Pacific Life Insurance Company

Trademark Trial and Appeal Board

Apr 30, 2004

No. 76276166 (T.T.A.B. Apr. 30, 2004)

Mailed: April 30, 2004
Paper No. 15
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Pacific Life Insurance Company
___________
Serial No. 76276166
___________
Stacy R. Halpern of Knobbe, Martens, Olson & Bear for
Pacific Life Insurance Company.
Katherine Stoides, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
____________
Before Hanak, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Pacific Life Insurance Company has filed an application
to register the mark shown below on the Principal Register
for “financial services, namely life insurance and annuities
underwriting; mutual fund management services, mutual fund
investment, advisory, distribution, brokerage and
administration services; mutual fund investment consultation
services, investment of funds for others; investment
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76276166
2
consultation, management, brokerage, and advisory services;
investment advice.”1 The application record includes a
disclaimer of FUNDS apart from the mark as a whole.
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
“mutual fund advisory services,”2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive. The cited
registration includes a disclaimer of CAPITAL FUNDS apart
from the mark as a whole.

1 Serial No. 76276166, filed June 22, 2001, based on an allegation of a
bona fide intention to use the mark in commerce. An amendment to allege
use with specimens was filed on July 5, 2002, asserting that the mark
was first used and used in commerce as least as early as August 15,
2001. The Examining Attorney accepted this amendment.
2 Registration No. 1,908,769 issued August 1, 1995, in International
Class 36. The records of the USPTO show ownership of the registration
in Pacific Century Financial Corporation, by change of name from Bancorp
Hawaii, Inc. The registration includes the following statement: “The
mark includes a triangular design. Color is not claimed as a feature of
the mark.” [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]
Serial No. 76276166
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
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. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We consider, first, the services involved in this case,
and we note that the question of likelihood of confusion
must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Serial No. 76276166
4
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
The recited services in the cited registration are
“mutual fund advisory services,” and applicant’s recitation
of services includes mutual fund advisory services. Thus,
these services are, at least in part, identical and
applicant does not argue otherwise.
Additionally, applicant concedes in its reply brief (p.
2) that the channels of trade “may be” the same, but
contends that the relevant consumers purchase such services
only after careful consideration and investigation. Given
the broad scope of the recitations of services, we conclude
that the trade channels are those normal for these types of
services and that the services are offered to all the usual
purchasers of such services. Therefore, the channels of
trade and purchasers of the respective services are
identical. The evidence of record does not address the
level of care involved in purchasing applicant’s or
registrant’s services or the sophistication of relevant
purchasers. There is no question that choosing mutual fund
advisory services involves more than an impulse decision and
may involve substantial sums of money, such that a certain
Serial No. 76276166
5
amount of care is likely to be taken in choosing mutual fund
advisory services. However, it is reasonable to assume that
such services are offered to all consumers and, clearly, the
purchasing sophistication of the general public varies
substantially. Further, even investment-savvy consumers may
be subject to confusion as to the source of the recited
services if identified by confusingly similar marks.
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression.
The Examining Attorney contends that the marks have
similar commercial impressions because they both contain the
term PACIFIC, which the Examining Attorney states is
arbitrary in relation to the recited services; that PACIFIC
is the dominant portion of each mark; and that registrant’s
sail design and applicant’s whale design each “reinforce the
aquatic meaning of the term PACIFIC, thereby augmenting the
similarities of the marks” (Brief, unnumbered p. 5). The
Examining Attorney argues that, while there may be numerous
registrations that include the terms PACIFIC, FUNDS and/or
CAPITAL, “a review of the Register results in a finding that
the combination of PACIFIC and FUNDS is indeed quite strong”
(emphasis in original) (Brief, unnumbered p. 12).
Serial No. 76276166
6
Applicant contends that the marks are quite distinct,
arguing that its whale design is a distinctive and dominant
portion of its mark because it is “more conspicuous than the
accompanying words” (Brief, p. 7); that both the whale
design and PACIFIC portions of its mark are well-known,
noting that applicant owns several registrations for marks
containing PACIFIC, noted infra, and one registration for
the whale design alone3; that the whale design “emphasizes
and evokes images related to applicant’s goals and its
philosophy [of] persistence, performance and strength”
(Brief, p. 10); that applicant owns two federal copyright
registrations for the whale design; that the design element
and term CAPITAL distinguish the registered mark from
applicant’s mark; that the literal portions of the
registered mark are weak; that there are numerous third-
party registrations for similar marks for similar services
and that applicant’s mark is less similar to the mark in the
cited registration than are several of these third-party
marks; that there has been no actual confusion over a period
of approximately ten years of coexistence; and that relevant
consumers are sophisticated and take care when purchasing
the services herein.

3 Registration No. 2,520,797, for the whale design for various insurance
and investment services.
Serial No. 76276166
7
Applicant submitted a substantial amount of evidence in
support of its position in its response of July 2, 2002, and
its request for reconsideration of March 4, 2003.4
Applicant’s counsel stated that applicant was founded in
1868 and has offered a variety of financial products and
services since that date; that it began using the mark
PACIFIC MUTUAL in 1937 and PACIFIC LIFE in 1997; that
applicant is the fifteenth largest life insurance company in
the nation; and that, with its affiliates, applicant manages
more than $357 billion in assets and has 81 of the 100
largest U.S. companies as clients.
Applicant submitted a copy of a brochure explaining its
company, a press release about its sponsorship of a tennis
tournament, excerpts from its Internet web site, a PTO
trademark examination guide, third-party registrations for
various marks for services similar to those of applicant,
and a copy of a consent agreement between applicant and a
third-party applicant regarding use and registration of the
third-party applicant’s mark PACIFICA FUND for investment
services. Applicant also submitted copies of its
registrations for marks containing PACIFIC for various

4 In its request for reconsideration, applicant included an amendment to
add the following statement in the application: “Applicant is the owner
of U.S. Trademark Registration Nos. 1,309,321; 1,605,912; 1,850,869;
2,098,077; 2,093,489; 2,099,968; 2,168,494; 2,472,077; 2,520,797;
2,605,656; 2,688,066; 2,098,077 and others.” This amendment was not
addressed by the Examining Attorney in either her denial of
reconsideration or in her brief. Thus, the application must be returned
to the Examining Attorney for consideration and entry of the amendment
as appropriate.
Serial No. 76276166
8
financial and insurance services, arguing that if the marks
herein are confusingly similar, then its prior registrations
should have prevented issuance of the cited registration.
The following are several examples of applicant’s
registrations:
REGISTRATION NO. MARK
2,337,578 & 2,377,472 USE THE POWER OF THE PACIFIC
2,168,494 PACIFIC LIFE
1,309,321 PACIFIC MUTUAL
2,213,338 PACIFIC LIFECORP
1,850,869 PACIFIC MEZZANINE INVESTORS
1,605,912 PACIFIC SELECT
2,310,848 PACIFIC FRONTIERS
2,098,077 PACIFIC PORTFOLIOS
2,422,511 PACIFIC RISK MANAGEMENT
SERVICES
2,411,140 PACIFIC VALUE
2,472,077 PACIFIC FINANCIAL PRODUCTS
In support of its contention that it has used the whale
design extensively in advertising its services, applicant
submitted a copy of an ad from Advisory Today Magazine5 as
an example of its national advertising campaigns, copies of
its brochures and other promotional materials, a list of

5 Applicant indicated that a copy of an ad from The Wall Street Journal
was submitted, but not such copy is in the record.
Serial No. 76276166
9
television networks showing its advertising, and materials
showing its sponsorship of a tennis tournament, Holiday
Bowl, golf tournament and AIDS walk.
In its brief (p. 11), applicant argues that several
third-party registered marks contain the terms PACIFIC and
FUND for the same or closely related services and other
third-party registrations contain PACIFIC and CAPITAL for
various investment, financial and commercial real estate
services6; that the previously-mentioned third-party mark,
PACIFICA FUND, for which applicant has a consent agreement,
has registered; and that, therefore, “even a slight
variation in a mark containing the word PACIFIC is all that
is necessary to avoid likelihood of confusion” (Brief, p.
12). The Examining Attorney objected to this evidence
because applicant did not properly submit copies of these
third-party registrations, nor did applicant submit these
registrations prior to appeal. However, in the same
paragraph in her brief, the Examining Attorney conceded that
“applicant is correct in its assertion that there are
numerous registrations comprised of the terms PACIFIC, FUNDS
and/or CAPITAL” (Brief, unnumbered p. 12). Despite the
Examining Attorney’s objection, in view of her concession
that there are “numerous” third-party registrations for

6 The listed marks include EUROPACIFIC GROWTH FUND; THE 59 WALL STREET
PACIFIC BASIN EQUITY FUND; CAPITAL PACIFIC HOLDINGS and design; PACIFIC
CREST CAPITAL and PACIFIC CREST CAPITAL INC. and design; PRC PACIFIC RIM
CAPITAL and PRC PACIFIC RIM CAPITAL INC.
Serial No. 76276166
10
marks containing these terms, we have decided to consider
applicant’s evidence herein.
In determining the similarities in the marks, 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 impressions that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
With respect to applicant’s mark, the words and design
are approximately the same size and, thus, create equal
visual impressions. Auditorily, however, the words clearly
predominate as the words will be used to refer to the
identified services by name. The word FUNDS is merely
descriptive of the object of applicant’s advisory services.
Serial No. 76276166
11
The evidence of third-party registrations indicates that
PACIFIC has a geographic connotation and, thus, is a weak
term with respect to the identified services. PACIFIC is
likely to be perceived as suggesting the geographic locus
(i.e., Pacific Rim, Pacific Basin, Pacific Crest) of the
investments that are the subject of applicant’s services.
Therefore, in view of the weakness of the marks herein
and the existence of similar marks on the register for the
same or similar services, we conclude that this is a case
where the design elements of the respective marks are
sufficient to distinguish the marks so that the
contemporaneous use of applicant’s mark and registrant’s
mark on the same and related services involved in this case
is not likely to cause confusion as to the source or
sponsorship of such services.7
Decision: The refusal under Section 2(d) of the Act is
reversed.

7 Applicant made a number of arguments herein that are not well taken
and we are not persuaded thereby. For example, applicant’s evidence
does not establish fame. There is no evidence of sales or advertising
or evidence establishing the nature or extent of consumer awareness of
this mark. Moreover, had applicant established that its mark is famous,
this would not overcome the refusal because the validity of the cited
registration is not at issue herein.
Applicant’s allegation that there has been no actual confusion for
ten years is of limited value in the context of an ex parte appeal.
Moreover, the test under Section 2(d) is not actual confusion but
likelihood of confusion. See, In re Kangaroos U.S.A., 223 USPQ 1025,
1026-1027 (TTAB 1984); and In re General Motors Corp., 23 USPQ2d 1465,
1470-1471.
There is no evidence that the whale design would be perceived as
connoting anything in particular; nor are its copyright registrations of
any significance herein.