant emanate from the same companies, travel in the
same channels of trade, or are intended for the same
purchasers. Moreover, this is not a case where it is
obvious from a reading of the respective recitations of
services that such services are related. Both applicant’s
services and the services in the cited registration are
specialized in nature and, we are unable to conclude, in
the absence of any supporting evidence, that the services
are related.
Under the circumstances, and notwithstanding the
substantial identity of the marks, we find that the
Examining Attorney has not established that the services
are so related that confusion is likely to result from the
contemporaneous use of the marks on the involved services.
We add, however, that while we have found no likelihood of
confusion based on this ex parte record, in an inter partes
proceeding with a different record, the result may be
different.
Ser No. 76/207,423
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Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.