Reliance Insurance Co.

Trademark Trial and Appeal Board

Sep 15, 1999

No. 74659694 (T.T.A.B. Sep. 15, 1999)

Hearing: Paper No. 20
February 25, 1999 SIMMS/md
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Reliance Insurance Company
________
Serial No. 74/659,694
_______
David E. Dougherty for Reliance Insurance Company
Howard B. Levine, Trademark Examining Attorney, Law Office
105 (Tom Howell, Managing Attorney)
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Reliance Insurance Company (applicant), a Pennsylvania
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark VIRTUAL
RELIANCE for insurance underwriting services, namely,
property and casualty insurance.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15

1 Application Serial No. 74/659,694, filed April 12, 1995, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
Ser. No. 74/659,694
2
USC §1052(d), on the basis of Registration No. 2,011,409,
issued October 29, 1996, for the mark THE VIRTUAL INSURANCE
COMPANY, “INSURANCE COMPANY” disclaimed, for underwriting
and administering of property casualty insurance.
Applicant and the Examining Attorney have submitted briefs,
and an oral hearing was held.
We reverse.
It is the Examining Attorney’s position that, although
the respective marks must be considered in their
entireties, one feature of a mark may be recognized as more
significant in creating a commercial impression. In this
regard, the Examining Attorney argues that term “VIRTUAL”
is the most significant part of the registered mark THE
VIRTUAL INSURANCE COMPANY and that, according to the
trademark register, registrant’s mark is the only
registered mark in the insurance field that contains the
term “VIRTUAL.” Concerning applicant’s mark, the Examining
Attorney argues that consumers will see the term “RELIANCE”
as a house mark but will use the term “VIRTUAL” to call for
applicant’s services.
Here…consumers will see the RELIANCE
portion of the applicant’s mark as a
housemark and will use the term VIRTUAL
to call for the services. The term
VIRTUAL will serve as an independent
source indicator for the services.
Thus, taking into account the fact that
Ser. No. 74/659,694
3
the registrant’s mark is the only
registered mark in the insurance field
using the term VIRTUAL, it is likely
that consumers familiar with the
registrant’s services offered under the
THE VIRTUAL INSURANCE COMPANY mark,
upon encountering the applicant’s
proposed VIRTUAL RELIANCE mark, will
mistakenly believe that the services
come from the same source.
Examining Attorney’s brief, 4-5. The Examining Attorney
also argues that, in this case, the first part of
applicant’s mark may be likely to be impressed on the minds
of potential purchasers. The Examining Attorney also asks
us to resolve any doubt on the question of likelihood of
confusion in favor of the registrant and prior user. The
Examining Attorney has made of record a dictionary
definition of the word “virtual.”
Applicant, on the other hand, maintains that the two
marks being compared are different in sound, appearance and
meaning. In this regard, applicant argues that its mark
VIRTUAL RELIANCE creates a very different commercial
impression from the registered mark THE VIRTUAL INSURANCE
COMPANY. Applicant argues that the term “RELIANCE” in
applicant’s mark provides a “recognizable difference”
between its mark and registrant’s mark. Applicant also
argues that the Examining Attorney has no basis for saying
that the term “VIRTUAL” is the dominant part of applicant’s
Ser. No. 74/659,694
4
mark, applicant contending that the term “RELIANCE” is at
least as dominant and may in fact be the more dominant part
of its mark. It is applicant’s position that it is not
possible to generalize that the first word is always more
dominant than the second.
Applicant also argues that the term “VIRTUAL” is a
“widely used descriptive adjective” which is used in
closely related fields, as evidenced by various third-party
registrations which it has submitted. Applicant argues
that this term has recently come into relatively common
use. Applicant has also submitted copies of what it has
termed its “family” of RELIANCE registered marks, such as
RELIANCE INSURANCE COMPANY, RELIANCE SURETY COMPANY,
RELIANCE REINSURANCE COMPANY, RELIANCECARE, etc. It is
applicant’s position that, in the insurance field,
“RELIANCE” is a well-known mark and that applicant’s
proposed mark is clearly associated with applicant’s other
RELIANCE marks.
With respect to the services, it is applicant’s
position that they are relatively expensive services
offered to relatively discriminating customers such as
business managers and executives, and that buyers who are
selecting property and casualty insurance will exercise the
necessary care in their purchasing decision.
Ser. No. 74/659,694
5
Upon careful consideration of this record and the
arguments of the attorneys, we agree with applicant that
confusion is unlikely. The marks THE VIRTUAL INSURANCE
COMPANY and VIRTUAL RELIANCE have obvious differences in
sound and appearance. With respect to meaning or
commercial impression, the registered mark THE VIRTUAL
INSURANCE COMPANY would appear to signify that the
registrant may appear to be in effect an insurance company
although it may not actually be one. Applicant’s mark, on
the other hand, would appear to suggest, if one were to
attempt to place a meaning on it, that applicant’s services
may be counted on to be reliable. In any event, these
marks have obvious differences. See Champagne Louis
Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459 (Fed. Cir. 1998)(no likelihood of confusion
between CRISTAL and CRISTAL CHAMPAGNE on the one hand and
CRYSTAL CREEK on the other). Moreover, we do not believe
that there is any basis for concluding that purchasers will
use the term “VIRTUAL” in calling for applicant’s services,
rather than VIRTUAL RELIANCE, as the Examining Attorney
contends.
With respect to the services, although they are almost
identically described, we agree with applicant that some
care would be used in the selecting and purchasing of
Ser. No. 74/659,694
6
insurance underwriting services and into discerning the
source of those services. In conclusion, we do not believe
it likely that purchasers of applicant’s VIRTUAL RELIANCE
services will believe that those services are provided by
or emanate from registrant because both marks contain the
word “VIRTUAL.” That is not to say that, given a different
record in an inter partes case, we may not reach a
different result if there was evidence persuasive of a
different outcome.
Decision: The refusal of registration is reversed.
R. L. Simms
T. J. Quinn
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board