Primerica, Inc.

Trademark Trial and Appeal Board

Mar 19, 2013

No. 77931208 (T.T.A.B. Mar. 19, 2013)

Hearing: Mailed:
September 20, 2012 March 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Primerica, Inc.
________

Serial No. 77931208
_______

Kimberly L. Myers of Rogers & Hardin LLP for Primerica,
Inc.

Sean Crowley, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Primerica, Inc. (“applicant”) filed, on February 9,
2010, an application to register on the Principal Register
the standard character mark PRIMERICA DEBTWATCHERS for the
following International Class 42 services:
Providing temporary use of a Web-based software
application, marketed exclusively through the
proprietary’s [sic] sales force of independent
contractor sales representatives and accessible
only through proprietary's [sic] company-branded
website, for assimilating financial information,
namely, financial data provided directly by the
THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser No. 77931208
2
customer and financial data obtained directly
from the customer's consumer credit report, to
permit the customer to formulate and calculate
debt payoff plans.1

The application claims first use and first use in commerce
on June 15, 2009.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of
the previously registered mark (Registration No. 3702655)

for “online counseling, advice and support to individuals
on the subject of reduction and elimination of personal
debt” in International Class 36.
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.

1 We presume that “the proprietary’s” was intended to be “the
proprietor’s.”
In its request for reconsideration, applicant used the term
“Applicant’s” rather than “proprietary’s” in its proposed
amendment to its identification of services, and the examining
attorney approved applicant’s proposed amendment. Because the
Office’s electronic record for the present application and
applicant’s brief both contain “proprietary’s,” we show the
identification as including “proprietary’s.”
Ser No. 77931208
3
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the 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 any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor we consider is the similarity
or dissimilarity of the marks. Our focus is on whether the
marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
Applicant argues that the dominant portion of its mark
is PRIMERICA because PRIMERICA is the first word in the
mark and is applicant’s “well-known” house mark; that
DEBTWATCHER is “highly suggestive” and has been commonly
Ser No. 77931208
4
used by third parties to refer to some type of financial
service; that the dominant portion of applicant’s mark and
registrant’s mark differ; and that its mark would be
recognized as one of applicant’s family of PRIMERICA marks.
In considering applicant’s and registrant’s marks, it
is apparent that applicant adopted the entire wording of
the registered mark. The scenario of one party seeking to
register a mark that incorporates the wording of a
previously-registered mark has been addressed by the Board
on numerous occasions.2 The addition of a house mark or
other matter has been found sufficient to distinguish the
marks under circumstances where the appropriated matter is
highly suggestive or merely descriptive or has been
frequently used or registered by others in the field for
the same or related goods or services. See, e.g., Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005) (NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear
not confusingly similar to ESSENTIALS for women’s clothing
because ESSENTIALS is a highly suggestive term for articles
of clothing); In re Merchandising Motivation, Inc., 184
USPQ 364 (TTAB 1974) (MEN'S WEAR for a semi-monthly

2 See, generally, In re Champion Oil Company, 1 USPQ2d 1920 (TTAB
1986); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); In
re C. F. Hathaway Company, 190 USPQ 343 (TTAB 1976).
Ser No. 77931208
5
magazine not confusingly similar to MMI MENSWEAR for
fashion consulting for men because “MENSWEAR” is merely
descriptive of such services). We therefore determine
whether the term DEBTWATCHER is highly suggestive or has
been frequently used or registered by others in the field
for the same or related services.
Applicant argues at p. 15 of its main brief:
The DEBTWATCHER term, in and of itself, is highly
suggestive of a product or service that has to do
with debt by “watching,” or giving consideration
or attention, to debt. Registrant’s on-line
counseling service “watches debt” in the sense
that Registrant’s customers are encouraged
through Registrant’s 10-step counseling and
advice program to consider their debt levels and
develop goals toward achieving a reduction in
their debt levels. Applicant’s software
application tool also generally “watches debt” by
providing Applicant’s customers with an
interactive software tool to generate and
calculate a debt payoff plan based upon financial
data imported from customers’ consumer reports
and directly input by customers.

As evidence, in addition to its application and the
cited registration, applicant relies on (i) Registration
No. 3588700, owned by a third party, for the mark
DEBTWATCHER for “providing information online to
subscribers regarding the credit worthiness of businesses,”
(ii) the search results for a search for “debtwatcher” and
“financial” using the Google search engine, which resulted
Ser No. 77931208
6
in “about 1,570”3 hits, and (iii) a list of applications and
registrations taken from the Office’s TESS4 database.5
Of course, “debtwatcher” is a combination of the terms
“debt” and “watcher.” “Debt” identifies the subject matter
of applicant’s services. “Watcher” is defined on Webster’s
Online Dictionary as “one that watches: as … a person who
closely follows or observes someone or something - often used in combination ….”6 In the context of a web-based software
application, even one that permits the customer to
formulate and calculate debt payoff plans, DEBTWATCHER
suggests only that the user can watch or monitor his debt
by using the software.
Next, we consider the evidence submitted by applicant
in support of its position that “debtwatcher” has been
frequently registered or used by others. The cited
registration and one third-party registration hardly

3 See declaration of Ginabeth Hutchinson, employed by applicant’s
attorney’s law firm, who conducted the search using the Google
search engine.
4 Trademark Electronic Search System (“TESS”).
5 Applicant also submitted webpages from the website of the owner
of Registration No. 3588700; the webpages do not demonstrate use
of the term “debtwatchers.”
6 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also University of Notre Dame du Lac v. J. C. Gourmet Foot
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 77931208
7
establish that the term has been frequently registered, and
the material from the Google search engine upon which
applicant relies has limited probative value. The excerpts
shown in the Google search summary results do not have
sufficient surrounding text from which to determine the
nature, context and relevance of the terms used in the
excerpts. See In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine
results—which provide little context to discern how a term
is actually used on the web page that can be accessed
through the search result link—may be insufficient to
determine the nature of the use of a term or the relevance
of the search results to registration considerations”); In
re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011)
(search engine results submitted by examining attorney not
considered because they did not provide sufficient context
to have any probative value). In addition, certain search
results appear to refer to applicant’s service and are not
reflective of use by others.7 Further, there are references
to “Global debt watcher Fitch Ratings,” “debt watcher
Standard & Poor’s Ratings Services” and “global debt

7 See chriswondra.com (“Is Primerica Right for You?”);
thefinancialblogger.com (“Primerica IPO”); and
linkedin.com/in/fayephillips (“Senior Rep. at Primerica Financial
Services”).

Ser No. 77931208
8
watcher Moodys’” which appear to be using “debt watcher” in
a context different from the applicant’s services which
provide temporary use of a web-based software application
which assimilates financial information and permits the
customer to formulate and calculate debt payoff plans.
The record also includes a list of registrations and
applications that contain the term “debt” or “watch.”
Aside from the fact that third-party applications are, at
best, evidence only of the fact that the applications have
been filed, in this case the list does not include the
identifications of goods or services of the applications
and registrations so that we can determine whether they are
in related fields. Thus, the listing has no probative
value. See In re Jump Designs LLC, 80 USPQ2d 1370, 1372
(TTAB 2006) (“The list does not show the goods and/or
services covered by the registrations. … [W]e cannot
determine whether the marks are for goods and services
similar to those of applicant and registrant.”). Further,
the marks which are the subject of such applications and
registrations do not contain both “debt” and “watcher(s)”
and hence differ from “debtwatchers.” Therefore, even if
applicant had shown that the third-party registrations were
in the pertinent field, they would show only that the
Ser No. 77931208
9
individual words “debt” and “watcher(s)” have some
significance in that field.
In sum, although DEBTWATCHER has some suggestiveness
for debt monitoring services, the evidence does not show
that “debtwatcher” is “highly suggestive,” nor does it
support applicant’s contention that “debtwatcher” has been
frequently used or registered by others in the field for
the same or related goods or services. We therefore find
that, even if we accept that applicant’s PRIMERICA house
mark is well-known, the addition of PRIMERICA to
DEBTWATCHER is not sufficient to distinguish PRIMERICA
DEBTWATCHER from DEBTWATCHER in the manner that the
addition of a house mark was found to distinguish the marks
in the cases cited above.8
Next, we note that at least two examples of use of
applicant’s mark in the record undercut applicant’s
argument that PRIMERICA is the dominant portion of its
mark. Applicant’s website depicts applicant’s mark as
follows:

8 In view of applicant’s statement in its reply brief that it
does not rely upon its other registrations as a basis for the
registrability of its mark, we have given no consideration to its
family of marks argument in its main brief.
Ser No. 77931208
10

In both instances, PRIMERICA is depicted in substantially
smaller lettering than DEBTWATCHERS, and in the first case,
in different coloring. Clearly, the emphasis is on the
term DEBTWATCHERS, with PRIMERICA functioning as the house
mark.
Applicant also argues that “the two marks differ
dramatically in their visual appearance due to Registrant’s
stylized red and white ‘stop sign’ design element,” brief
at 14, and that the registrant of the cited mark relied on
this stop sign element in arguing that its mark was
distinguishable over the third-party registration for
DEBTWATCHER mentioned above. While the background element
is not insignificant in that it is recognizable as the
background of a “stop” sign, it would not be articulated as
part of the mark and is not as prominent in forming the
commercial impression of the mark as applicant would have
us believe.
Thus, because both marks include the term
DEBTWATCHERS, and the other elements in the marks do not
Ser No. 77931208
11
serve to distinguish the marks, we find the marks are
similar in sound, meaning and commercial impression and,
because of the prominent word DEBTWATCHERS in both marks,
not entirely dissimilar in appearance.
We now consider the similarity and dissimilarity of
applicant's and registrant’s services. As noted,
registrant’s services are “online counseling, advice and
support to individuals on the subject of reduction and
elimination of personal debt,” and applicant’s services
are:
Providing temporary use of a Web-based software
application, marketed exclusively through the
[proprietor’s] sales force of independent
contractor sales representatives and accessible
only through [the proprietor’s] company branded
website, for assimilating financial information,
namely, financial data provided directly by the
customer and financial data obtained directly
from the customer's consumer credit report, to
permit the customer to formulate and calculate
debt payoff plans.

It is well settled that services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
services are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used in connection with them, to a mistaken belief that
Ser No. 77931208
12
they originate from or are in some way associated with the
same source or that there is an association between the
source of such services. See In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The examining attorney maintains that applicant’s and
registrant’s services “are closely related because third
parties provide similar services under the same mark, these
services are ultimately marketed to the same class of
purchasers, and these consumers are not sufficiently
sophisticated to obviate a finding of likelihood of
confusion.” Brief at unnumbered p. 6. We agree.
The evidence in the record contains websites which
offer debt calculators9 and online counseling to individuals
on the subject of reduction and elimination of personal
debt. See, e.g., (i) consumercredit.com offering a link to
an “Estimate Calculator” and stating “contact our office at
1-800-769-3571 to find out what your true payment would be
in a debt management plan” and “[W]hen you contact ACCC, we

9 Applicant states that “[t]he fact that Registrant’s on-line
counseling may include the ancillary provision of debt
calculation templates, to be filled in manually, as part of
Registrant’s personal advisory services is insufficient to find
the respective services of Registrant and Applicant ‘related’ for
consumer confusion purposes.” Brief p. 19. We disagree - an
online debt calculator falls within applicant’s identification of
services (“online support”) and is prominently featured on the
third-party webpages in the record.
Ser No. 77931208
13
will help you determine the best way to approach your
situation ….” (final office action at 8 and 10); and (ii)
youngmoney.com offering “the Young Money Debt Management
Calculator to find out how much you owe” and links to debt
counseling agencies which “may set up a one-pay plan for
you or negotiate down your debt.”10
In addition, the same persons would encounter both
marks. As is apparent from the identifications of goods as
well as the evidence of record, applicant’s and
registrant’s services are both directed to members of the
general adult population who are in personal debt and who
are having difficulty in making payments on their debts.
Such individuals, who we may assume are not financially
sophisticated (because otherwise they would not require
assistance of the types provided by applicant and
registrant in determining how to pay off debts) are likely
to concurrently use the services identified in the cited
registration for counseling and advice on how to reduce and
eliminate their debts, and use the software application
identified in applicant’s application (which inputs
financial data from consumer credit reports) to formulate

10 The evidence is silent as to whether the software application
is marketed exclusively through the proprietor’s sales force of
independent contractor sales representatives and accessible only
through the proprietor’s company-branded website. For us to find
Ser No. 77931208
14
and calculate debt payoff plans. The use of one service
does not preclude the use of the other service, and, in
fact, the two services can be used together. Because
applicant’s claimed services do not include any online
counseling or advice, as the customer “formulate[s] and
calculate[s] debt payoff plans,” he or she may require the
advice of another on how to prioritize debts or how to
negotiate with lenders to reduce the overall amount of
debt.
Finally, at p. 22 of its brief, applicant states that
the examining attorney must show “something more” to
establish that the services are related, citing In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir.
2003). Coors only applied the “something more” requirement
to the situation where food and beverages and restaurant
services are in issue. Applicant’s argument hence is not
well taken.
We next turn to the du Pont factor regarding trade
channels. As noted, the identification of services
includes the limitation that applicant’s services are
marketed exclusively through its sales force of independent
contractor sales representatives and accessible only

that the services are related, the evidence need not exhibit
these features.
Ser No. 77931208
15
through its company-branded website. At p. 21 of its main
brief, applicant states:
… Applicant markets its software application
tool to customers exclusively through its sales
force of independent contractor sales
representatives, which number approximately
100,000 in the United States. Further … in order
to access Applicant’s software application tool,
a customer must obtain necessary enrollment
information from one of Applicant’s sales
representatives, including the unique five digit
identification code assigned to the particular
representative by Applicant. Thus, a consumer
cannot access Applicant’s software application
tool until the consumer first has a direct
communication with a sales representative of
Applicant regarding the software application
service. As a result, the ability to purchase
the service identified by the Primerica Mark is
restricted to those customers who have had prior
contact with a Primerica representative, with
that contact leading to a discussion between the
representative and customer regarding the service
at issue, and the necessity of having the
representative’s identification code in order to
enroll. After enrolling for access to
Applicant’s software application identified by
the Primerica Mark, the customer thereafter may
only access the software tool via Applicant’s
house mark branded website at my.primerica.com,
which further distinguishes Applicant’s software
application tool from Registrant’s on-line
counseling and personal advisory services.11

The manner in which applicant markets its services
exclusively through its sales force of independent
contractor sales representatives and allows access to

11 Applicant’s point regarding accessing the software tool is
irrelevant to the likelihood of confusion analysis because the
consumer will already be applicant’s customer when he or she is
provided enrollment information including the unique five digit
identification code.
Ser No. 77931208
16
applicant’s services only through applicant’s company
branded website does not remove the likelihood of
confusion. The opportunities for source confusion do not
disappear because the consumer will have to interact with a
member of applicant’s sales force of independent contractor
sales representatives. Both applicant’s and registrant’s
services are directed to the same purchasers who will be
searching for assistance from a variety of sources at the
same time. Consumers who are exposed to both applicant’s
and registrant’s services while seeking assistance will
likely believe that there is some association or
relationship between the source of PRIMERICA DEBTWATCHER
and DEBTWATCHER (and design).12 For example, the consumer
who had contact with applicant’s sales representative who
encounters an advertisement for registrant’s counseling
services is likely to believe that the source of
applicant’s and registrant’s services are the same in view
of the similarities between the marks and the services.

12 Applicant relies on In re The Shoe Works Inc., 6 USPQ2d 1890
(TTAB 1988). However, the facts and circumstances in Shoe Works
included a specific restriction to that applicant's trade
channels in the identification of goods (“sold solely through
applicant's retail shoe store outlets”); a consent agreement
between that applicant and the cited registrant; and an affidavit
from one of that applicant's officers reiterating the absence of
knowledge of any instances of actual confusion by applicant and
registrant. These facts and circumstances are not present in the
appeal now before this Board.
Ser No. 77931208
17
The examining attorney and applicant have discussed
reverse confusion too in the context of Internet searches.
Applicant states at pp. 12- 14 of its reply brief:
Given that Applicant operates a company-branded
website and requires access to its software tool
through that website portal, no consumer would
perceive Applicant as offering counseling
services through some other non-branded website.
Moreover, even assuming arguendo that a consumer
could be confused initially upon seeing the
websites of Registrant and Applicant appear in an
internet search list among other sites using the
“debt watcher” term, upon selecting Registrant’s
site, with one “mouse” click, it would be
immediately apparent that Registrant’s site is
not operated by Primerica and is being operated
by a separate business entity.

… [A]ny potential confusion among such sites
based upon their listing within internet search
results is promptly dispelled upon the consumer’s
clicking onto a site’s homepage and having
immediate access to information about the entity
operating that particular site. Indeed, internet
shoppers, in particular, would be cognizant of
the “About Us” or “Contact Us” options on a
website, which provide detail on the site’s
operator, as shoppers want to know with whom they
are dealing before they submit payment to that
site on-line. In sum, it is highly unlikely that
a consumer on the Registrant’s debtwatchers.net
site would be confused into thinking that
Applicant is providing counseling services
through that site which makes no mention of
Applicant and which does specify another company
as owning the site, providing the counseling
services, and accepting payment for those
services.

In In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690 (Fed. Cir. 1993), the Federal Circuit stated that
“[t]he trademark law not only protects the consumer from
Ser No. 77931208
18
likelihood of confusion as to commercial sources and
relationships, but also protects the registrant and senior
user from adverse commercial impact due to use of a similar
mark by a newcomer,” i.e., from “reverse confusion.” Even
if PRIMERICA in applicant’s mark is well-known, the
opportunity for reverse confusion presents itself. Both
applicant and registrant’s marks include the term
DEBTWATCHER and applicant has not established that it is
highly suggestive or commonly used or registered. Further,
applicant’s point about mitigating any potential confusion
in the context of internet searches is not persuasive. If
the consumer had a preference for not using a product which
appeared to the consumer to be associated with applicant,
there are no assurances that the consumer would select
registrant’s website when seeing the term DEBTWATCHER in
his or her search results. Additionally, it is the
recitation of services in the application and registration,
and not actual use of the marks, that we must look to in
determining applicant's right to register, see Octocom
Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application
Ser No. 77931208
19
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 sales
of the goods are directed.”). Thus, applicant’s arguments
regarding other webpages and other information on the
websites is of no avail.
Hence, we find that applicant’s restrictions regarding
marketing its services exclusively through its sales force
of independent contractor sales representatives and its
services being accessible only through its company-branded
website do not render unlikely the opportunities for
confusion.
We have also considered applicant's additional
arguments in support of registration of its mark, but have
not found them to be persuasive.
Thus, in consideration of the foregoing, we find that
purchasers familiar with registrant's services offered
under the mark DEBTWATCHER and design would be likely to
believe, upon encountering applicant's mark PRIMERICA
DEBTWATCHER for the services recited in its application,
that they originate with or are associated with the same
entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.