Modern Woodmen of America

Trademark Trial and Appeal Board

Jul 16, 2012

No. 77203020 (T.T.A.B. Jul. 16, 2012)

Mailed:
July 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Modern Woodmen of America
________

Serial No. 77203020
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen
of America.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Holtzman, Taylor and Kuczma
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Modern Woodmen of America, an Illinois corporation
(“applicant”), filed an application seeking registration of
the mark MaxCL in standard character form for the following
services in Class 36, as amended:
fraternal services, namely, life
insurance underwriting.

The examining attorney issued a final refusal to
register the mark pursuant to § 2(d) of the Trademark Act
of 1946, 15 U.S.C. § 1052(d), citing Registration Nos.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77203020
2
2866938 and 3108696 as a bar to registration.1 Registration
No. 2866938 is for the mark MAX in typed drawing format2 and
Registration No. 3108696 is for the following non-standard
character mark:

Both registrations are for “underwriting of property and
casualty insurance” in Class 36 and are owned by MutualAid
eXchange Reciprocal Insurance Co.
Applicant and the examining attorney submitted briefs,
and appeared at an oral hearing before the Board.
Likelihood of Confusion
Our determination of likelihood of confusion under
§ 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. In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

1 Registration No. 2866938 issued July 27, 2004, §§ 8 and 15
combined declaration accepted and acknowledged April 15, 2010;
Registration No. 3108696 issued June 27, 2006, §§ 8 and 15
combined declaration accepted and acknowledged February 13, 2012.

2 In 2003, Trademark Rule 2.52(a) was amended to refer to “typed”
drawings as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. § 2.52(a); TMEP § 807.03(i).
Serial No. 77203020
3
(CCPA 1973). See also, In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
A. The similarity or dissimilarity of the marks as to
appearance/sound/meaning and commercial impression

We first consider the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
Because the design portion of cited Registration No.
3108696 presents an additional point of difference with
applicant’s mark, we confine our analysis to the issue of
likelihood of confusion between applicant’s mark and the
MAX mark in cited Registration No. 2866938. That is, if
confusion is likely between those marks, there is no need
for us to consider the likelihood of confusion with the Max
and Design mark in Registration No. 3108696; conversely, if
there is no likelihood of confusion between applicant’s
mark and the MAX mark in Registration No. 2866938, then
there would be no likelihood of confusion with the MAX and
Serial No. 77203020
4
Design mark in Registration No. 3108696. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
To the extent that applicant’s mark and the cited mark
in Registration No. 2866938 begin with the core term “MAX,”
the marks are similar in sound, appearance and meaning.
In arguing the different commercial impressions
between the marks, applicant contends that the letters “CL”
at the end of its mark would be viewed as arbitrary and
distinctive, serving to distinguish its mark from the cited
marks.3 However, adding a term to a mark does not
necessarily obviate the similarity or overcome any
likelihood of confusion under § 2(d). See Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Jos. E. Seagram
& Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)(BENGAL
and BENGAL LANCER); In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988)(MACHO and MACHO COMBOS); In re
Corning Glassworks, 229 USPQ 65 (TTAB 1985)(CONFIRM and
CONFIRMCELLS). Given that the letters CL do not appear to
have any meaning, the addition of CL in applicant’s mark is
likely to be viewed as a variant of the cited mark instead
of distinguishing applicant’s mark from the cited mark.
When considering the similarity of the marks, the test
is not whether the marks can be distinguished when
Serial No. 77203020
5
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of overall
commercial impression so that confusion as to the source of
the 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).
“MAX” is the focus in both applicant’s MaxCL mark
where MAX has prominence as the first word, and in the
cited mark which consists solely of the word “MAX.” See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005) (consumers are generally more inclined to focus
on the first word, prefix or syllable in a mark); Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (often the first part of a mark is most
likely to be impressed upon the mind of a purchaser and
remembered when making purchasing decisions).
Applicant submitted the initial pages of a summary
chart from a TESS search listing 100 of 402 records for
marks containing the word “max” in Class 36 arguing that

3 Applicant’s Appeal Brief p. 8.
Serial No. 77203020
6
“max” has been incorporated into numerous registered marks
that do not result in confusion.4 Third-party registrations
may be submitted to demonstrate the meaning of a word which
comprises a mark, or a portion thereof, in the same way
dictionary definitions are used. In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). However,
applicant failed to submit soft copies of the registrations
or the electronic equivalent (i.e., complete printouts
taken from any of the USPTO’s automated systems, including
TESS) in order to make the registrations of record.
Because the examining attorney failed to object to
such evidence or to advise applicant of the insufficiency
of this evidence, we deem the objection to be waived, and
consider this evidence. See In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) and
TBMP § 1208.02 (3rd edition, 1st revision June 2012).
Unfortunately, critical information such as the nature of
the services identified in the listed registrations is not
contained in applicant’s TESS summary chart. Additionally,
many of the entries indicate the status of the
corresponding registration or application as “dead” and as

4 See Applicant’s 5/28/2009 Response to Suspension Inquiry.
Serial No. 77203020
7
such are not relevant. Therefore, the summary TESS chart
is not probative evidence and entitled to no weight.5
In view of the foregoing, the marks are similar in
appearance, sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the
services, channels of trade and classes of consumers

We turn next to the du Pont factor involving the
similarity or dissimilarity of applicant’s services
(“fraternal services, namely, life insurance
underwriting”), in relation to the services in the cited
registration (“underwriting of property and casualty
insurance”). It is well-settled that the issue of
likelihood of confusion between applied for and registered
marks must be determined on the basis of the services as
they are identified in the involved application and
registrations. Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).
The essence of the services provided by applicant and
the owner of the cited registration are the same, namely,

5 Nor do we consider applicant’s citation to Max Capital, 93
USPQ2d at 1246, where the Board determined that MAX has a
suggestive meaning in connection with insurance services, and
held that Registration No. 2866938, which is the cited
registration in this case, is not entitled to a broad scope of
protection. The Board’s finding in Max Capital was based on
evidence of third-party registrations and a dictionary definition
Serial No. 77203020
8
underwriting insurance. The services need not be identical
or directly competitive to find a likelihood of confusion.
See In re Melville, 18 USPQ2d 1386, 1388 (TTAB 1991).
Rather, they need only to be related in some manner or the
conditions surrounding their marketing are such that they
would be encountered by the same purchasers under
circumstances that would give rise to the mistaken belief
that the services come from a common source. See On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475-76 (Fed. Cir. 2000) and In re Total
Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).
In support of the relatedness of applicant’s life
insurance underwriting services and the property and
casualty underwriting services in the cited registration,
the examining attorney submitted internet evidence and
third-party registrations. This evidence demonstrates that
the same entities underwrite these three types of
insurance.
The websites for insurance companies show that they
offer life insurance as well as property and casualty
insurance under a single mark. The State Farm Insurance
website, located at www.statefarm.com, contains a link

that are not part of the record in this case. See Applicant’s
Reply Brief p. 3.
Serial No. 77203020
9
labeled INSURANCE “Auto, Home, Life & More;” at
www.thehartford.com, The Hartford insurance company lists
“Auto Insurance, Life Insurance, Homeowners Insurance” as
some of its products; similarly, the websites of Prudential
and Farmers Insurance located at www.prudential.com and
www.farmers.com, advertise the availability of Life, Auto
and Home insurance products.6 (As explained at the U.S.
Department of Labor’s Bureau of Labor Statistics’ website,
www.bls.gov, property and casualty insurance underwriting
covers automobile, homeowners, fire or marine insurance.)7
The examining attorney also submitted seventeen use-
based third-party registrations owned by fourteen different
owners that serve to suggest that applicant’s life
insurance underwriting and registrant’s property and
casualty underwriting services are of a kind that may
emanate from a single source.8 The registrations listed
below demonstrate the relatedness of life insurance and
property and casualty insurance underwriting services:9

6 See attachments to 12/14/2010 Request for Reconsideration
Denied.
7 See attachment to 12/14/2010 Request for Reconsideration
Denied.
8 These third-party registrations and others submitted by the
examining attorney were attached to the 6/7/2010 Office Action.
9 Only the services that are pertinent to the services identified
in applicant’s application and the cited registration are listed
in the chart.
Serial No. 77203020
10
Registration No. Mark Services OWNER
1087834 State Farm
Insurance Auto Life
Fire and Design
UNDERWRITING LIFE,
CASUALTY AND FIRE
INSURANCE BUSINESS
State Farm Mutual
Automobile
Insurance Company
Corporations
2376437 American
International Group
UNDERWRITING SERVICES,
NAMELY, AUTOMOBILE,
PROPERTY AND CASUALTY,
LIFE . . .
American
International Group,
Inc.
2599438 Metlife Bank . . . UNDERWRITING,
BROKERAGE AND
ADMINISTRATION
SERVICES FOR INDIVIDUAL
AND GROUP LIFE,
DISABILITY, LONG TERM
CARE, DENTAL, PROPERTY
AND CASUALTY
INSURANCE . . .
Metropolitan Life
Insurance Company
2646316 Prudential Financial INSURANCE AND
FINANCIAL SERVICES,
NAMELY, INSURANCE
UNDERWRITING,
ADMINISTRATION AND
AGENCY SERVICES IN THE
FIELDS OF LIFE, HEALTH,
PROPERTY AND CASUALTY,
DISABILITY, LONG TERM
CARE, AND ANNUITIES;
The Prudential
Insurance Company
of America
3686546 Farmers Value
Insurance Package
INSURANCE
UNDERWRITING SERVICES
IN THE FIELD OF
PROPERTY AND CASUALTY
INSURANCE, AUTOMOBILE,
HOMEOWNERS,
RECREATIONAL VEHICLES,
WORKERS'
COMPENSATION, BUSINESS
AND COMMERCIAL
INSURANCE, AND LIFE
INSURANCE AND
ANNUITIES; . . .
Farmers Group Inc.
3196175 Nationwide
Insurance
INSURANCE
UNDERWRITING AND
BROKERAGE FEATURING
ALL TYPES OF INSURANCE,
INCLUDING FIRE, LIFE,
AND CASUALTY
Nationwide Mutual
Insurance Company
3215402 AIG Marketing, Inc. INSURANCE
UNDERWRITING IN THE
FIELD OF PROPERTY AND
CASUALTY, LIFE AND
HEALTH, AND AUTO
INSURANCE SERVICES
American
International Group,
Inc.
3293877 Webster Insurance INSURANCE AGENCY,
BROKERAGE,
UNDERWRITING AND
ADMINISTRATION
SERVICES IN THE FIELDS
OF LIFE, ACCIDENT,
HEALTH, DISABILITY,
LONG-TERM CARE, TRAVEL
ACCIDENT, MANAGEMENT
AND PROFESSIONAL
LIABILITY, CREDIT AND
Webster Financial
Corporation
Serial No. 77203020
11
EXPORT, TRAVEL, SURETY,
FIDELITY BONDS,
PROPERTY, CASUALTY,
INLAND AND OCEAN
MARINE, BOILER AND
MACHINERY, AUTOMOBILE,
HOME AND FIRE
INSURANCE, CLAIMS
ADMINISTRATION AND
SAFETY ENGINEERING
SERVICES;
3498513 Old South and
Design
. . . INSURANCE
UNDERWRITING,
INSURANCE ACTUARIAL
SERVICES, ALL THE
AFOREMENTIONED
SERVICES IN THE FIELDS
OF LIFE, HEALTH, HOME,
ACCIDENT, FIRE, AUTO,
DENTAL AND MEDICAL
INSURANCE
Walnut Advisory
Corporation
3573779 Citi Never Sleeps INSURANCE SERVICES,
NAMELY, UNDERWRITING,
BROKERAGE,
ADMINISTRATION AND
AGENCY SERVICES IN
CONNECTION WITH LIFE,
ACCIDENT, DISABILITY,
PROPERTY AND CASUALTY,
HOMEOWNERS, AUTO,
CREDIT, DEBT
PROTECTION AND FIRE;
AND UNDERWRITING AND
BROKERAGE OF PROPERTY,
CASUALTY AND LIFE
INSURANCE POLICIES AND
ANNUITY CONTRACTS
Citigroup Inc.
3663100 First National Bank
and Design
. . . INSURANCE SERVICES,
NAMELY, INSURANCE
UNDERWRITING,
BROKERAGE AND
EXTENDED WARRANTY
CONTRACTS IN THE
FIELDS OF LIFE, HEALTH,
ACCIDENT, FIRE, MARINE,
MEDICAL AND PRE-PAID
HEALTH CARE AND LEGAL
SERVICES;. . .
F.N.B. Corporation
3686546 Farmers Value
Insurance Package
INSURANCE
UNDERWRITING SERVICES
IN THE FIELD OF
PROPERTY AND CASUALTY
INSURANCE, AUTOMOBILE,
HOMEOWNERS,
RECREATIONAL VEHICLES,
WORKERS'
COMPENSATION, BUSINESS
AND COMMERCIAL
INSURANCE, AND LIFE
INSURANCE AND
ANNUITIES; INSURANCE
CLAIMS PROCESSING,
INSURANCE CLAIMS
ADMINISTRATION, . . .
Farmers Group Inc.
3706053 Western Prairie . . . INSURANCE
UNDERWRITING,
Walnut Advisory
Serial No. 77203020
12
INSURANCE ACTUARIAL
SERVICES, ALL THE
AFOREMENTIONED
SERVICES IN THE FIELDS
OF LIFE, HEALTH, HOME,
ACCIDENT, FIRE, AUTO,
DENTAL AND MEDICAL
INSURANCE, . . .
Corporation
3731394 The Hartford and
Design
. . . INSURANCE SERVICES,
NAMELY, INSURANCE
UNDERWRITING, ISSUING,
ADMINISTRATION, AGENCY
AND BROKERAGE
SERVICES IN THE FIELDS
OF . . . INDIVIDUAL LIFE
INSURANCE, AUTO
INSURANCE, ACCIDENT
INSURANCE,
HOMEOWNERS
INSURANCE, FLOOD
INSURANCE, FIRE
INSURANCE,
REINSURANCE, PROPERTY
AND CASUALTY
INSURANCE . . .
Hartford Fire
Insurance Company
3788055 TD Bank INSURANCE
UNDERWRITING SERVICES
IN THE FIELDS OF TRAVEL,
LIFE, HEALTH, ACCIDENT,
FIRE, VEHICLE, PROPERTY
AND CREDITOR; MUTUAL
FUND INVESTMENT AND
BROKERAGE SERVICES
The Toronto-
Dominion Bank
3792501 Hummel Group and
Design
INSURANCE
UNDERWRITING SERVICES
IN THE FIELDS OF AUTO,
MOTORCYCLE,
HOMEOWNERS, FARMS,
RECREATIONAL VEHICLES,
HOME-BASED BUSINESS,
UMBRELLA LIABILITY,
HEALTH, LIFE, LUMBER,
COMMERCIAL PROPERTY
AND LIABILITY . . .
Hummel Group Inc.
3795727 HCC INSURANCE
UNDERWRITING AND
UNDERWRITING
MANAGEMENT, INSURANCE
BROKERAGE,
REINSURANCE, AND
INSURANCE CLAIMS
ADMINISTRATION, ALL IN
THE FIELDS OF ACCIDENT,
HEALTH, LIFE, EXECUTIVE
AND PROFESSIONAL
ERRORS AND OMISSIONS,
PROPERTY, CASUALTY,
AND SPECIALTY
INSURANCES . . .
HCC Insurance
Holdings, Inc.

Although such registrations are not evidence that the
marks shown therein are in use or that the public is
Serial No. 77203020
13
familiar with them, they nonetheless have probative value
to the extent they are based on use in commerce and serve
to suggest that that the services listed therein are of a
kind which may emanate from a single source under a single
mark. See In re Davey Products Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) and TMEP
§ 1207.01(d)(iii).
The foregoing evidence produced by the examining
attorney indicates that it is common for the same entity to
provide underwriting of life insurance as well as property
and casualty insurance. Thus, consumers encountering the
insurance underwriting services of applicant and the cited
registrant in connection with similar marks are likely to
believe the services emanate from the same source.
We next consider the similarity or dissimilarity of
the established and likely to continue trade channels for
applicant’s and registrant’s respective services, and the
condition under which and buyers to whom sales are made,
i.e., impulse versus careful, sophisticated purchasing,
under the third and fourth du Pont factors.
The amended identification of services limits the
trade channel for applicant’s services to those
underwriting services provided as part of applicant’s
Serial No. 77203020
14
fraternal services. Consistent with this limitation,
applicant argues that there is no likelihood of confusion
because potential customers would be restricted to members
of its fraternal society.10 Unlike the subject application,
the cited registration is not restricted with respect to
trade channels. Because there is no limitation as to trade
channels or classes of purchasers in the registration, we
must presume that registrant’s services are marketed in all
normal trade channels for such services and to all normal
classes of purchasers for such services. See In Re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
While applicant’s services are offered only to its
members, its members are part of the general consuming
public to which registrant’s services are also presumably
marketed and sold. Thus, applicant’s members who may be
interested in purchasing life insurance, upon seeing the
property and casualty insurance services of registrant, may
assume that applicant’s MaxCL services are related or
affiliated with the services provided by registrant under
the MAX mark. To the extent that applicant’s and
registrant’s insurance underwriting services are offered to
applicant’s members as part of the general consuming
public, the channels of trade and classes of purchasers

10 Applicant’s Appeal Brief pp. 8-9.
Serial No. 77203020
15
overlap. This overlap weighs in favor of a finding of
likelihood of confusion, under the third and fourth du Pont
factors. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
Applicant contends that the purchase of insurance is
not an impulse purchase, but is made as part of a careful
purchasing decision. According to applicant, potential
purchasers of property and casualty insurance are persons
who plan ahead and would exert care in selecting property
and casualty insurance to ensure any claim is likely to be
processed satisfactorily. Similarly, according to
applicant, purchasers of life insurance who are motivated
about the continued welfare of their dependents after their
death, would also make a careful purchasing decision.11
Other than applicant’s argument, there is no evidence that
purchasers of any type of insurance exercise a greater
degree of care. Given the nature of insurance products,
however, we agree that purchasers exert care when
purchasing insurance. See Max Capital Group, 93 USPQ2d at
1248.
In view of the foregoing, the degree of care factor
slightly favors applicant. On balance however, the du Pont
factors of similarity of the goods, trade channels and
customers favor a finding of likelihood of confusion.
Serial No. 77203020
16
C. Applicant’s Ownership of Registration No. 3620338
Subsequent to the filing date of the subject
application, applicant filed an application to register the
mark “MaxCL Pro” for “insurance services, namely,
underwriting, issuing and administration of life
insurance.” After the entry of a disclaimer of “Pro,” this
application matured into Registration No. 3620338 on May
12, 2009. Applicant argues that its potential customers,
i.e., its members, would be likely to associate the present
mark MaxCL with its registered MaxCL Pro mark and recognize
applicant as the source of the services provided under the
MaxCL mark.12 Not only is there a lack of evidence to
support any such association between applicant’s marks,
there is nothing that explains why customers would only
associate the MaxCL mark with MaxCL Pro, and not also with
the cited MAX mark.
With respect to applicant’s existing registration for
MaxCL Pro, we note that the Board is not bound by the prior
decision of an examining attorney in allowing the foregoing
mark for registration. It has been noted many times that
each case must be decided on its own facts. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Accordingly, we are obligated to assess the

11 Applicant’s Appeal Brief pp. 10-11.
12 Applicant’s Appeal Brief, pp. 9, 11.
Serial No. 77203020
17
registrability of applicant’s mark on its own merits and not
simply based on the existence of other registrations. This
is particularly so when the mark involved in the existing
registration is different from the mark in the subject
application.
D. Balancing the factors
In view of the similarity of the marks in their
entireties in sound, appearance, meaning and commercial
impression, the relatedness of applicant’s services to
those in the cited registrations, and the overlap in the
channels of trade and classes of customers, we find that
applicant’s mark MaxCL for the services identified in its
application is likely to cause confusion with the MAX mark
in Registration No. 2866938. Moreover, where the services
of the applicant and cited registrant are “similar in kind
and/or closely related” as they are here, the degree of
similarity between the marks required to support a finding
of likelihood of confusion is not as great as would be
required with diverse services. In re J.M. Originals Inc.,
6 USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v.
Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed.
Cir. 2004).
Inasmuch as any doubts as to likelihood of confusion
must be resolved against applicant and in favor of
Serial No. 77203020
18
registrant, we affirm the refusal to register. See
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1003 (Fed. Cir. 2002) and In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988).

Decision: The refusal to register is affirmed.