Modern Woodmen of America

Trademark Trial and Appeal BoardMay 7, 2012

No. 77308794re (T.T.A.B. May. 7, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: May 7, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Modern Woodmen of America ________ Serial Nos. 77308794, 77308779, and 77308822 _______ Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen of America. Caryn Glasser, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Holtzman, Taylor, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: On March 12, 2012, this Board suspended proceedings pending determination of the final status of cited Reg. No. 2995606 for the mark WOODMEN MORTGAGE SERVICES. On April 26, 2012, Reg. No. 2995606 was cancelled. Accordingly, applicant’s request for reconsideration (filed February 6, 2012) of our decision issued January 12, 2012 is granted to the extent that any discussion in the decision regarding Reg. No. 2995606 is considered moot, and the decision is hereby vacated as to that registration. Serial Nos. 77308794, 77308779, and 77308822 2 To the extent our decision that a likelihood of confusion exists was predicated upon the presumed validity of Reg. No. 2995606, we note that none of the specific findings made with respect to Reg. No. 2995606 were determinative of the outcome, and we examine them in turn below. First, in comparing the services recited for the mark MODERN WOODMAN BANK and design (Serial No. 77308794), we made a finding that banking and mortgage loan services are “legally identical to, or encompass,” the services recited in Reg. No. 2995606, “mortgage banking services.” The record also supports a finding that banking and mortgage loan services are related to “broker-dealer services and insurance agency services,” “general insurance agency services,” and the “underwriting of life insurance.”1 As evidenced by the third-party registrations attached in the Office Action dated July 12, 2009 and January 19, 2010, and discussed in our decision of January 6, 2012, the parties’ services are highly related and are often performed by a single source. This evidence is probative to show that consumers would likely perceive both applicant and registrant’s services as the type that may be performed by a 1 The cited registrations that remain active are: Reg. No. 2767582 for the mark WOODMEN FINANCIAL SERVICES for “financial services, namely, broker-dealer services and insurance agency services in the field of variable life and annuity insurance policies and mutual funds;” Reg. No. 2995607 for the mark WOODMEN INSURANCE AGENCY for “general insurance agency;” and Reg. No. 3559362 for the mark WOODMEN OF THE WORLD for “underwriting of life insurance.” Serial Nos. 77308794, 77308779, and 77308822 3 single company. See In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Thus, our decision that a likelihood of confusion exists did not depend upon our finding of legal identity between the parties’ services with respect to trademark application Serial No. 77308794. Additionally, in our January 12, 2012 decision, we found that the parties’ services are presumed to travel in the same channels of trade and be encountered by the same classes of purchasers, in part because we found that “applicant’s insurance and banking services have been found to be legally identical to registrants’ insurance and banking services.” We add that the presumption continues to hold true, inasmuch as the remaining services are closely related. To clarify our earlier decision, the decision (at page 16) is amended to read (added text in bold): Because applicant’s insurance and banking services have been found to be legally identical and/or closely related to registrants’ insurance and banking services, and there are no limitations or restrictions as to trade channels or class of consumers in either the cited registrations or applicant’s applications, such services are presumed to move in the same channels of trade and be encountered by the same classes of purchasers. Serial Nos. 77308794, 77308779, and 77308822 4 At pages 17 and 18, the decision is further amended to read (added text in bold): Even assuming arguendo that purchasers of such services would carefully deliberate before making a purchasing decision, this does not mean that they are immune from confusion as to the origin of the respective services, especially where, as we view the present case, the similar nature of the marks and the identity or close relationship of the services outweigh any sophisticated purchasing decision. ... Even sophisticated consumers may view the marks as variations on a theme (MODERN WOODMEN as the newest “line” in the WOODMEN OF THE WORLD services) intended to differentiate identical or closely related services having a common source or sponsorship. In all other respects, the prior decision, affirming the examining attorney’s refusals to register trademark application Serial Nos. 77308794, 77308779, and 77308822 under Trademark Act § 2(d), stands.