The Allied Companies, Inc.

Trademark Trial and Appeal Board

Jun 15, 1999

No. 74304743 (T.T.A.B. Jun. 15, 1999)

Paper No. 14
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 15, 1999
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Allied Companies, Inc.
________
Serial No. 74/304,743
_______
Robert C. Collins of Barnes, Kisselle, Raisch, Choate,
Whittemore & Hulbert, P.C. for The Allied Companies, Inc.
Craig D. Taylor, Trademark Examining Attorney, Law Office
107 (Tom Lamone, Managing Attorney)
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Allied Companies, Inc. has appealed the refusal of
the Trademark Examining Attorney to register the mark THE
ALLIED COMPANIES and design (COMPANIES disclaimed), as
Ser. No. 74/304,743
2
shown below, for the services of "administering employee
benefit plans and retirement plans."1
The lining shown in the drawing is a feature of the mark
and is not intended to indicate color.
Registration has been refused on the ground that
applicant’s mark, as used in connection with its identified
services, so resembles the mark ALLIED INSURANCE COMPANY,
with the words "insurance company" disclaimed, originally
registered by Allied Insurance Company and now owned by
Cygna Company for underwriting insurance services,2 and the
following four marks, all owned by Allied National, Inc.,
as to be likely to cause confusion or mistake or to
deceive:
with the words
"employers association"
disclaimed, for group
health insurance
administration services3

1 Application Serial No. 74/304,743, filed August 17, 1992, and
asserting first use and first use in commerce in January 1985.
2 Registration No. 982,111, issued April 9, 1974; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
3 Registration No. 1,979,087, issued June 11, 1996.
Ser. No. 74/304,743
3
with the words "group
insurance trust"
disclaimed, for
"administration of group
health insurance4
with the words
"employees association"
disclaimed, for group
health insurance
administration services5
with the word
"administrators"
disclaimed, for
administration of group
health insurance6
Both applicant and the Examining Attorney filed
briefs, and applicant filed a reply brief. An oral hearing
was not requested.
We affirm the refusal on the basis of all five cited
registrations.
As a preliminary point, we note that with its appeal
brief applicant submitted as an exhibit (I) portions of the
files of one of the cited registrations, No. 1,958,186, and
stated that because the Examining Attorney had access to
Patent and Trademark Office records, he could take judicial
notice of the contents of the rest of the registration

4 Registration No. 1,959,495, issued March 5, 1996.
5 Registration No. 1,970,702, issued April 30, 1996.
6 Registration No. 1,958,186, issued February 27 1996.
Ser. No. 74/304,743
4
files. Applicant also submitted with its brief an exhibit
(H) with information regarding what it asserted to be
third-party registrations. The Board does not take
judicial notice of registrations that reside in the Patent
and Trademark Office; further, the submission of a list of
registrations is insufficient to make them of record. See
In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Moreover,
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of an
appeal. The exhibits submitted by applicant with its
brief, which were not previously made of record, are
clearly untimely. Because the Examining Attorney has not
discussed these exhibits in his brief, and therefore cannot
be said to have stipulated them into the record, they have
not been considered.
In any determination of likelihood of confusion, two
key factors are the similarity of the marks and the
similarity of the goods or services. Turning first to the
services, applicant’s services are identified as
"administering employee benefit plans and retirement
plans," while the services of the registration for ALLIED
INSURANCE COMPANY are identified as "underwriting
insurance" and the services in the four registrations owned
by Allied National are essentially group health
Ser. No. 74/304,743
5
administration services. Although applicant’s services are
not identical to either of the cited registrant’s services,
it is well established that
it is not necessary that the goods [or
services] of the parties be similar or
competitive, or even that they move in
the same channels of trade to support a
holding of likelihood of confusion. It
is sufficient that the respective goods
[or services] of the parties are
related in some manner, and/or that the
conditions and activities surrounding
the marketing of the goods [or
services’ are such that they would or
could be encountered by the same
persons under circumstances that could,
because of the similarity of the marks,
give rise to the mistaken belief that
they originate from the same producer.
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
In this case, the relationship between applicant’s and
the registrant’s services is made manifest by the fact that
applicant itself offers such services under the same mark.
The brochure submitted with applicant’s application, shows
that applicant uses its applied-for mark THE ALLIED
COMPANIES and design for, inter alia, property and casualty
insurance services and services for all areas of group
benefits, including medical plans, dental insurance and a
prescription drug program. This brochure demonstrates that
a single source may make available the three types of
Ser. No. 74/304,743
6
services identified in the cited registrations and
applicant’s application, and may offer them under a single
mark.
Further, although applicant asserts that its services
of "administering employee benefit plans and retirement
plans" are dissimilar from the "administering group health
insurance" services of Allied National, applicant’s
brochure indicates that employee group benefits would
include health insurance:
In addition to a paycheck, more and
more employees are attuned to the need
and value of group benefits as part of
their total compensation package....
***
Allied Group Insurance offers complete
services in all areas of group
benefits:
0HGLFDO3ODQV
-Traditional
-Health Maintenance Organizations
(HMO’s)
-Preferred Provider Organizations
(PPO’s)
Thus, applicant’s "administering employee benefit plans"
would appear to encompass Allied National’s administration
of group health insurance.
Applicant has attempted to distinguish its services
from those of the cited registrations by relying on
assertions about the registrants’ services made by Allied
Ser. No. 74/304,743
7
National during the prosecution of one of its applications,
and in a consent given by the owner of the ALLIED INSURANCE
COMPANY registration to the registration of Allied
National’s marks. However, the registration file which
assertedly contains these statements and consent is not
part of the record. As noted previously, applicant’s
submission of these papers was untimely, and therefore has
not been considered. Accordingly, there is no evidentiary
support for applicant’s assertions.
Moreover, any evidence regarding the actual services
rendered by the owners of the cited registration would not
serve to limit the scope of the services identified in
their registrations. The question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant's application vis-à-vis the goods and/or services
recited in the cited registration, rather than what the
evidence shows the goods and/or services to be. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
Simulations Publications, Inc., 521 F.2d 797, 187 USPQ 147
(CCPA 1975); In re Allen Electric and Equipment Company,
458 F.2d 1404, 173 USPQ 689 (CCPA 1972); In re William
Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
Ser. No. 74/304,743
8
Applicant’s services of administering employee benefit
plans and retirement plans would appear to be directed to
the same class of consumers as Allied National’s services
of administering group health insurance, namely businesses.
The underwriting insurance services identified in the
registration for ALLIED INSURANCE COMPANY is not limited as
to channels of trade, and we see no reason why that
registrant’s services could not be offered to the same
people to whom applicant’s services are directed.
Moreover, although the Allied National services and
applicant’s services may be directly offered to and
purchased by companies in connection with their employee
benefit plans or group health insurance, the ultimate
beneficiaries of the services are the employees who work
for those companies. Thus, ordinary consumers, and not
only sophisticated purchasers, are likely to be exposed to
applicant’s and the registered marks.
This brings us to a consideration of the marks.
Applicant has made a very detailed analysis of its mark in
an attempt to contradict the Examining Attorney’s
conclusion that ALLIED is not the dominant part of its
mark. We will not discuss these arguments in detail, but
will say that we find many of statements to be farfetched,
and the overall argument unpersuasive. Clearly, the design
Ser. No. 74/304,743
9
of an "A" is a large and noticeable part of applicant’s
mark. However, it is the word portion that is more likely
to make an impression on consumers, because it is by the
words that they will refer to and remember the mark. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
And, notwithstanding applicant’s arguments about ALLIED
being subordinated because it is the middle of the three
words THE ALLIED COMPANIES, and that COMPANIES is dominant
because it appears alone and has a line below it, we find
that the word ALLIED is the dominant part of the mark. The
word THE, in general, has little significance because it is
omnipresent. In this regard, we take judicial notice that
indexes and directories ignore the word "the" for purposes
of alphabetizing entries. The word COMPANIES, too, has
little origin-indicating significance since it is a common
term to describe a business. Applicant apparently
recognized this fact because, as part of its initial
application papers, it disclaimed exclusive rights to use
this word. Not only is the word ALLIED the strongest
source-indicating feature of THE ALLIED COMPANIES, but this
word is emphasized by the large letter "A" design.
Similarly, ALLIED is the dominant element of each of
the cited registrations. In ALLIED INSURANCE COMPANY the
word ALLIED is the only source-indicating word, INSURANCE
Ser. No. 74/304,743
10
COMPANY being descriptive for the service of underwriting
insurance, as the registrant’s disclaimer of these words
acknowledges. In the four registrations owned by Allied
National, ALLIED is clearly the dominant term. Not only is
it shown in a larger size than the other words in those
marks, but the other words merely describe the services, as
the disclaimers for those words indicate. We acknowledge
applicant’s statement that the public is not aware of
disclaimers, but they are aware of the descriptive
significance of words. The public would clearly view the
word ALLIED in each of the cited marks as indicating the
source of the services; the remaining elements would be
seen as simply describing the services emanating from
ALLIED.
Although we have discussed at some length our reasons
for finding ALLIED to be the dominant term in applicant’s
and the registrants’ marks, we wish to make clear that we
have compared the marks in their entireties, and not simply
the word ALLIED alone. However, it is well established
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, as long as the
ultimate conclusion rests on a consideration of the marks
in their entireties, there is nothing improper in stating
that, for rational reasons, more or less weight has been
Ser. No. 74/304,743
11
given to a particular feature of a mark. See In re In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Accordingly, although applicant details specific
differences in the appearances, pronunciations and
connotations between its mark and the cited registrations,
applicant’s mark and each of the cited marks convey similar
commercial impressions, such that consumers, even if they
were to note the specific differences, would still be
likely to think that applicant’s mark was a variation of
the cited marks, rather than indicating a separate source
of origin. We would also point out that, under actual
marketing conditions, consumers do not have the luxury of
making side-by-side comparisons between marks, and instead
must rely on hazy past recollections. See Dassler KG v.
Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980). Thus,
even though we acknowledge that the purchase of applicant’s
and the registrant’s services is not done on impulse,
consumers, even sophisticated ones, are likely to be
confused as to the source of the various services because
of the similarity of the marks.
Applicant has argued that the only element common to
the marks, the word ALLIED, is weak. We see nothing about
the dictionary definitions of "allied" quoted by applicant-
Ser. No. 74/304,743
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-"joined, connected; joined in alliance by compact or
treaty; related esp. by common properties, characteristics
or ancestry"--which indicates that this word is even
suggestive of underwriting insurance, administering group
health insurance, or administering employee benefit plans
and retirement plans. Applicant has also made of record a
listing of 158 company names containing the word "Allied,"
along with the addresses of these companies. Applicant
asserts that this is a summary of website "hits" retrieved
through a search of the Internet. This listing is of very
little probative value in terms of showing that the public
is familiar with third parties having services similar to
applicant’s or to the two registrant’s. For example, it is
not clear from the summary whether each listing represents
a separate company, or are branch offices of a single
company. In this connection, we note that there are 18
listing for Allied Auto Insurance at various locations in
South Florida. Nor can we determine from the summary
whether these listings are all for third parties, or
whether some of the listings are for the registrants or
applicant. For example, there is a listing for The Allied
Companies, Inc. with applicant’s address in Michigan, which
we presume refers to applicant itself. Another listing for
Allied Group Insurance, with an address in Royal Oak,
Ser. No. 74/304,743
13
Michigan, may refer to applicant’s Allied Group Insurance
Services, Inc. Similarly, the numerous references to
Allied Insurance or Allied Insurance, Inc. may well be
listings for the owner of the ALLIED INSURANCE COMPANY
registration. Simply put, the summary submitted by
applicant of its Internet search is not sufficient to prove
that the word ALLIED is weak, such that the consuming
public would be able to distinguish applicant’s mark from
the marks of the cited registrations based on the
additional elements in applicant’s mark.7
The only indication of any weakness of the term ALLIED
is the fact that both of the registrants have adopted the
term as part of their marks. However, the fact that two
companies have used this word is an insufficient basis for
us to conclude that it is a weak term in the insurance and
financial field, and that the owners of these registrations
are entitled to a limited scope of protection.
Applicant also points to the fact that Allied
National’s registrations were registered despite the
existence of the registration for ALLIED INSURANCE COMPANY
in support of its claim that there is no likelihood of

7 As noted previously, the listing of third-party registrations
submitted by applicant with its brief was not properly made of
record and has not been considered.
Ser. No. 74/304,743
14
confusion between applicant’s mark and the cited
registrations. However, the files of these registrations
were not properly made of record, and therefore we do not
know the basis for the Examining Attorney’s conclusion that
confusion between the Allied National marks and ALLIED
INSURANCE COMPANY was not likely. Certainly there can be
evidentiary factors, such as a consent agreement, which may
persuade an Examining Attorney that one mark is registrable
despite the existing registration of a similar mark, when
another mark is found to be unregistrable.
Finally, applicant argues that it is unaware of any
instances of actual confusion and that this indicates that
confusion is not likely. Applicant asserts use of its mark
since 1985, but has acknowledged that such use in primarily
in the Southeast Michigan area. We cannot conclude based
on the evidence of record that there has been an
opportunity for confusion to have occurred, such that we
can conclude from the lack of such evidence that confusion
is not likely. First, we have no information from the
registrants about whether they have encountered any actual
confusion. Second, and more importantly, we have no
information about the extent of the registrants’ use, and
very little information about the amount of applicant’s
use. Even from the information we do have, however, it
Ser. No. 74/304,743
15
appears that applicant’s services have been rendered in a
relatively limited geographic area, and this could well
explain why applicant is not aware of any actual confusion.
Decision: The refusal to register on the basis of the
five cited registrations is affirmed.
E. J. Seeherman
C. E. Walters
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board