Infinity Insurance Co.

Trademark Trial and Appeal Board

Jul 27, 1999

No. 74723232 (T.T.A.B. Jul. 27, 1999)

Paper No. 15
JQ

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB 7/27/99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Infinity Insurance Company
________

Serial No. 74/723,232
_______

Gunther J. Evanina and James A. Mitchell of Price,
Heneveld, Cooper, Dewitt & Litton for applicant.

Wanda Kay Price, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______

Before Quinn, Hohein and Bottorff, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Infinity Insurance
Company to register the mark R.S.V.P. for “automobile
insurance underwriting services sold through independent
insurance agents.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
Ser No. 74,723,232
2
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously
registered mark RSVP for “insurance underwriting services,
namely whole life policies and pre-paid funeral expense
services”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
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 & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Food, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Insofar as the marks are concerned, it hardly can be
disputed that R.S.V.P. and RSVP are essentially identical.
The presence of the periods in applicant’s mark does
virtually nothing to distinguish it from registrant’s mark.

1 Application Serial No. 74/723,232, filed August 31, 1995,
alleging dates of first use of April 15, 1993.
2 Registration No. 1,883,906, issued March 14, 1995, setting
forth a date of first use of March 20, 1989, and a date of first
use in interstate commerce of June 21, 1991.
Ser No. 74,723,232
3
This virtual identity in the marks is an important factor
in deciding the present case. Further, the marks would
appear to be arbitrary for insurance underwriting services,
and the record is devoid of evidence of any third-party
uses of the same or similar marks in the insurance field.
Accordingly, if the marks were used in connection with
related services, prospective consumers are likely to be
confused as to the source of the services.
Thus, we focus our attention, as applicant and the
Examining Attorney have done, on a comparison of
applicant’s “automobile insurance underwriting services
sold through independent insurance agents” and registrant’s
“insurance underwriting services, namely whole life
policies and pre-paid funeral expense services.”
In this connection, applicant contends that its
services and registrant’s services are different and are
sold through entirely different trade channels. To support
this contention, applicant submitted the declaration of
Roger H. Prestridge, applicant’s vice president and
treasurer. Mr. Prestridge asserts that he has extensive
knowledge of the insurance underwriting business, and that
he is familiar with the various types of insurance services
which are available, and the customs and practices of the
insurance business. Mr. Prestridge states that automobile
Ser No. 74,723,232
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insurance underwriting services must be sold by a
property/casualty agent; that life insurance agents are not
authorized to sell property and casualty insurance; that
life insurance agents cannot sell automobile insurance
underwriting services; that a certified life underwriter is
not authorized to sell property/casualty insurance; and
that pre-paid funeral expense insurance is typically not
sold by insurance agents, but is instead generally sold by
funeral homes. Thus, according to Mr. Prestridge,
purchasers of whole life policies and pre-paid funeral
expenses plans would not likely encounter applicant’s
services.
The Examining Attorney has countered with numerous
copies of third-party registrations which show that the
registrants have registered their marks for underwriting
both life insurance and property/casualty insurance. The
Examining Attorney also furnished excerpts from the yellow
pages telephone directory showing that the same insurance
company may offer a range of insurance products, including
life, automobile and other types of property and casualty
insurance.
At the outset, it should be noted that it is not
necessary that the services be identical or even
competitive in nature in order to support a finding of
Ser No. 74,723,232
5
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Moreover, the Board has stated that the degree of
similarity in the goods/services need not be as great where
the marks are essentially identical. Warnaco Inc. v.
Adventure Knits, Inc., 210 USPQ 307, 315 (TTAB 1981).
Notwithstanding the specific differences between the
services as pointed out in Mr. Prestridge’s declaration, we
find that automobile insurance underwriting services and
life insurance underwriting services are sufficiently
related that, when sold under essentially identical,
arbitrary marks to the same classes of purchasers,
confusion is likely to occur in the marketplace. While we
recognize that the kinds of insurance sold by applicant and
registrant may be sold by different types of agents, the
insurance services are rendered to the same purchasers.
Although the third-party registrations submitted by
the Examining Attorney are not evidence that the marks
Ser No. 74,723,232
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shown therein are in commercial use, or that the public is
familiar with them, nevertheless these third-party
registrations, which individually cover both life insurance
and property/casualty insurance underwriting services, and
which are based in commerce, may have some probative value
to the extent that they serve to suggest that the listed
services are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1786 (TTAB 1993).
In reaching our decision herein, we are mindful of a
prior Board decision wherein a likelihood of confusion was
found between OMNI BUSINESS PLAN for property and casualty
insurance underwriting services and OMNI LIFE for life
insurance underwriting services. The Board, in In re
Integrity Mutual Insurance Company, Inc., 216 USPQ 895,
896-97 (TTAB 1982), stated the following:
We believe it is highly likely that a
potential customer, sophisticated or
otherwise, who was familiar with a life
insurance underwriting firm would,
faced with a similar or the same
identifying mark for casualty or
property insurance, assume that the
same underwriter might be involved.
This is especially true in a national
context where some of the nation’s
leading insurance enterprises do, in
fact, underwrite not only life
insurance but also casualty and
property insurance under the same or
highly similar marks and trade names;
Ser No. 74,723,232
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and the fact that the parties in a
particular case may not be engaged in
direct competition because one is
operating a general casualty line
insurance and the other a life
insurance company is, although
relevant, not a controlling factor as
to likelihood of confusion. [citations
omitted]

The Board concludes, then, that these
insurance services, even allowing for
significant differences in the nature,
pricing, and placement of life
insurance as opposed to property and
casualty insurance policies, are
sufficiently similar that the
contemporaneous use of similar marks by
the respective parties would create a
likelihood of confusion.

As to applicant’s attorney’s claim that there has been
no actual confusion despite over five years of
contemporaneous use of the marks, suffice it to say that
this factor is of little moment since applicant has not
provided any evidence as to the extent of use of its mark
or registrant’s mark such that we could determine that
there has been a meaningful opportunity for confusion to
occur in the marketplace. In any event, the issue before
us is not of actual confusion, but only the likelihood of
confusion. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992).
To the extent that any of the points raised by
applicant may cast doubt on our ultimate conclusion on the
Ser No. 74,723,232
8
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); and In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
We conclude therefore that consumers, even
sophisticated ones, familiar with registrant’s whole life
policies and pre-paid funeral expense insurance
underwriting services rendered under the mark RSVP would be
likely to believe, upon encountering applicant’s mark
R.S.V.P. for automobile insurance underwriting services
sold through independent insurance agents, that the
services originated with or were somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.

T. J. Quinn

G. D. Hohein

C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74,723,232
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