Superior Access Insurance Services, Inc.

Trademark Trial and Appeal Board

May 13, 2009

No. 77399607 (T.T.A.B. May. 13, 2009)

Mailed: May 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Superior Access Insurance Services, Inc.
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Serial No. 77399607
_______

Tawnya R. Wojciechowski of TRW Law Group for Superior
Access Insurance Services, Inc.

Shannon M. Twohig, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On February 18, 2008, Superior Access Insurance
Services, Inc. applied to register the mark CIS TEXAS in
standard characters on the Principal Register based on a
bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1052(b), for
services identified as “insurance brokerage services,
insurance consultation services, wholesale insurance
underwriting services in the fields of automobile,
commercial automobile, marine, homeowners, apartment, fire,
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77399607
2
earthquake, flood, personal property, personal liability,
personal umbrella, professional liability, contractor
liability, life, health, accident, medical, worker’s
compensation, in-home business, commercial umbrella,
unemployment, bond and multiple lines of business
insurance” in International Class 36. In addition, in
response to a requirement from the examining attorney,
applicant disclaimed the word TEXAS.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the registered marks CIS RISK GROUP in typed
form with the wording “RISK GROUP” disclaimed for
“insurance services, namely, insurance underwriting,
insurance claims administration, and insurance agencies in
the field of property, casualty, life, automobile, boat,
farm and ranch, flood, workers compensation, mortgage
protection, renters, townhouse, condominium, and
homeowners; insurance brokerage in the field of automobile
insurance and home insurance,” in International Class 36
owned by Computer Risk Management, Inc.,1 and for
“insurance agencies in the field of property, general

1 Registration No. 2969264, issued on July 19, 2005.
Serial No. 77399607
3
business liability, automobile, workers’ compensation,
professional liability, employment practices, fidelity
crime, equipment breakdown, excess liability and employee
benefits liability” owned by Commercial Insurance Solutions
Group, L.L.C.,2 as to be likely to cause confusion, mistake
or deception.
Applicant has appealed the final refusal and the
appeal is fully briefed. We affirm the refusal to
register.
As a preliminary matter, we address an evidentiary
issue. The exhibits attached to applicant’s main brief and
reply brief are untimely and the examining attorney’s
objection to them is sustained. Trademark Rule 2.142(d).
In view thereof, we have not considered them.3
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 3385082, issued on February 19, 2008.

3 We add that consideration of this material would not change the
decision. Registrations for unrelated goods or services are not
evidence of any meaning or significance CIS may have in the
insurance industry. In addition, a printout of a search result
Serial No. 77399607
4
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant’s wholesale insurance underwriting services
in various fields are encompassed by the insurance
underwriting services in various fields in Reg. No.
2969264. Further, applicant’s insurance brokerage services
are closely related to the insurance agency services in
Reg. Nos. 2969264 and 3385082. Octocom Systems, Inc. v.
Houston Computers Services 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 [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed”). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002). The examining attorney has
submitted several third-party use-based registrations that

list from a search engine has limited probative value. In re
Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).
Serial No. 77399607
5
show numerous entities have adopted a single mark for the
services identified in applicant’s application and the
services in registrants’ registrations. See, e.g., Reg.
No. 3194990 (DICEROS for insurance agency, insurance
brokerage, and insurance underwriting services); Reg. No.
3522491 (Design Mark for insurance services, namely,
insurance brokerage services; insurance general agency
services); Reg. No. 3217851 (DACOTAH INSURANCE for
insurance agency and brokerage); and Reg. No. 3292226
(RESPONSIBILITY. WHAT”S YOUR POLICY? for insurance
underwriting, insurance brokerage services). See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
(third-party registrations serve to suggest that the goods
and/or services listed therein are of a kind that may
emanate from a single source).
Furthermore, inasmuch as registrants’ services
encompass or are closely related to applicant’s services,
we must presume that the purchasers and channels of trade
for such services would also overlap. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ foods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
Serial No. 77399607
6
purchasers through the same channels of trade”). Finally,
applicant has conceded that the services are “admittedly
very similar.” Br. p. 6.
In view of the above, we find that the services are
related and the channels of trade, and classes of customers
overlap.
In determining the similarity between the marks we
analyze “the marks in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567. While it is a basic
principle that “marks must be compared in their
entireties...[t]hat a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Finally, where
as in the present case as to Reg. No. 2969264, registrant’s
services encompass, at least in part, applicant’s services,
the degree of similarity between the marks which is
necessary to support a finding of likelihood of confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Serial No. 77399607
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The letters CIS are the dominant feature in
applicant’s and registrants’ marks. The additional words
in Registration No. 2969264, RISK GROUP, and applicant’s
mark, TEXAS, are respectively descriptive and
geographically descriptive. Disclaimed wording is
typically less significant in determining the similarity
between marks. See In re National Data Corp., 224 USPQ at
751. Thus, CIS is likely to be most noted and remembered
inasmuch as it is the sole distinctive term in the marks.
Further, the triangle design in Reg. No. 3385082
merely serves as a background or carrier design for the
literal element CIS and makes less of a visual impression
than CIS. It is well-settled that if a mark comprises both
a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Thus, CIS is
the portion of registrant’s mark to which the viewer is
drawn, and the portion that the viewer is most likely to
remember, and the portion by which consumers will refer to
or request the identified services.
Finally, we note that CIS is the first portion of
applicant’s mark and the mark in Reg. No. 2969264. It is
“a matter of some importance since it is often the first
Serial No. 77399607
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part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Products,
Inc., v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988). See also Palm Bay Imports, 73 USPQ2d at 1692. In
view of the above, we find applicant’s mark to be similar
to each of the marks in the cited registrations.
In making our finding, we have considered applicant’s
evidence and argument that the CIS is weak in the field of
insurance. In support of this argument applicant submitted
three third-party registrations. Registrations are not
evidence of use of the marks shown therein; thus, they are
not proof that consumers are familiar with such marks so as
to be accustomed to the existence of the same or similar
marks in the marketplace. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1407, 177
USPQ 268 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). However,
these registrations, similar to a dictionary definition,
may be used to demonstrate that a particular term has some
significance in an industry. This record, consisting of
three third-party registrations (or five including the
cited registrations) does not support a finding that CIS
has a specific meaning in this field such that consumers
Serial No. 77399607
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would look to other elements to determine source. First,
Reg. No. 1299872 for the mark for the
“administration of insurance” and Reg. No. 2452720 for the
mark for “consultation, administration,
underwriting and claims processing in the field of crop
insurance” are cancelled and as such have little probative
value. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1048 (TTAB 2002). In addition, both marks are very
different from the cited marks and applicant’s mark. It is
not clear that consumers would even perceive the mark in
Reg. No. 1299872 as incorporating CIS rather than merely CS
in view of the added wording Consolidated Services in the
mark.4 In Reg. No. 2452720 the letters C.I.S. appear with
the wording Crop Insurance Services clearly indicating it
is the abbreviation for this wording. The third example,
Reg. No. 3147799, for the mark CIS Construction Insurance
Solutions, also includes the phrase for which CIS is an
abbreviation. We further note that the services in this
registration are limited to a very specific field in the
insurance industry, namely, the “construction industry.”
These examples do not point to a specific meaning for CIS

4 While we recognize the registration includes a description of
the mark as comprising the letters CIS, consumers in the
marketplace are not privy to this information.
Serial No. 77399607
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in the insurance industry, but rather, merely show that CIS
can be an abbreviation for a variety of words.
Applicant also submitted evidence in the form of web
pages from 14 different third-party websites where CIS is
displayed. Applicant argues that CIS is “widely used as an
acronym in the insurance services industry.” Br. p. 6.
The following examples are illustrative:
CIS GROUP ... Commercial Insurance Services, Inc.
specialized products and services for the
commercial insurance buyer. cisinsgroup.com;

City County Insurance Services ... The CIS
Workers’ Compensation Group Program is structured
much like an insurance company, with the
distinction that we write exclusively municipal
government risks in the context of a pooling
structure. cciservices.com;

CIS Insurance & Financial Services ... Our
mission is to provide, risk management and
insurance solutions through a caring team of
professionals who are dedicated to client
satisfaction. cisins.com; and

CIS ... Center For Insurance Studies ... CIS is
committed to helping CSUF traditional and
nontraditional students and alumni find
professional employment and assist industry
recruiters in targeting ideal potential
employees. business.fullerton.edu.

First, the probative value of this evidence is limited
because applicant presented no evidence concerning the
extent to which these third-party designations are used in
commerce. For example, it is not known how frequently
these websites are viewed or how broad the consumer base is
Serial No. 77399607
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for these apparently specialized services. Second, several
of the services are quite specialized (commercial
insurance, workers compensation for municipal government
employers and education services). This record simply does
not establish that CIS has been severely diluted in the
field of insurance, and, in particular, in underwriting and
brokerage services. See Broadway Chicken, Inc., 38 USPQ2d
1559 (TTAB 1996) (BROADWAY weak for restaurant services
based on evidence that hundreds of restaurants and eating
establishments use that word). Thus, applicant’s evidence
does not establish that there is widespread use of similar
marks for insurance underwriting or brokerage services such
that registrants’ marks are weak and entitled to only a
narrow scope of protection.
In any event, even if we were to find, based on
applicant’s evidence, that registrants’ marks are weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of a highly
similar mark for identical or closely related services.
See In re Farah Mfg. Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
Finally, applicant argues that the examining attorney
has “ignored the co-existence of the cited registrations”
for “identical services” and contends its application may
Serial No. 77399607
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“co-exist peacefully on the Principal Register.” Reply Br.
p. 1. As noted by the examining attorney, the Board is not
bound by decisions made in other applications. See In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). See also In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Each case must be decided on its own facts and “we
will not compound the problem of the registration of a
confusingly similar mark by permitting such a mark to
register again.” In re Thomas, 79 USPQ2d 1021, 1028 (TTAB
2006).
In conclusion, we find that because the marks are
similar, the services are legally identical or closely
related, and the channels of trade and purchasers overlap,
confusion is likely between applicant’s mark for its
identified services and the marks in the cited
registrations.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.