Pennsylvania Manufacturers’ Association Insurance Co.

Trademark Trial and Appeal Board

Sep 2, 1999

No. 75147387 (T.T.A.B. Sep. 2, 1999)

Paper No. 13
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT, 2,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pennsylvania Manufacturers’
Association Insurance Company
________
Serial No. 75/147,387
_______
Robert E. Rosenthal of Duane, Morris
& Heckscher LLP for Pennsylvania Manufacturers’
Association Insurance Company.
Rita M. Odin, Trademark Examining Attorney,
Law Office 109 (Deborah S. Cohn, Managing Attorney).
_______
Before Seeherman, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Pennsylvania Manufacturers’ Association Insurance
Company has filed an application to register the mark THE
EXPLORER SERIES for “insurance services for businesses,
Ser No. 75/147,387
2
namely, providing comprehensive property and liability risk
management underwriting and claims administration.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the registered mark THE EXPLORER for “life
insurance underwriting services.”2
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
Looking first to the similarity or dissimilarity of
the marks involved, the Examining Attorney argues that
applicant has merely added the descriptive term SERIES,
which applicant has disclaimed, to registrant’s mark, and
has failed to create a mark which is different in
commercial impression. While applicant, for the most part,
argues that the marks and the services must be viewed as a
whole in making any determination in this case, applicant
also points to the differences in sound and appearance of
the two marks.
It is well established that the addition of
descriptive matter to one of two otherwise similar,
nondescriptive marks will not serve to avoid the likelihood

1 Serial No. 75/147,387, filed August 8, 1996, claiming first use
dates of January 25, 1995. A disclaimer has been entered of the
word “SERIES.”
2 Reg. No. 1,313,854, issued January 8, 1985, Section 8 & 15
affidavit filed and accepted.
Ser No. 75/147,387
3
of confusion. See In re Equitable Bancorporation, 229 USPQ
709 (TTAB 1986) and the cases cited therein. Clearly the
addition by applicant of the descriptive word SERIES to the
registered mark THE EXPLORER fails to change the overall
commercial impression created by the mark. Not only does
the dominant term EXPLORER remain the same, even the
introductory word THE has been appropriated. We fail to
see how the addition of the word SERIES would be viewed by
purchasers as anything other than an indication of a
variety of offerings under THE EXPLORER mark.
Keeping this similarity of commercial impression of
the two marks in mind, we turn to the similarity or
dissimilarity of the insurance underwriting services being
offered under each mark. The Examining Attorney argues
that the circumstances here are very similar to those in In
re Integrity Mutual Insurance Co., Inc., 216 USPQ 895 (TTAB
1982), wherein the Board found life insurance and property
and casualty insurance so closely related that the use of
the marks OMNI LIFE and OMNI BUSINESS PLAN, respectively,
for underwriting services for these two types of insurance
would result in the likelihood of confusion. In
particular, the Board stated:
We believe it is highly likely that a potential
customer, sophisticated or otherwise, who was
Ser No. 75/147,387
4
familiar with a life insurance underwriting firm
would, faced with a similar or the same identifying
mark for casualty or property insurance, assume that
the same underwriter might be involved. This is
especially true in a national context where some of
the nation’s leading insurance enterprises do, in
fact, underwrite not only life insurance but also
casualty and property insurance under the same or
highly similar marks and trade names; and the fact
that the parties in a particular case may not be
engaged in direct competition because one is
operating a general casualty line insurance and the
other a life insurance company, is, although relevant,
not a controlling factor as to likelihood of
confusion. [Cases omitted].
Supra at 896.
In addition, the Examining Attorney notes the third-party
registrations and excerpts from the Lexis/Nexis database
which have been made of record to show that both life
insurance and property and liability insurance services
are, or have been, in several instances, offered by a
single entity.
Applicant insists that the conditions under which the
sale of the respective services are made, the
sophistication of the purchasers, and the differing
channels of trade would obviate any likelihood of
confusion. Applicant states that in the insurance industry
it is common for insurance agents to sell either life
insurance or property/liability insurance, not both; that
the risk manager for a business would contact a
property/liability agent to purchase insurance such as
Ser No. 75/147,387
5
applicant’s, but an employee benefits manager would be the
potential purchaser for life insurance for the business and
would contact a life insurance agent; and that these
managers and agents are sophisticated buyers and providers
who are familiar with the names of companies providing
particular types of insurance and would not be likely to be
confused as to the source of the services provided under
THE EXPLORER SERIES and THE EXPLORER marks. Applicant
argues that although the services of both may be generally
classified as “insurance,” the services are directed to
distinct groups of purchasers; that they are not marketed
in such a way to cause confusion; and that under California
law registrant is not permitted to sell property insurance.
Applicant contends that the Office cannot
automatically apply the holding in Integrity Mutual to the
present case; that in that case there was no detailed
explanation of the nature of the marketplace for the
particular services, such as applicant has proffered here.
Applicant also argues that the registrations and
Lexis/Nexis database evidence relied upon by the Examining
Attorney relate to house marks or slogans of corporate
parents, and do not support any connection between the
individual business insurance product line of applicant and
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life insurance product of registrant and the product marks
being used for each.
Contrary to applicant’s arguments, we find the
Integrity Mutual case to be on “all fours” with the
circumstances present here. We cannot agree that applicant
has demonstrated sharply different marketplace conditions
for its and registrant’s insurance services from those
which existed in the Integrity Mutual case. While
applicant insists that different purchasers, different
agents, and different conditions would be involved for the
two types of insurance, we are not convinced that this
would necessarily be the case.3 There is no restriction in
the registration such that registrant’s life insurance
underwriting services would only be marketed to businesses,
much less large businesses in which the prospective buyers
for life insurance and applicant’s business insurance plans

3 Applicant has relied to a great extent upon the holdings in
Homeowners Group Inc. v. Home Marketing Specialists Inc., 931
F.2d 1100, 18 USPQ2d 1587 (6th Cir. 1991) with respect to the
significance of the differences in the marketing channels and the
sophistication of the purchasers in connection with the real
estate services involved therein. In an infringement case such
as that, however, the actualities of the marketplace may be
controlling, whereas here the issue is registrability of
applicant’s mark, and the cited registration must be presumed to
encompass all the normal channels of trade and all levels of
potential customers. See Kangol Ltd. v. KangaROOS U.S.A., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) and the cases cited
therein. Furthermore, in Homeowners, the Court found that the
two companies operated at different levels in the real estate
industry and sold to two distinct sets of buyers, conditions
which have not been established to hold true here.
Ser No. 75/147,387
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would be separate persons in the company. Instead, it is
highly likely that in a small concern, one person would be
responsible for all types of insurance. Even if different
agents were contacted, if a property/liability agent
offered an insurance plan bearing a mark highly similar to
that used in connection with a life insurance plan with
which the purchaser was already familiar, confusion would
appear to be likely. We must also consider the distinct
possibility that the purchaser for the business property
and liability insurance plans, even if not responsible for
group life insurance, may have had prior experience with a
life insurance plan on a personal level. If he were
familiar with this life insurance under the mark THE
EXPLORER, we think it likely that confusion would arise
upon encountering a business property and/or liability
insurance, which offers a SERIES of plans for various types
of businesses, under the mark THE EXPLORER SERIES.4
Regardless of the fact that registrant is not permitted

4 We note that the Board previously denied applicant’s request
for a remand of its application, so that additional evidence with
respect to the nature of the marketing of the involved insurance
services could be introduced. Even if applicant had introduced
evidence to support its arguments with respect to marketplace
conditions for its insurance services, there is no limitation in
the registration as to the manner in which registrant’s services
could be offered or the scope of potential purchasers for its
life insurance.
Ser No. 75/147,387
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under California law to underwrite property insurance, the
statement made in Integrity Mutual with respect to this
possibility is equally true here, namely, that this is
immaterial “if, in fact, the misimpression was generated.”
Supra at 897.
If anything, we have additional evidence to support
the holdings in Integrity Mutual, in that third-party
registrations have been made of record showing that several
companies offer both life insurance and property insurance
and/or liability insurance and have registered the same
mark to be used in connection with each of these services.
While applicant argues that these are house marks or
slogans or designs and do not show the offering of two
entirely different products under the same product name,
this is beside the point. Although a house mark or slogan,
if used by an entity such as a department store offering a
wide variety of goods and/or services, would not in most
instances be sufficient to establish a relationship between
these goods and services, we do not consider this to hold
true for the insurance industry. Applicant has clearly
failed to show that the types of insurance or products
offered by a single company are so numerous that a house
mark or slogan would not be associated by potential
purchasers with each of these products. Thus, the
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registrations stand as evidence that the relationship drawn
between the separate insurance products of a company in
Integrity Mutual is correct; there are several insurance
enterprises which underwrite both life insurance and
property and/or liability insurance and purchasers would be
apt to recognize this fact.
Applicant also argues that the term “explorer” is one
which has been used by others in the insurance field and
thus sophisticated purchasers would not be prone to assume
that all “explorer” products emanate from a single source.
The only evidence which applicant has introduced in support
of this argument, however, was attached to its appeal
brief. As such, it was untimely under Rule 2.142(d) and
the Examining Attorney properly objected to any
consideration thereof. Thus, in terms of the record on
appeal, THE EXPLORER appears to be an arbitrary mark
entitled to the full scope of protection in connection with
the life insurance underwriting services for which it is
registered.
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Decision: The refusal to register under Section 2(d)
is affirmed.
E. J. Seeherman
H. R. Wendel
C. M. Bottorff
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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