Castlepoint Holdings, Ltd.

Trademark Trial and Appeal Board

Mar 24, 2008

No. 78757509 (T.T.A.B. Mar. 24, 2008)

Mailed:
March 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Castlepoint Holdings, Ltd.
________

Serial No. 78757509
Serial No. 78757511
_______

Amy E. Carroll of Drinker Biddle & Reath LLP for
Castlepoint Holdings, Ltd.

Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Drost, Bergsman and Mermelstein, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Castlepoint Holdings, Ltd. filed intent to use
applications for the marks CASTLEPOINT INSURANCE COMPANY,
in standard character format (Serial No. 78757509),1 and
CASTLEPOINT SPECIALTY INSURANCE COMPANY, in standard
character format (Serial No. 78757511),2 both for the
following services:

1 Applicant disclaimed the exclusive right to use the words
“Insurance Company.”
2 Applicant disclaimed the exclusive right to use the words
“Specialty Insurance Company.”
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
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Insurance services, namely, underwriting of casualty
insurance, property insurance, general liability
insurance, workers' compensation liability insurance,
commercial auto insurance, commercial umbrella
liability insurance coverage for mercantile and
services, restaurant liability insurance, construction
liability insurance, and real estate liability
insurance, and providing ancillary services thereto,
namely insurance administration and insurance claims
adjustment; commercial insurance underwriting services
in the fields of liability insurance, business
interruption insurance, and business property
insurance and providing ancillary services thereto,
namely insurance administration and insurance claims
adjustment; wholesale and retail insurance brokerages
in the field of property and casualty insurance;
insurance claims adjustment services; insurance
services, namely, reinsurance underwriting and
brokerage services, insurance administration,
insurance consultation, risk management services,
claims processing, and claims adjustment services in
the field of reinsurance; insurance claims services,
namely, providing multi-line loss adjustment services,
in Class 36.

The Examining Attorney refused both applications under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s marks are likely
to cause confusion with the mark CASTLE POINT MORTGAGE, in
standard character format, for “mortgage banking services,”
in Class 36.3
Because both applications are owned by the same
applicant and share common questions of fact and law, we
have consolidated the appeals.

3 Registration No. 3068067, issued March 14, 2006.
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3
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”).
A. The similarity or dissimilarity and nature of the
services.

The cited registration is for mortgage banking
services. A “mortgage banker” is “[a]n individual or
organization that originates real-estate loans for a fee,
resells them to other parties, and services the monthly
payments.”4 Indeed, the registrant’s website states that

4 Black’s Law Dictionary, p. 1029 (7th ed. 1999). The Board may
take judicial notice of dictionary evidence. University of Notre
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registrant provides mortgage loans for buying or
refinancing homes.5
Applicant, on the other hand, is seeking to register
its marks for a full line of insurance services (e.g.,
underwriting, brokerage, administration, and claims
adjustment). “Insurance” is “coverage by contract whereby
for a stipulated consideration one party undertakes to
indemnify or guarantee another against loss by a specified
contingency or peril.”6
While mortgage banking services and insurance services
are different, the issue is not whether purchasers would
confuse the services, but rather whether purchasers are
likely to confuse the source of the services. Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989); In re Permagrain Products, Inc., 223 USPQ
147, 148 (TTAB 1984). See also Harvey Hubbell Inc. v.
Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975)
(“In determining whether products are identical or similar,
the inquiry should be whether they appeal to the same

Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 www.castlemortgage.com attached to applicant’s November 30,
2006 Responses.
6 Webster’s Third New International Dictionary of the English
Language Unabridged, p. 1173 (1993).
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market, not whether they resemble each other physically or
whether a word can be found to describe the goods of the
parties”). Thus, it is sufficient if the respective
services are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The Examining Attorney argued that the 45 third-party
registrations she submitted show that “many parties provide
mortgage banking service and insurance and underwriting
services.”7 The following registrations are representative
of the evidence submitted by the Examining Attorney:8
Mark Reg. No. Services

PATRION 297187 Underwriting auto, casualty, life,
health, fire, disability, and workers
compensation insurance; mortgage
banking services

7 The Examining Attorney’s Briefs, page 5.
8 In the following table, we have not included the entire
description of services for each registration. Only the relevant
services are listed.
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Mark Reg. No. Services

IMBD 3010930 Underwriting accident, health, fire,
and life insurance; mortgage banking
services

IRWIN 2672393 Insurance brokerage and underwriting
credit life reinsurance; mortgage
banking services

MAINSOURCE
MORTGAGE
3074154 Underwriting and brokerage services
in the fields of health, property,
life, and casualty insurance;
mortgage banking services

POPULAR 2991584 Insurance services, namely,
underwriting services and insurance
claims processing, insurance
brokerage services; mortgage banking
services

These third-party registrations, based on use in commerce,
have probative value to the extent that they serve to
suggest that the services may emanate from a single source.
In re Infinity Broadcasting Corporation, 60 USPQ2d 1214,
1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29
USPQ2d at 1785-1786; In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1267, 1270 n.6 (TTAB 1988).
Applicant argued that its marks “identif[y] insurance
and reinsurance services, which are offered to primary
insurance companies and wholesale insurance brokers,” and
that “[a]pplicant provides insurance services to insurance
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and reinsurance brokers.”9 However, applicant’s description
of services are not limited to insurance companies,
wholesale insurance brokers, or insurance and reinsurance
brokers. In an ex parte appeal, likelihood of confusion is
determined on the basis of the services as they are
identified in the application and the cited registration.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William
Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also
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 set forth in the application
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 the
sales of goods are directed”). As the Court of Customs and
Patent Appeals, the predecessor of our primary reviewing
court, explained in Tuxedo Monopoly, Inc. v. General Mills
Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any

9 Applicant’s Briefs, pp. 5-6.
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restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Accordingly, we cannot consider applicant’s argument.
In view of the foregoing, we find that the similarity
or dissimilarity and nature of the services favors finding
that there is a likelihood of confusion.
B. The similarity or dissimilarity of established,
likely-to-continue trade channels and classes of
consumers.

Neither the Examining Attorney, nor the applicant,
submitted any evidence regarding channels of trade or
classes of consumers. However, as discussed in the
previous section, there are no restrictions or limitations
in the description of services for the applications or the
cited registration. Absent such restrictions or
limitations, we must assume that the services travel in
“the normal and usual channels of trade and methods of
distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983). See also Octocom Systems, Inc.
v. Houston Computers Services Inc., 16 USPQ2d at 1787.
Accordingly, both applicant’s insurance services and
registrant’s mortgage banking services are presumed to move
in all normal channels of trade and be available to all
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classes of potential consumers. Venture Out Properties LLC
v. Wynn Resorts holding LLC, 81 USPQ2d 1887, 1894 (TTAB
2007); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). People
in need of insurance services may also need mortgage
banking services.
Applicant argued that “[e]ven assuming arguendo that
the parties’ services were deemed related, the differences
between the consumer groups as well as the sophistication
of the purchaser (see discussion below) precludes any
likelihood of confusion.”10 Presumably, applicant’s
reference to “the differences between consumer groups”
relates to its argument that its services “are offered to
primary insurance companies and wholesale insurance
brokers,” and that “[a]pplicant provides insurance services
to insurance and reinsurance brokers.” However, because
applicant’s description of services are not so limited, we
cannot give this argument any consideration.
In view of the facts that the third-party
registrations suggest that applicant’s insurance services
and registrant’s mortgage banking services sold under
similar marks may emanate from a single source, the
presumption that such services move in all normal channels

10 Applicant’s Brief, p. 9.
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of trade and are available to all classes of potential
consumers that would purchase both applicant’s services and
registrant’s services, and that consumers in need of
insurance services may also need mortgage banking services,
we find that the channels of trade and classes of consumers
overlap.
C. The conditions under which and buyers to whom sales
are made (i.e., “impulse” vs. careful, sophisticated
purchasing).

Applicant argued that, in this case, “the knowledge
and sophistication of the purchasers has substantial
relevance.”11
The relevant consumers purchasing the
services of Applicant and Registrant
must be extremely knowledgeable about
their respective fields. Applicant’s
services are marketed to wholesale
insurance brokers and primary insurance
companies seeking the risk-sharing
benefits of insurance pooling.
Applicant does not even market to, or
compete for, the same customers as
Registrant. Applicant stresses that
the owner of the Cited Mark, Castle
Point Mortgage, Inc., does not appear
to be a licensed insurance company.
Any business seeking commercial
insurance is undoubtedly savvy enough
to seek insurance from companies that
are licensed to provide this service.
For this reason, it is highly unlikely
that Applicant’s potential insurance
company and insurance broker clients
would be confused by the existence of

11 Applicant’s Brief, p. 11.
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CASTLE POINT MORTGAGE when searching
for Applicant’s services.12

As indicated above, because applicant’s description of
services are not restricted to insurance company and
insurance broker clients, we cannot give applicant’s
argument any consideration. In fact, because there are no
restrictions in either applicant’s description of services
or the registrants’ description of services, we must
consider all potential consumers of insurance services and
mortgage banking services, including those who may exercise
a lower degree of care. In re Bercut-Vandervoot & Co., 229
USPQ 763, 765 (TTAB 1986) (average ordinary wine consumer
must be looked at in considering source confusion). In
other words, mortgage banking services and insurance
services include knowledgeable consumers, as well as less
sophisticated consumers.
In view of the foregoing, we find that the ordinary
degree of care exercised by general consumers of these
services weighs in favor of finding that there is a
likelihood of confusion.

12 Applicant’s Briefs, p. 12.
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D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., supra. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). See also, In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988). In comparing the marks, we are mindful
that the test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to
the source of the goods offered under the respective marks
is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992).
The term “Castle Point” is the dominant portion of the
mark in the cited registration because the word “Mortgage”
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is descriptive when it is used in connection with mortgage
banking services. “Mortgage” describes the type of banking
services, as well as the purpose of the registrant’s
services (i.e., to originate real estate loans).
Likewise, the word “Castlepoint” is the dominant
portion of applicant’s mark because the terms “Insurance
Company” and “Specialty Insurance Company” are descriptive.
Both terms directly describe the fact that applicant is
providing insurance services. Moreover, applicant
disclaimed the exclusive right to use “Insurance Company”
and “Specialty Insurance Company” in response to the
Examining Attorney’s finding that they are merely
descriptive, thereby conceding the descriptive nature of
those terms as applied to applicant’s services. In re DNI
Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005). See also
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453
F.2d 1296, 172 USPQ 361, 363 (CCPA 1972). Therefore, the
names “Castle Point” and “Castlepoint” are accorded more
weight than the words “Mortgage,” “Insurance Company,” and
“Specialty Insurance Company” in our comparison of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
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The significance of the names “Castle Point” and
“Castlepoint” as the dominant element of applicant’s marks
and the registrant’s mark is further reinforced by their
location as the first word(s) of the marks. Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”). See also Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005)(“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “veuve” is the first word
in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America,
supra (upon encountering the marks, consumers must first
notice the identical lead word).
The terms CASTLEPOINT and CASTLE POINT are virtually
identical in appearance and sound. The space between the
words “Castle” and “Point” in the registered mark is not
sufficient to distinguish the marks. Goodyear Tire &
Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB
1978) (FAST-FINDER with a hyphen is substantially identical
to FASTFINDER without the hyphen). See also In re
International Business Machines Corp., 81 USPQ2d 1677, 1679
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(TTAB 2006) (there is no difference in the meaning of “e-
server” and “eserver”); In re Home Federal Savings and Loan
Association, 213 USPQ 68, 69 (TTAB 1982) (“That applicant’s
mark “TRAN$FUND” has a dollar sign where registrant’s mark
has a letter “S” is inconsequential in a comparison of the
sound, appearance, and meaning of the two marks”).
“Castle Point” in the registered mark and
“Castlepoint” in applicant’s marks have the same meaning
and engender the same commercial impression (i.e., the
place where a castle is located). Applicant argued, to the
contrary, that its use of “Castlepoint” has no obvious
meaning,13 whereas, in the cited registration, “Castle
Point” conveys the message that “the point of Registrant’s
mortgage services is to help you buy your castle.”14 In
support of its argument, applicant referenced the
advertising legend “Because Your Home Is Your Castle” used
on the registrant’s website and to five third-party
registrations, owned by four entities, that include the
word “Castle” in connection with mortgage lending or real
estate services. Applicant submitted copies of the
following registrations:

13 Applicant’s Briefs p. 13.
14 Applicant’s Brief, pp. 13-14.
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1. Registration No. 1758732 for the mark CASTLE
MORTGAGE CORPORATION and design for mortgage
brokerage services;
2. Registration No. 3133817 for the mark CASTLE
FINANCIAL for mortgage lending featuring reverse
mortgages;
3. Registration No. 3049984 for the mark CASTLE
FINDERS and Registration No. 2904788 for the mark
CASTLE FINDERS and design both for real estate
brokerage, management, leasing and investing
services; and,
4. Registration No. 2,985206 for the mark KASTLE
REALTY for real estate brokerage services.
The registrant’s use of the advertising legend
“Because Your Home Is Your Castle” is a clever use of the
word “castle” to draw a connection with the CASTLE POINT
MORTGAGE mark and the slogan “a man’s home is his castle.”
However, the argument is too much of a stretch to persuade
us that the commercial impression of CASTLE POINT MORTGAGE
is “the point of Registrant’s mortgage services is to help
you buy your castle.”
The third-party registrations imply that the word
“castle” was registered because it is suggestive of the
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word “home” (i.e., a reference to the slogan that “a man’s
home is his castle”). However, the third-party
registrations are of very limited probative value because
the marks at issue are CASTLE POINT MORTGAGE, CASTLEPOINT
HOLDINGS, LTD. and CASTLE POINT REINSURANCE COMPANY, not
CASTLE MORTGAGE, CASTLE HOLDINGS, LTD., and CASTLE
REINSURANCE COMPANY., and in this case, we are comparing
CASTLE POINT MORTGAGE with CASTLEPOINT HOLDINGS, LTD. and
CASTLEPOINT REINSURANCE COMPANY.
While the marks are not identical, we find that
similarities of the marks outweigh the differences.
E. Balancing the factors.
In weighing all the relevant likelihood of confusion
factors, we find that because the marks are similar, the
services are sufficiently related and move in same channels
of trade to the same classes of consumers, there is a
likelihood of confusion. To the extent that any doubt
might exist as to the correctness of this decision, we
resolve such doubt against applicant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988).
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Decision: The refusal to register applicant’s marks
is affirmed and registration is refused.