Lincoln National Life Insurance Companyv.LifeVentures Corp.

Trademark Trial and Appeal Board

Mar 14, 2011

No. 91179205 (T.T.A.B. Mar. 14, 2011)

Hearing: Mailed:
November 18, 2010 March 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lincoln National Life Insurance Company
v.
LifeVentures Corp.
_____

Opposition No. 91179205
to Application Serial No. 78974288
filed September 14, 2006
_____

Jonathan P. Froemel of Barnes & Thornburg LLP for Lincoln
National Life Insurance Company.

Erik M. Pelton for Erik M. Pelton & Associates, PLLC for
LifeVentures Corp.
_____

Before Walters, Grendel and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Lincoln National Life Insurance Company (“opposer”),
has opposed the application filed by LifeVentures Corp.
(“applicant”) to register the mark LIFE FOR THE LIVING, in
standard character form, for services ultimately identified
as “insurance agency services in the field of life
insurance,” in Class 36. As the ground for opposition,
opposer has alleged likelihood of confusion under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
Specifically, opposer has alleged that it is the owner of a
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91179205
2
registration for the mark LIFE INSURANCE FOR LIVING for
“universal life insurance underwriting that prepays the
death benefit for long-term care,” in Class 36 and that the
registration of applicant’s mark so resembles opposer’s mark
as to be likely to cause confusion.1
In its answer, applicant denied the salient allegations
in the notice of opposition. In an amended answer,
applicant filed a counterclaim to cancel opposer’s pleaded
registration on the ground of abandonment and on the ground
that opposer’s mark is generic. In its reply to the
counterclaim, opposer denied the salient allegations of the
counterclaim.
Preliminary Issues
A. The Improper Designation of Confidential Information
The Board’s standard protective order is applicable in
this proceeding. Consistent with Fed.R.Civ.P. 26(c)(1), the
Board’s standard protective order protects confidential,
trade secret, and commercially sensitive information by
allowing a party to limit the access to trade secret or
other confidential information or by permitting the
information to be revealed only in a designated way. The
Advisory Committee Notes to the 1970 Amendment to
Fed.R.Civ.P. 26(c) explains that the Rule does not provide
complete immunity against disclosure; rather, in each case,

1 Registration No. 2345497, issued April 25, 2000; renewed.
Opposition No. 91179205
3
the need for privacy must be weighed against the need for
disclosure.
During the trial, the parties designated as
confidential the entire discovery and testimony depositions
of Stephen Sharrock, applicant’s President, and the
testimony deposition of Jodi Dodson, opposer’s Marketing
Director for life insurance, MoneyGuard, and group
protection products. Very little of the testimony and
evidence falls within the penumbra of confidential or
commercially sensitive information. For example, in both of
his depositions, Mr. Sharrock testified about the services
set forth in the application. While some of the specifics
regarding applicant’s services may be commercially sensitive
because the services are under development, all discussion
regarding the scope of applicant’s services cannot be
confidential or commercially sensitive because they are
listed in its application and are publicly available. In
this regard, Section 7(c) of the Trademark Act, 15 U.S.C.
§1057(c), provides that filing an application for
registration on the Principal Register, including an intent-
to-use application, establishes constructive use and
nationwide priority, contingent on issuance of the
registration. The identification of goods and/or services
in an application defines the scope of those rights
established by the filing of an application for registration
Opposition No. 91179205
4
on the Principal Register. The scope of applicant’s
services cannot be confidential or commercially sensitive
because the purpose of the application is to put the public
on notice as to the extent of applicant’s rights.
Because of the over designation of testimony and
evidence by the parties, it is not clear to us what is
intended to be truly “Confidential,” “Highly Confidential”
or “Trade Secret/Commercially Sensitive.” Therefore, in
rendering our decision, we will not be bound by the parties’
designation. Board proceedings are designed to be publicly
available and the improper designation of materials as
confidential thwarts that intention. It is more difficult
to make findings of fact, apply the facts to the law, and
write decisions that make sense when the facts may not be
discussed. The Board needs to be able to discuss the
evidence of record, unless there is an overriding need for
confidentiality, so that the parties and a reviewing court
will know the basis of the Board’s decisions. Therefore, In
view of the parties’ improperly broad designations of
confidentiality, in this opinion, we will treat only
testimony and evidence that we find to be truly confidential
and commercially sensitive as confidential. See Edwards
Lifesciences Corp. v. VigiLanz Corp., 95 USPQ2d 1399, 1402-
1403 (TTAB 2010).

Opposition No. 91179205
5
B. Opposer’s Objection to Applicant’s Notice of Reliance.
Opposer objects to Exhibits 2-6 of Applicant’s notice
of reliance on the ground that the documents were not
produced during discovery. Initially, we note that
opposer’s objection is not substantively significant.
First, none of the documents which are the subject of the
objection are case dispositive; that is, the admissibility
or inadmissibility of any of these documents does not affect
the outcome of the case. Second, some of the documents, as
discussed in the analysis of the claims, favor opposer’s
position. Finally, most of the documents are irrelevant.
Nevertheless, to clarify the record, we must discuss
the specific objections.
1. Exhibit 2 – Third-party registrations.
During discovery, opposer requested that applicant
produce “[a]ll documents referring or relating to
Applicant’s awareness of the use or registration or
attempted registration by any third party, including
Opposer, of the Mark.”2 Applicant asserted boilerplate
objections and answered that it had none.3 Opposer’s
objection is overruled. With the exception of the search
report conducted for applicant by LegalZoom.com, there is no
basis for assuming that applicant had any knowledge of

2 Opposer’s Document Request No. 27.
3 Applicant’s Response to Opposer’s Document Request No. 27.
Opposition No. 91179205
6
third-party registrations until its counsel copied the
registrations for the notice of reliance. Thus, applicant
did not have custody of those documents prior to trial.
Although applicant had the search report conducted by
LegalZoom.com during discovery, it is not clear why
applicant did not produce it. Nevertheless, the search
report has no bearing on our decision in this case.
2. Exhibit 3 – Opposer’s Client Product Guide, Client
Overview brochure, and Advisor Guide brochure.

Opposer asserts that applicant should have produced the
above-identified documents in response to the above-noted
Document Request No. 27. Applicant contends that because
they are opposer’s documents, opposer is not prejudiced and,
that in any event, opposer failed to produce them in
response to applicant’s written discovery. Opposer’s
objection to applicant’s introduction of Opposer’s Client
Product Guide is overruled. Through its notice of reliance,
applicant is seeking to introduce an original of the 2007
Product Guide. Opposer introduced a copy of the 2008
Product Guide through the testimony deposition of Jodi
Dodson.4 The two documents are substantially the same and
the 2007 Product Guide introduced by applicant more
accurately displays the mark at issue.

4 Dodson Dep., Exhibit 26.
Opposition No. 91179205
7
With respect to the Client Overview and Advisor Guide
brochures, neither document displays “the Mark” at issue so
they are not responsive to opposer’s Document Request No.
27. Accordingly, opposer’s objection is overruled.5
3. Exhibit 4 – Dictionary Definitions.
Opposer did not explain the basis of this objection, so
it is overruled. In any event, the Board may take judicial
notice of dictionary definitions and other reference books.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983) (dictionary definitions); In re
Broyhill Furniture Industries Inc., 60 USPQ2d 1511 1514 n.4
(TTAB 2001) (dictionary definitions and standard reference
works).
4. Exhibit 5 – “Insurance industry publications and
materials.”

Exhibit 5 in applicant’s notice of reliance consists of
the documents listed below. Applicant authenticated the
documents through a declaration by a law clerk employed by
applicant’s counsel. Trademark Rule 2.123(b) provides that
“[b]y written agreement of the parties, the testimony of any
witness or witnesses of any party, may be submitted in the
form of an affidavit by such witness or witnesses.” Because

5 Despite overruling opposer’s objection, applicant’s argument
that it should be forgiven for failing to produce the documents
during discovery because opposer failed to produce the documents
during discovery is meritless and frivolous.
Opposition No. 91179205
8
there is no stipulation as to the admissibility of the
declaration authenticating applicant’s documents, the
declaration is given no consideration. Therefore, as
discussed below, the admissibility of each document depends
on what it shows on its face.
a. A glossary of terms from the Life and Health
Insurance Foundation for Education. The source of this
document does not appear on the document. See Safer Inc. v.
OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (a
document obtained from the Internet that identifies its date
of publication or date that it was accessed and its source
(e.g., the URL) may admitted into evidence pursuant to
Trademark Rule 2.122(e)). Opposer’s objection is sustained
and the document is stricken.
b. Life Insurance and Annuities, a booklet by the
California Department of Insurance, Virginia Life Insurance
Consumer’s Guide, a booklet prepared by the Commonwealth of
Virginia State Corporation Commission Bureau of Insurance,
explaining life insurance policies and annuities to
consumers, and Own Your Future, a booklet prepared by the
U.S. Department of Health & Human Services, regarding long
term care. These documents appear to be official
publications from their respective states and the federal
government and, therefore, admissible pursuant to Trademark
Opposition No. 91179205
9
Rule 2.122(e) providing for the introduction of official
records through a notice of reliance.
c. What You Should Know About Buying Life Insurance,
a booklet published by the American Council of Life
Insurers. The document displays a URL (acli.com) and its
date (a 2008 copyright notice). Accordingly, it is
admissible pursuant to Safer.
d. Webpages from (i) the New York State Insurance
Department, “Top Ten Questions,” (ii) the Independent
Insurance Agents & Brokers of America, “How Financially
Secure Are Your Insurance Providers,” (iii) U.S. Department
of Health and Human Resources, “Paying for LTC,” (iv) a
glossary of terms from the longtermcare.gov website, and (v)
a glossary of terms from opposer’s website all of which
displayed URLs and dates and, therefore, are admissible
pursuant to Safer.
5. Exhibit 6 - Internet third party use of the
terms at issue.

Applicant attempted to authenticate these documents
through the declaration of a law clerk working for
applicant’s counsel. As indicated above, there was no
stipulation authorizing the testimony of the witness by
declaration. Accordingly, the Internet documents are
admissible only if they meet the requirements set forth in
Safer discussed above. In this regard, the following
documents did not meet the Safer requirements: the United of
Opposition No. 91179205
10
Omaha Insurance Company brochure, the document from the
Professional Planning Associates, Inc., the Mutual of Omaha
document, and the “Reference Publications” document.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings, the application file for
applicant’s mark and the registration file for opposer’s
mark. The record also includes the following testimony and
evidence:
A. Opposer’s Evidence.

1. Testimony deposition of Jodi Dodson, opposer’s
Marketing Director for life insurance, MoneyGuard, and group
protection products, with attached exhibits; and
2. A notice of reliance with the following items:
a. Discovery deposition transcript of Stephen
Sharrock, applicant’s President, with
attached exhibits;
b. Applicant’s response to opposer’s written
discovery;6
c. Copies of opposer’s pleaded registration
showing the current status and ownership

6 There is no provision in the Trademark Rules of Practice for
introducing applicant’s response to opposer’s document requests
through a notice of reliance. Accordingly, we considered
applicant’s responses to opposer’s document requests only to
resolve opposer’s objections to applicant’s notice of reliance.
Opposition No. 91179205
11
printed from the U.S. Patent and Trademark
Office’s TESS and TARR automated databases;
d. Copies of various third party applications
and file histories printed from the
electronic database of the U.S. Patent and
Trademark Office to demonstrate opposer’s
efforts to enforce its mark;
e. Copies of various oppositions printed from
the electronic database of the U.S. Patent
and Trademark Office to demonstrate opposer’s
efforts to enforce its mark; and
f. A copy of opposer’s application Serial No.
77612703 for the mark LIFE INSURANCE FOR
LIVING for “life insurance underwriting” and
portions of its file history.
B. Applicant’s Evidence.
1. Testimony deposition of Stephen Sharrock, with
attached exhibits.
2. A notice of reliance on the following items:
a. Documents produced by opposer during
discovery and authenticated in responses to
applicant’s requests for admission;
b. Third-party registrations;
c. Opposer’s Client Product Guide, Client
Opposition No. 91179205
12
Overview brochure, and Advisor Guide brochure
discussed above;
d. Dictionary definitions;
e. “Insurance industry publications and
materials” and government publications

discussed above;

f. Internet evidence discussed above;

g. Opposer’s responses to applicant’s discovery

requests.7

Applicant’s Counterclaims

We first address applicant’s counterclaims to cancel
opposer’s pleaded Registration No. 2345497.
Standing.
Applicant has standing based on its position as
defendant in the opposition initiated by opposer. Ohio
State University v. Ohio University, 51 USPQ2d 1289, 1293
(TTAB 1999) (“[A]pplicant's standing to assert the
counterclaim arises from applicant's position as a defendant
in the opposition and cancellation initiated by opposer”).
Whether Opposer’s Mark Is Generic.
There is a two-part test used to determine whether a
designation is generic: (1) what is the genus of services

7 As indicated in footnote No. 6, there is no provision in the
Trademark Rules of Practice for the introduction of opposer’s
responses to applicant’s requests for production of documents
through a notice of reliance. Accordingly, we did not consider
those documents.
Opposition No. 91179205
13
at issue? and (2) does the relevant public understand the
designation primarily to refer to that genus of services?
H. Marvin Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc.,
782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The
public’s perception is the primary consideration in
determining whether a term is generic. Loglan Inst. Inc. v.
Logical Language Group Inc., 902 F.2d 1038, 22 USPQ2d 1531,
1533 (Fed. Cir. 1992). 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. Loglan Inst.
22 USPQ2d at 1533; Dan Robbins & Associates, Inc. v. Questor
Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
Where, as here, the mark is in the nature of a phrase,
applicant must provide evidence of the meaning of the
composite mark as a whole. In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir.
1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for
association services in the field of reproductive medicine
because where the mark is a phrase evidence that each
separate term is generic is not sufficient). See also In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1810 (Fed. Cir. 2001) (1-888-M-A-T-R-E-S-S not generic
for telephone shop-at-home retail services in the field of
mattresses because it “bears closer conceptual resemblance
Opposition No. 91179205
14
to a phrase than a compound word” and there is no evidence
of record that the mark as a whole is generic); and In re
Active Ankle Systems Inc., 83 USPQ2d 1532 (TTAB 2007)
(DORSAL NIGHT SPLINT found generic for orthopedic splints
for the foot and ankle based on record that included third-
party use of the entire phrase).
A. The genus of services at issue.
The category of services involved here is underwriting
life insurance; specifically underwriting life insurance
with an accelerated benefits option. See the description of
services in opposer’s pleaded registration (“universal life
insurance underwriting that prepays the death benefit for
long-term care); Dodson Dep., p. 6 (“MoneyGuard is a
universal life insurance product with an accelerated
benefits rider which provides for long-term care needs”), p.
12 (“it provides funds for long-term care in the context of
a life insurance policy”); Dodson Exhibit 5, p. 4 (“If you
should ever need long-term care benefits … your portion of
the death benefit is accelerated to pay for covered long-
term care services”). Applicant agrees that the category of
services is “life insurance with living benefits.”8 In
fact, the original description of services in applicant’s
application was “life insurance products that provide death
benefits but also significant living benefits.” “Living

8 Applicant’s Brief, p. 32.
Opposition No. 91179205
15
benefits” are “benefits provided to and obtained by those
insured, while still alive. They include the ANNUITY, CASH
SURRENDER VALUE, DISABILITY INCOME (DI), POLICY LOAN, and
WAIVER OF PREMIUM (WP).”9 (Emphasis in the original).
B. The relevant public.
The second part of the generic test is whether the
relevant public understands the designation primarily to
refer to that class of goods. The relevant public for a
genericness determination is the purchasing public for the
services at issue. Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). According to
opposer’s witness Jodi Dodson, the relevant consumers are
between the ages of 50 and 80 with $500,000 or more in
assets. “We would consider them mass affluent, kind of
middle income, or we also market to the high net worth and
high (sic) affluent.”10 Opposer’s 2007 MoneyGuard Reserve
Advisor Guide brochure describes prospective clients as
“astute adults, ages 55-75,” “financially secure,” “have at
least $300,000 in assets,” and “are concerned about the
impact long-term care could have on their retirement income
security.”11 Similarly, applicant identifies the ultimate

9 Dictionary of Insurance Terms, p. 289 (4th ed. 2000). See also
Insurance Words & Their Meanings, p. 111 (21st ed. 2006) (“benefit
options where the cash value or proceeds of life policies are
paid to a terminally ill insured to provide funds for the
financial burden of the illness”).
10 Dodson Dep., p. 53.
11 Applicant’s Notice of Reliance, Exhibit 3.
Opposition No. 91179205
16
consumers for its life insurance services that provide
living benefits as people who are concerned about out-living
assets, preserving retirement assets and not becoming a
burden on their families.12 In its brief, applicant
contends that the relevant public is “general consumer(s)
with life insurance needs and long-term care needs.”13
Based on the testimony and evidence discussed above, we
find that the relevant consumers are consumers with life
insurance needs and long-term care needs who are between the
ages of 55-80, financially secure, with at least $300,000 in
assets and who want to preserve their retirement income and
assets in the event that they need long-term care.
C. Public Perception.
1. Dictionary and glossary definitions.
“Life insurance” is defined as “insurance providing
payment of a stipulated sum to a designated beneficiary upon
the death of the insured.”14
“Living” is defined as “the condition of being alive,”
“having life” and “involving living persons.”15
While there is no definition for “Life Insurance For
Living,” applicant argues that “[o]pposer’s mark is

12 Sharrock Discovery Dep., Exhibits 10 and 11; Sharrock Testimony
Dep., Exhibit 4.
13 Applicant’s Brief, p. 32.
14 Merriam-Webster Online Dictionary (2009) applicant’s notice of
reliance Exhibit 4.
15 Id.
Opposition No. 91179205
17
essentially ‘Life Insurance for Living Benefits’ with the
word ‘benefits’ left off the end.”16 As indicated above,
“living benefits” are “benefits provided to and obtained by
those insured, while still alive.”
2. Opposer’s use of LIFE INSURANCE FOR LIVING.
As shown by the Dodson testimony deposition exhibits,
opposer uses LIFE INSURANCE FOR LIVING as a stand alone mark
to identify its underwriting services or as an advertising
tagline in connection with the MoneyGuard mark to identify
those services. Below is representative sample of opposer’s
use of the mark as an advertising tagline.17

In advertising brochures, LIFE INSURANCE FOR LIVING is
used as a stand alone mark to identify opposer’s MoneyGuard
combined life insurance and long term care insurance
policy.18 The excerpt shown below is representative of how
opposer has displayed its mark.19

16 Applicant’s Brief, p. 32.
17 Dodson Dep., Exhibit 4. The samples of stand alone use will
not reproduce well enough to be helpful in this decision.
18 Dodson Dep., Exhibits 5-9 and 11-20.
19 Dodson Dep., Exhibit 9.
Opposition No. 91179205
18
In opposer’s 2007 and 2008 Client Program Guide,
opposer uses “Life insurance for living®” in its table of
contents and as a chapter heading.20 The use of the mark as
a chapter heading in the 2008 Client Program Guide is shown
below.21

Opposer does not use LIFE INSURANCE FOR LIVING
descriptively in any of the materials made of record.

20 Dodson Dep., Exhibit 26; applicant’s notice of reliance Exhibit
No. 3.
21 In the 2007 Client Program Guide the mark is not displayed in
italics. The mark is the color green while the remainder of the
text is black.
Opposition No. 91179205
19
3. Applicant’s use of the term LIFE INSURANCE FOR
LIVING.

Applicant does not use the term LIFE INSURANCE FOR
LIVING; it uses LIFE FOR THE LIVING as a service mark in
materials prepared in preparation for rendering its
services. Moreover, applicant does not use the term LIFE
INSURANCE FOR LIVING to refer to its life insurance with
living benefits concept.
4. Third-party registrations.

Applicant introduced into evidence 180 third-party
registrations as evidence of the strength and meaning of
opposer’s mark.22 More than 20 of the registrations include
the word “Living” and more than 120 of the registrations
include the term “Life Insurance.”23 None of the
registrations include both the word “Living” and the term
“Life Insurance.” None of the registrations include the
word “Living” or the term “Living Benefits” in their
description of services.
FBBC, LLC owns two registrations on the Principal
Register for the term “Living Benefit” for the following
services:
1. Registration No. 2907500, issued December 7, 2004

Financial and investment services, namely,
originating, underwriting, acquiring, managing,
administering and brokering previously owned life
insurance policies; and

22 Applicant’s First Notice of Reliance, p. 2 and Exhibit 2.
23 Applicant’s Brief, p. 44.
Opposition No. 91179205
20

2. Registration No. 2716888, issued May 20, 2003

Financial services, namely managing life insurance
policies purchased from the terminally ill.

Also, three registrations used the term “viatical
settlements and life insurance settlement services.”
“Viatical settlements” are “[w]hen all of the proceeds from
a life insurance policy are provided or paid out to an
insured who is terminally ill.”24
5. The use of the term LIFE INSURANCE FOR LIVING by
third parties.

As discussed above, much of applicant’s third-party
evidence submitted as part of Exhibit 6 of its notice of
reliance was inadmissible. In addition, much of it was not
relevant because it did not relate to insurance services
(e.g., an unidentified webpage identifying LIFE FOR THE
LIVING as the title for an unidentified work). We discuss
below the relevant and admissible third-party use of the
term LIFE INSURANCE FOR LIVING.
a. An article from Time magazine (October 18, 1963)
(time.com) regarding selling life insurance in India.
According to the article, selling life insurance in India
presents a unique challenge because many Indians believe

24 Insurance Words & Their Meanings, p. 185. See also Federal
Employees’ Group Life Insurance Program Handbook, U.S. Office of
Personnel Management attached to applicant’s notice of reliance
Exhibit No. 4, defining “viatical settlement” as private sector
payments of “living benefits.”
Opposition No. 91179205
21
that life insurance “defies and tempts the gods,” “land
seems the only smart investment, and attempts to sell them
life insurance are repulsed as schemes to snatch their
money.” Accordingly, “[A]gents are trained to sell ‘life
insurance for living’ with policies that pay for retirement
or for the marriage of a daughter as well as death
benefits.”
b. A webpage from ProducersWeb.com prompting the
column from “Life Insurance for Living” purportedly in the
field of life insurance strategies. The actual column was
not introduced into evidence.
c. A webpage from ExPatFinder.com, a website for
persons living abroad, displaying a section entitled “Life
Insurance for Living.” The section is a link to “free and
easy quotes to find the best life insurance plan with the
best premium according to your specific situation and
needs.”
d. An excerpt from the Aetna insurance website
(aetna.com) prompting the company’s Aetna Life Essentials
program. The relevant section states that “There is an old
saying that life insurance isn’t for the dead – it’s for the
living – so why shouldn’t you be able to take advantage of
resource and services available through your coverage while
you’re living?”

Opposition No. 91179205
22
D. Discussion
There is simply no evidence demonstrating that the term
LIFE INSURANCE FOR LIVING is perceived as a generic term for
life insurance underwriting services. Based on the evidence
before us, we find that the term LIFE INSURANCE FOR LIVING
is suggestive when used in connection with “universal life
insurance underwriting that prepays the death benefit for
long-term care” because the mark is incongruous and,
therefore, it takes a multiple-step reasoning process to
make the connection between the services and the mark. The
mark LIFE INSURANCE FOR LIVING is incongruous because life
insurance is not for living; it provides a death benefit for
the insured’s survivors. As demonstrated by opposer’s use
of the mark, applicant’s use of its mark, and the third-
party use of the mark, or similar terms, LIFE INSURANCE FOR
LIVING suggests that a life insurance policy may do more
than just pay a death benefit; it may have benefits during
the owner’s life, hence, LIFE INSURANCE FOR LIVING.
Simply put, applicant has failed to meet its burden of
proving that relevant consumers perceive the term LIFE
INSURANCE FOR LIVING to be a generic term. Accordingly, the
counterclaim to cancel opposer’s pleaded registration on the
ground that the mark is generic is dismissed with prejudice.

Opposition No. 91179205
23
Whether Opposer Has Abandoned Its Mark?
Under Section 45 of the Trademark Act of 1946, 15
U.S.C. 1127, a mark shall be deemed abandoned inter alia:
(a) When its use has been discontinued
with intent not to resume such use.
Intent not to resume may be inferred
from circumstances. Nonuse for 3
consecutive years shall be prima facie
abandonment. “Use” of a mark means the
bona fide use of such mark made in the
ordinary course of trade, and not made
merely to reserve a right in the mark.

Under the Act, prima facie abandonment is established by
proof of its nonuse for three consecutive years. To
overcome that prima facie case, the respondent (opposer in
this case) must come forth with evidence that it did not
“discontinue” use of the mark, or if such use had been
discontinued, the nonuse of the mark was without “an intent
not to resume” use. Imperial Tobacco Ltd. v. Philip Morris
Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990).
Applicant contends that opposer has abandoned its use
of the mark LIFE INSURANCE FOR LIVING for the following
reasons:
Opposer’s use of “Life Insurance for
Living” as the title of one section in
only one brochure among many marketing
materials encountered by purchasers does
not amount to a bona fide use of
Opposer’s mark in the ordinary course of
trade. Rather, Opposer’s actions amount
to only token or sham use, sufficient to
satisfy the limited requirements of
trademark maintenance and renewal, but
insufficient to reasonably create in
Opposition No. 91179205
24
consumers any source identifying
function.25

* * *

Here, Opposer has discontinued bona fide
use of the LIFE INSURANCE FOR LIVING
mark in the ordinary course of trade as
required by the Lanham Act.
Furthermore, the evidence shows that
Opposer’s lack of bona fide use has
continued for at least three consecutive
years. However, even if the Board finds
that Opposer discontinued bona fide use
less than three years, Opposer’s acts
and omissions demonstrate its intent not
to resume a bona fide use in the
foreseeable future.26

Applicant focuses its argument on opposer’s use of the
mark as a chapter heading in the 2008 Client Program Guide
shown below,27 as the most current use of the mark, arguing
that the use of the mark is so limited that it does not
function as a trademark and that its limited use is not
consistent with the ordinary course of trade.28

25 Applicant’s Brief, p. 20.
26 Applicant’s Brief, p. 22.
27 Dodson Dep., Exhibit 26.
28 Applicant’s Brief, p. 22.
Opposition No. 91179205
25

Even though LIFE INSURANCE FOR LIVING is a chapter
heading in opposer’s Client Program Guide, we find that it
would be perceived as a service mark because it is used to
introduce opposer’s MoneyGuard combination life insurance
and long-term care policy; that is, it serves the purpose of
a service mark to identify and distinguish opposer’s
underwriting services. Furthermore, the mark is highlighted
by being displayed at the top of the page, in a larger font
and in italics.
Applicant argues that opposer’s limited use of its mark
in the Client Program Guide since 2008 is not consistent
good faith use of the mark in the ordinary course of
business and that such use is intended only for the purpose
Opposition No. 91179205
26
of maintaining the registration.29 Applicant bases this
claim on opposer’s extensive advertising for its MoneyGuard
policy without LIFE INSURANCE FOR LIVING.
Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines “use in commerce” as the “bona fide use of a mark in
the ordinary course of trade, and not merely to reserve a
right in a mark.”
A key factor is that the sale or sales
made cannot be “token” in the sense that
they are artificially made solely to
reserve a right in a mark and not made
as part of a usual product or service
launch. Thus, even sales made in a test
marketing program will probably suffice
as a bona fide use of the mark in the
ordinary course of trade because test
market sales are a common harbinger of a
proposed new product launch.

McCarthy On Trademarks And Unfair Competition §19:109
(4th ed. 2010).
Use in commerce should be interpreted with flexibility
to account for different industry practices.
The legislative history of the Trademark
Law Revision Act reveals that the
purpose of the amendment was to
eliminate “token use” as a basis for
registration, and that the new, stricter
standard contemplates instead commercial
use of the type common to the particular
industry in question.

Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774
(TTAB 1994), aff’d, White v. Paramount Pictures Corp.,
108 F.3d 1392 (Fed. Cir. 1997) (non-precedential).

29 Applicant’s Brief, pp. 23-26.
Opposition No. 91179205
27
As presented by applicant, the issue we must decide is
whether opposer’s use of the mark LIFE INSURANCE FOR LIVING
in its 2008 Client Program Guide is a legitimate commercial
use in the ordinary course of business or a token use for
the purpose of maintaining the registration. If the Client
Program Guide is a legitimate marketing tool or other
commercially reasonable use of media in the ordinary course
of trade (i.e., genuine use of the mark), then we must find
that the Client Program Guide constitutes bona fide use of
the mark in commerce.
Based on the testimony and evidence of record, we find
that opposer’s 2008 Client Program Guide displays a bona
fide commercial use of the mark in connection with opposer’s
underwriting services. Jodi Dodson testified that the
Client Program Guide explains the details and mechanics
about its life insurance policy with accelerated payments.30
The Client Program Guide is distributed to the ultimate
consumer through opposer’s agents and it is still used
today.31
Q. But you can say that many of these
sales would have been made in
connection with marketing materials
that included the Life Insurance
for Living mark?

A. Yes. The majority of kits that go
out actually include the Client
Program Guide which has it on page

30 Dodson Dep., p. 46.
31 Dodson Dep., pp. 46-47.
Opposition No. 91179205
28
1, and also then the first section
of that guide, and those kits are
used at the point of sale for the
majority of these sales.32

Dodson Exhibit No. 5 are copies of seven invoices from
January 3, 2007 through November 18, 2008 to print the
Client Program Guide.33 The January 2008 invoice was for
15,000 copies, the May 2008 invoice was for 25,000 copies
and the November 2008 invoice was for 4,000 copies of the
Client Program Guide. The 44,000 copies of the Client
Program Guide printed in 2008 is evidence of more than mere
token use to maintain opposer’s registration. Furthermore,
we note that applicant was able to obtain its own copy of
the 2007 Client Program Guide, thus, indicating that the
Client Program Guides are in circulation. 34
Applicant introduced numerous examples of other
materials used by opposer to promote its underwriting
services; none of which use the mark LIFE INSURANCE FOR
LIVING. Applicant contends that “the Board must seriously
question whether consumers can come to associate the mark
with Opposer or its services without encountering it more
than once or even in the context of an identifier of
source”35 and that “[b]arring a reasonable explanation for

32 Dodson Dep., p. 56.
33 Dodson Dep., pp. 47-50.
34 Applicant’s Brief, p. 6 wherein applicant explained that
opposer withheld the Client Program Guide from opposer’s
responses to applicant’s request for production of documents.
35 Applicant’s Brief, p. 25.
Opposition No. 91179205
29
such extraordinarily limited use of Opposer’s mark, the
Board must assume that Opposer lost interest in the mark.”36
The problem with applicant’s argument is that it is based on
the mistaken premise that the bona fide commercial use of a
mark is based on the effectiveness of opposer’s use, on some
unspecified minimum quantity of use, or on a comparison with
how opposer uses other marks or advertising materials. As
indicated above, we must determine whether opposer’s use of
its mark is a legitimate commercial use in the ordinary
course of business. There is nothing in applicant’s
evidentiary showing that persuades us that opposer’s use of
LIFE INSURANCE FOR LIVING in the Client Program Guide is
anything other than a legitimate commercial use. There is
no minimum quantity of use so long as the use is legitimate
commercial use. See E.I. du Pont de Nemours and Co. v. Big
Bear Stores, Inc., 161 USPQ 50, 51 (TTAB 1969) (bona fide
test marketing and experimental sales in small volumes are
sufficient to show use of a mark); compare Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1769 n.9 (TTAB
1994), aff’d, White v. Paramount Pictures Corp.,
108 F.3d 1392 (Fed. Cir. 1997) (non-precedential) (the use
at issue was not genuine trademark use, it was de minimis
and noncommercial in nature and not made in the ordinary
course of trade in games). Furthermore, the fact that

36 Applicant’s Brief, p. 26.
Opposition No. 91179205
30
opposer does not use the mark LIFE INSURANCE FOR LIVING on
all or most of its promotional literature is not dispositive
so long as the use that opposer does make is legitimate
commercial use.
In view of Jodi Dodson’s testimony deposition taken in
April 2009 that the 2008 Client Program Guide displaying the
mark LIFE INSURANCE FOR LIVING is currently being used and
opposer’s order for 4,000 copies of the 2008 Client Program
guide in November 2008, we find that opposer has been using
the mark at least as late as April 2009. Therefore,
applicant has failed to prove that there has been not been
any use of the mark by opposer, let alone nonuse of the mark
for three consecutive years.
In view of the foregoing, the counterclaim to cancel
opposer’s pleaded registration on the ground of abandonment
is dismissed with prejudice.
Opposer’s Claim Of Likelihood Of Confusion
Standing
Because opposer has properly made its pleaded
registration of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Opposition No. 91179205
31
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
mark and the services covered by the registration. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
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 issue of likelihood
of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s marks. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Opposition No. 91179205
32
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer contends that the mark LIFE INSURANCE FOR
LIVING is famous because (i) opposer has used the mark
Opposition No. 91179205
33
continuously since 1997, (ii) opposer’s underwriting
services identified by the mark have generated substantial
revenues, and (iii) opposer’s advertising expenditures are
substantial.37
While opposer has used the mark continuously since
1997, it has always been used in connection with opposer’s
MoneyGuard service mark. In fact, opposer’s MoneyGuard mark
is the primary mark and LIFE INSURANCE FOR LIVING is a
secondary mark used in the nature of an advertising tagline.
The fact that MoneyGuard as the primary mark and LIFE
INSURANCE FOR LIVING is a secondary mark is demonstrated by
the fact that opposer’s has extensively advertised its
underwriting services with the MoneyGuard mark, while
opposer’s use of LIFE INSURANCE FOR LIVING is less
extensive.38 In this regard, the evidence of record shows
that all the advertising for opposer’s underwriting services
feature the MoneyGuard mark, LIFE INSURANCE FOR LIVING is
used on only some of the advertising, and there are no
advertising materials featuring LIFE INSURANCE FOR LIVING
without MoneyGuard. Thus, there is no independent reference
to the services apart from the MoneyGuard mark and consumers
have no basis on which to disassociate LIFE INSURANCE FOR

37 Opposer’s Brief, pp. 10-12.
38 Applicant’s Notice of Reliance, Exhibit 7.
Opposition No. 91179205
34
LIVING from MoneyGuard. See Bose Corp. v. QSC Audio
Products Inc., 63 USPQ2d at 1307-1308.
Opposer has designated its revenues and advertising
expenditures as confidential so we many only refer to them
in general terms. The revenues are substantial but the
advertising is not substantial. In any event, as indicated
above, LIFE INSURANCE FOR LIVING is never presented without
MoneyGuard so we have no basis on which to assess the
consumer recognition and renown of LIFE INSURANCE FOR
LIVING. Furthermore, opposer failed to introduce any
evidence demonstrating the context in which to place
opposer’s revenues and advertising expenditures (e.g., where
opposer’s MoneyGuard policy stands in terms of market share,
how opposer’s advertising expenditures relate to the
expenditures of competitors, how many consumers encounter
opposer’s mark, etc.).
Finally, we note that opposer failed to introduce any
evidence regarding critical attention or unsolicited media
referencing the mark and thereby demonstrating its renown.
When the record is fully considered, it is evident that
opposer not only failed to show that its mark LIFE INSURANCE
FOR LIVING is famous, but opposer failed to show that the
mark has any particular marketplace strength.

Opposition No. 91179205
35
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods and services offered
under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
Opposition No. 91179205
36
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). As noted above, the relevant consumers are
consumers with life insurance needs and long-term care needs
who are between the ages of 55-80, financially secure, with
at least $300,000 in assets and who want to preserve their
retirement income and assets in the event that they need
long-term care.
The marks are similar in appearance and sound because
they share the same structure beginning with the word
“Life,” followed by the word “For,” followed by the word
“Living” (LIFE INSURANCE FOR LIVING vs. LIFE FOR THE
LIVING). As indicated in the determination of whether LIFE
INSURANCE FOR LIVING is generic, opposer’s mark suggests
that a life insurance policy may do more than just pay a
death benefit; it may have useful benefits during the
owner’s life, hence, LIFE INSURANCE FOR LIVING. By the same
token, applicant’s mark LIFE FOR THE LIVING connotes “life
insurance and the living benefits associated with it.”39
Thus, the two marks engender the same commercial impression.
We find, therefore, that the marks are more similar than
dissimilar.
Applicant contends that the marks engender different
commercial impressions. Applicant’s mark suggests that
applicant’s services “provide life insurance benefits for

39 Sharrock Testimony Dep., p. 11.
Opposition No. 91179205
37
people and their families before they pass. … Applicant’s
mark suggests that ‘THE LIVING’ can benefit from life
insurance too. … [A]nd also to ‘living’ life and enjoying it
in the present rather than receiving benefits solely upon
death.”40 On the other hand, applicant contends that
opposer’s mark engenders the commercial impression “living
benefits before death.”41 Applicant’s argument presents a
distinction without a difference. Both interpretations
presented by applicant suggest life insurance policies
providing living benefits.
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
C. The similarity or dissimilarity and nature of opposer’s
services and the services described in the application,
the established likely-to-continue trade channels and
classes of consumers.

It is well settled that likelihood of confusion is
determined on the basis of the services as they are
identified in the application and in the pleaded
registration. Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983).
The authority is legion that the
question of registrability of an

40 Applicant’s Brief, pp. 39-40.
41 Applicant’s Brief, p. 40.
Opposition No. 91179205
38
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. (Emphasis
added).

Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Crocker National Bank v. Canadian Imperial Bank of
Commerce, 228 USPQ 689, 690 (TTAB 1986).
Applicant is seeking to register its mark for
“insurance agency services in the field of life insurance.”
“Insurance agency services” involve a “business office whose
function is the sales of insurance and insurance
products.”42 An “insurance agent” is “the person who sells
insurance by contacting the policy holder.”43 Opposer’s
services are “universal life insurance underwriting that
prepays the death benefit for long-term care.”
“Underwriting” services are defined as “the process of
selecting, classifying, evaluating, rating and assuming
risks.”44
In determining whether the services of the parties are
related, we are mindful that there is no per se rule that

42 Insurance Words & Their Meanings, p. 98 (21st ed. 2006).
43 Id. See also Dictionary of Insurance Terms, p. 244 (4th ed.
2000) defining an “insurance agent” as the “representative of an
insurance company in soliciting and servicing policy holders.”
44 Insurance Words & Their Meanings, p. 181.
Opposition No. 91179205
39
services sold in the same field or industry are similar or
related for purposes of likelihood of confusion. Cooper
Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84
(TTAB 1983) (“the mere fact that the products involved in
this case (or any products with significant differences in
character) are sold in the same industry does not of itself
provide an adequate basis to find the required
‘relatedness’”). “[T]he inquiry should be whether they
appeal to the same market, not whether they resemble each
other physically or whether a word can be found to describe
the goods of the parties.” Harvey Hubbell Inc. v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975). Thus, it
is not necessary that the services of the parties be similar
or competitive in character to support a holding of
likelihood of confusion; it is sufficient for such purposes
that a party claiming damage establish that the services are
related in some manner and/or that conditions and activities
surrounding marketing of these services are such that they
would or could be encountered by same persons under
circumstances that could, because of similarities of marks
used with them, give rise to the mistaken belief that they
originate from or are in some way associated with a single
source. See Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); Chemical New York
Opposition No. 91179205
40
Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1143
(TTAB 1986).
Based on the evidence of record, consumers encounter
life insurance agents rendering life insurance agency
services and life insurance companies rendering insurance
underwriting services in the same transaction. In other
words, consumers will encounter the marks identifying both
insurance agency services and underwriting services at the
same time. For example, when a life insurance agent finds a
suitable life insurance policy for a customer, the life
insurance agent will present a policy underwritten by the
insurance company. Thus, a prospective life insurance
customer could encounter a LIFE FOR THE LIVING insurance
agent and a LIFE INSURANCE FOR LIVING insurance underwriter.
Although applicant contends that it is rendering life
insurance agency services, in both of Mr. Shorrock’s
depositions, he explained that applicant was not rendering
traditional life insurance agency services because applicant
intends to market the LIFE FOR THE LIVING life insurance
“concept” to life insurance agents or wholesalers, not to
the ultimate consumer.45 However, this is a fact that we may
not consider. As indicated above, we must consider the
recitation of services as set forth in the application and

45 Shorrock Discovery Dep., pp. 16-19, 24-26, 43-44, 46, 50-51,
68-69, 72-73, 91-92, 99-103; Shorrock Testimony Dep., pp. 11-18,
33-34, 42-43, 48, 53.
Opposition No. 91179205
41
not on what the extrinsic evidence reveals about the nature
of the actual services. Because there are no limitations as
to channels of trade or classes of purchasers in the
description of services in the application, we must presume
that applicant’s insurance agency services move in all
channels of trade normal for those services, and that they
are available to all classes of purchasers for those
services. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). See also Octocom Systems Inc. v. Houston
Computer Services Inc., 16 USPQ2d at 1787.
As previously discussed, Jodi Dodson testified that
opposer’s relevant consumers are between the ages of 50 and
80 with $500,000 or more in assets. “We would consider them
mass affluent, kind of middle income, or we also market to
the high net worth and high (sic) affluent.”46 Opposer’s
2007 MoneyGuard Reserve Advisor Guide brochure describes
prospective clients as “astute adults, ages 55-75,”
“financially secure,” “have at least $300,000 in assets,”
and “are concerned about the impact long-term care could
have on their retirement income security.”47 Applicant
identifies the ultimate consumers for its life insurance
agency services as people who are concerned about out-living
assets, preserving retirement assets and not becoming a

46 Dodson Dep., p. 53.
47 Applicant’s Notice of Reliance, Exhibit 3.
Opposition No. 91179205
42
burden on their families.48 In its response to opposer’s
Interrogatory No. 10, applicant stated that its “purchasers
may be anyone eligible for life insurance products or
related products.”49
Based on the record before us, we find that the
conditions and activities surrounding marketing of life
insurance agency services and underwriting universal life
insurance policies are such that they would or could be
encountered by same persons under circumstances that could,
because of similarities of marks used with them, give rise
to the mistaken belief that they originate from or are in
some way associated with the same source.
D. Degree of consumer care.
Applicant argues that because the services at issue
involve insurance, health care costs and the consequences of
death, “consumers are likely to demonstrate sophistication
in the field of life insurance with living benefits.” There
is no evidence that prospective consumers will be
“sophisticated” in the field of life insurance with a living
benefit. However, we recognize that the purchasers of the
services are likely to be financially well-to-do and will
exercise a high degree of care when they make a decision
regarding the purchase of life insurance. Nevertheless,

48 Sharrock Discovery Dep., Exhibits 10 and 11; Sharrock Testimony
Dep., Exhibit 4.
49 Opposer’s Notice of Reliance, Exhibit 5.
Opposition No. 91179205
43
even sophisticated consumers are not immune to trademark
confusion especially, where as here, the marks are similar
and the services are related. While the degree of care
factor weighs in favor of applicant, it is not sufficient to
outweigh the other factors.
E. Balancing the factors.
In view of the similarity of the marks, services,
channels of trade and classes of consumers, we find that
applicant’s mark LIFE FOR THE LIVING for “insurance agency
services in the field of life insurance” is likely to cause
confusion with the mark LIFE INSURANCE FOR LIVING for
“universal life insurance underwriting that prepays the
death benefit for long-term care.”
Decision
Applicant’s counterclaim to cancel opposer’s pleaded
registration on the ground that it is generic is dismissed
with prejudice
Applicant’s counterclaim to cancel opposer’s pleaded
registration on the ground of abandonment is dismissed with
prejudice.
The opposition is sustained and registration to
applicant is refused.