Millhill Holdings, Ltd.

Trademark Trial and Appeal Board

Oct 25, 2017

No. 85860969 (T.T.A.B. Oct. 25, 2017)

This Opinion is Not a
Precedent of the TTAB
Mailed: October 25, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Millhill Holdings, Ltd.
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Serial Nos. 85860969 and 85860999
_____

Larry H. Tronco and Madelon L. Lapidus of Holland & Hart LLP
for Millhill Holdings, Ltd.

Charlotte K. Corwin, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____
Before Zervas, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Millhill Holdings, Ltd. (“Applicant”) seeks registration of BLUE WATER, in
standard characters, and the mark shown below

for “insurance services, namely underwriting services in the field of collateralized
standard and non-standard property catastrophe insurance and reinsurance; and
risk management services in the field of standard and non-standard property
Serial Nos. 85860969 and 85860999
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casualty insurance and reinsurance” in International Class 36.1 The Examining
Attorney refused registration under Section 2(d) of the Act on the ground that
Applicant’s marks so resemble the registered mark shown below

for “insurance agencies” in International Class 362 that use of Applicant’s marks in
connection with Applicant’s services is likely to cause confusion or mistake or to
deceive. After the refusal became final, Applicant appealed and Applicant and the
Examining Attorney filed briefs.
Appeals Consolidated
These appeals involve common questions of law and fact and the records are
similar. Accordingly, we consolidate and decide both appeals in this single decision.
See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2015).3

1 Application Serial Nos. 85860969 (the “‘969 Application”) and 85860999 (the “‘999
Application”), respectively, both filed February 26, 2013 based on first use dates of June 2012.
The ‘999 Application includes a disclaimer of “RE” and this description of the mark: “The
mark consists of the words BLUE WATER RE to the right of a design consisting of three
white waves on top of a blue disc. The word BLUE is colored dark blue, the word WATER is
blue and the word RE is grey.”
2 Registration No. 4114058, issued March 20, 2012. The registration includes a disclaimer of
“INSURERS, CORP.” and this description of the mark: “The mark consists of the words
‘BLUE WATERS INSURERS, CORP.’ The word ‘BLUE’ and letters ‘ATERS’ appear in the
color blue and have a ‘W’ between them in the color dark blue in the form of a wave. Above
the ‘W’, a sunrise is depicted in the color yellow. The words ‘INSURERS, CORP.’ appear below
in the color black.”
3 Citations are to the record in the ‘969 Application.
Serial Nos. 85860969 and 85860999
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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth 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 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 services. See
Federated Foods, Inc. v. Fort Howard Paper 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.”).
Turning to the marks, they are similar “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). Indeed, they all begin with forms of BLUE
WATER. Presto Prods. Inc. v. Nice-Pak Prods., 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., 73
USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). In this case it is immaterial that
Registrant’s mark contains the plural form BLUE WATERS and Applicant’s marks
contain the singular BLUE WATER, because the “S” at the end of Registrant’s mark
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does not make it look, sound or convey a meaning appreciably different than
Applicant’s mark. See Wilson v. DeLaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA
1957) (“It is evident that there is no material difference, in a trademark sense,
between the singular and plural forms of the word ‘Zombie’ and they will therefore be
regarded here as the same mark.”); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962).
The shared term BLUE WATER/BLUE WATERS is also dominant because the
remaining literal elements in both Applicant’s design mark and Registrant’s mark
are descriptive and disclaimed. In fact, the evidence reveals that “reinsurance,” which
is specifically claimed in Applicant’s identification of services, is “purchased by an
insurance company … from one or more other insurance companies (the ‘reinsurer’)
as a means of risk management ….” Office Action response of May 10, 2013 (printout
from “wikipedia.org”); see also Office Action of March 18, 2016 (printout from
“Investopedia.com”). The record reveals that RE is sometimes used as an abbreviation
for “reinsurance,” as it is in the mark in the ‘969 Application. Office Action of
September 15, 2016 (printout from “endurance.bm” and third-party Reg. No. 3428771
for STEEL CITY RE, with RE disclaimed, for insurance services); see also 5
TTABVUE 7 (Applicant’s Appeal Brief at p. 6) (“The inclusion of the term RE in
Applicant’s Mark immediately informs the consumer of the reinsurance services
offered under [Applicant’s] mark.”). Obviously, the term INSURERS in Registrant’s
mark is descriptive if not generic for insurance agencies, and the term CORP. merely
identifies the form of Registrant’s business, and in itself has no source-identifying
significance. Descriptive, disclaimed terms such as RE, INSURERS and CORP. are
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therefore entitled to less weight in our analysis, although we have not excluded them
from our consideration of the marks in their entireties. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
While the term BLUE WATERS in Registrant’s mark is in lower case letters in
one font, and the term BLUE WATER in the ‘969 Application is in upper case letters
in another font, that is not sufficient to avoid confusion where the words themselves
are virtually identical and are both written in varying shades of blue. In fact,
consumers familiar with Registrant’s mark could perceive Applicant’s marks as
variations thereof.
While Registrant’s mark includes a design and Applicant’s standard character
mark does not, BLUE WATER/BLUE WATERS is the term consumers will use to call
for Applicant’s and Registrant’s services because it is literal, making it more
important in our analysis. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911
(Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the
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dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (holding that “if one of the marks 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” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”).
Applicant’s and Registrant’s designs are nevertheless also similar, both consisting
of “waves,” as described in the ‘999 Application and the cited registration. Moreover,
while Applicant describes its waves as being “on top of a blue disc” and Registrant
describes its wave as being “under a sunrise,” in both marks a circular design appears
to surround and rest on top of at least part of the waves. Given that both marks
comprise letters in varying shades of blue forming the words BLUE WATER/BLUE
WATERS, the shared waves and circular designs are likely to cause confusion
between the marks, which have other significant similarities.
While there is no evidence that BLUE WATER/BLUE WATERS has any meaning
in the insurance industry, or in any of the specific marks, whatever meaning the term
may convey is the same in all three marks as used for insurance services. Similarly,
to the extent the waves convey a meaning, it would be the same meaning in both
Applicant’s and Registrant’s designs. And of course the marks also sound similar
because they all contain and begin with BLUE WATER or its plural form.
In short, because they share virtually identical literal elements, similar designs
and common themes, the marks are highly similar in appearance, sound, connotation
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and overall commercial impression. This factor weighs in favor of finding a likelihood
of confusion.
Turning to the services and channels of trade, the Examining Attorney relies on a
dictionary definition of “insurance agent” as “someone whose job is to sell insurance;”
the definition further indicates that insurance agents are also known as “insurance
brokers.” Office Action of March 18, 2016 (printout from “macmillandictionary.com”).
Obviously, Registrant’s insurance agency (sales) services, as identified in the cited
registration, are broad enough to encompass the sale of collateralized standard and
non-standard property catastrophe insurance and reinsurance, the types of insurance
products for which Applicant provides underwriting and risk management services.
Purchasers familiar with Applicant’s underwriting and risk management services
under its BLUE WATER marks could very well, upon encountering Registrant’s
mark, perceive that Registrant’s insurance agency sells the types of property
catastrophe insurance and reinsurance for which Applicant provides its services, or
vice versa.
Applicant argues that its services “involve contracts in the millions and billions of
dollars that are not offered to the general public,” while Registrant’s services “are
marketed and sold to lay individuals and organizations.” The evidence of record is to
the contrary. For example, Trusted Choice, which uses the slogan “Independent
Insurance Agents” in its logo, has a “Catastrophe Insurance” webpage stating that
“homeowners, landlords and renters may need catastrophe insurance.” The page
makes clear that the reference is in fact to “property catastrophe insurance,” a type
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of insurance in connection with which Applicant provides its underwriting and risk
management services. The page further states: “Start by contacting an independent
agent in the Trusted Choice® network who can review the types of disaster coverage
available in your area and help you make the right choices for your home and family”
and “Your independent agent can help you determine whether you need coverage
above and beyond your standard homeowners, renters and auto policies.” Office
Action of March 18, 2016 (printout from “trustedchoice.com”). Liberty Mutual’s
“Reinsurance” webpage states “If you are a standard or excess and surplus property
and casualty insurance provider, you can work with your broker to find out how
Liberty Mutual Reinsurance can protect your business from risk,” and “For property
coverage, our fully dedicated catastrophe modeling team works with our underwriters
to precisely determine the pricing of risks to your business.” Among the “reinsurance
coverage segments” are “Catastrophe,” “Pro rata” and “Property per risk,” and the
webpage concludes: “Contact an independent agent or your broker for policy terms,
conditions and exclusions.” Id. (printout from “libertymutualgroup.com”). Id. The
Travelers website, which promotes “property,” “casualty” and “risk management
information services” for large businesses, as well as homeowners, renters, boat and
other types of insurance for individuals, includes a link “for agents,” which indicates
that “insurance agents” work with these types of insurance. Office Action of
September 15, 2016 (printout from “travelers.com”).
Moreover, the evidence makes clear that the same companies offer, under the
same marks, both property catastrophe insurance and reinsurance to large
Serial Nos. 85860969 and 85860999
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businesses and other types of insurance to individuals and small businesses. For
example, AON, TRAVELERS, LIBERTY MUTUAL and TRUSTED CHOICE offer
insurance to both individuals (including homeowner, auto and boat insurance) and
businesses (including property, casualty, catastrophe and associated reinsurance).
Office Actions of September 15, 2016 (printouts from “aon.com” and “travelers.com”)
and March 18, 2016 (printouts from “libertymutual.com” and “trustedchoice.com”).
Furthermore, the Examining Attorney has introduced more than 20 use-based
third-party registrations having different owners which are registered in connection
with Registrant’s services on the one hand and Applicant’s services on the other,
including:
ROCK SOLID in typed form (Reg. No. 1443527) is
registered for “insurance underwriting, administration
and agency services for … property and casualty and
reinsurance.”

INTEGRAND in typed form (Reg. No. 1794422) is
registered for “insurance underwriting in the fields of
property and casualty, reinsurance, and surety bonds,
insurance agency and brokerage services.”

MAG MUTUAL GROUP in typed form (Reg. No. 2205195)
is registered for “reinsurance underwriting; insurance
underwriting services in the field of casualty; insurance
agencies in the fields of group health, life, property and
casualty; and risk management.”

THE WRC GROUP OF COMPANIES in typed form (Reg.
No. 2645226) is registered for “reinsurance underwriting
… insurance agencies in the field of property and casualty.”

ARBELLA & Design (Reg. No. 3354854) is registered for
“insurance services, namely, insurance underwriting, and
administration of insurance in the fields of … property …
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and reinsurance; reinsurance underwriting services;
insurance brokerage and agency services.”

THE HARTFORD & Design (Reg. No. 3634321) is
registered for “agency and brokerage services in the fields
of … property and casualty insurance … insurance
services, namely, insurance underwriting, issuing,
administration, agency and brokerage services in the fields
of … reinsurance, property and casualty insurance … for
all types of insurance … insurance services in the nature
of loss control management for others.”

TRAVELERS & Design (Reg. No. 3991520) is registered for
“insurance underwriting services in the fields of property
and casualty … and reinsurance … insurance agency
services … and insurance and insurance-related services in
the nature of loss prevention and risk control management
for others.”

1-800-ADJUST4 in standard characters (Reg. No. 3049542)
is registered for “insurance brokerage and underwriting in
the field of … catastrophe response … property … and
insurance agencies, claims adjusting in the field of
insurance.”

ST. JAMES in standard characters (Reg. No. 3166349) is
registered for “insurance and insurance related services,
namely, insurance brokerage and agency services in the
field of property and casualty insurance … property and
casualty insurance underwriting services … reinsurance
underwriting services.”

ONEBEACON in standard characters (Reg. No. 3619458)
is registered for “insurance underwriting services in
property, casualty … reinsurance; insurance agency
services.”

(Reg. No. 3154224) is registered for “life, health,
property and casualty insurance underwriting; agencies for
health, property and casualty insurance.”

Office Action of September 15, 2016. “Third-party registrations which cover a number
of differing goods and/or services, and which are based on use in commerce, although
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not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type which
may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1998). The registrations indicate that insurance underwriting
and reinsurance and insurance agency services may emanate from the same source
under the same mark.
The evidence revealing that insurance agents sell the types of services Applicant
provides, or at least the types of insurance in connection with which Applicant
provides its underwriting and risk management services, and that many insurance
service providers offer Applicant’s and Registrant’s services under the same mark,
establish both that the services are related and that the channels of trade overlap.4
Applicant’s arguments to the contrary appear to be based on a comparison of
Applicant’s actual services and customers to Registrant’s actual services and
customers. While this type of comparison may be relevant in an infringement suit, or
an inter partes case involving common law rights, in this ex parte appeal we are

4 Applicant’s reliance on an unpublished decision, In re Platinum Services, 2009 WL 4086552,
is misplaced. There, not only were the applicant’s “insurance agency services” limited to
certain specific fields, as opposed to Registrant’s unlimited identification of “insurance
agency services” in this case, but the examining attorney failed to rebut the applicant’s
evidence that the services in that case traveled in different channels of trade. Here, by
contrast, the evidence from Trusted Choice, Travelers and Liberty Mutual establishes that
insurance agents offer property catastrophe insurance and reinsurance, and that those
interested in purchasing property catastrophe insurance and reinsurance are directed to
insurance agents.

Serial Nos. 85860969 and 85860999
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concerned only with the services as identified in the involved application and cited
registration.
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 sales
of the goods are directed … Thus, it was not error, as OSI
argues, for the board to give no weight to OSI’s evidence
purporting to show that OCTOCOM modems are brought
(sic) by a particular class of purchasers. It would have been
error to do otherwise. Because OSI seeks an unrestricted
registration, such evidence as there is of a specific class of
customers did not relate to a material fact.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, L.P. v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for
the Board to focus on the application and registrations rather than on real-world
conditions ….”). The evidence in this case reveals that the services as identified in the
application are related to the services as identified in the cited registration. And any
differences in the channels of trade for these services are not reflected in Applicant’s
or Registrant’s identifications of services, and thus not relevant. Stone Lion Capital,
110 USPQ2d at 1162 (“An application with ‘no restriction on trade channels’ cannot
be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also, In re
Serial Nos. 85860969 and 85860999
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i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (“It is
well established that the Board may not read limitations into an unrestricted
registration or application.”) (citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) and 15 U.S.C. § 1057(b)).
In any event, it is settled that the services need not be competitive in order to
support a finding of likelihood of confusion. It is enough that the services are related
in some manner or that the circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under circumstances which could
give rise, because of the marks used, to a mistaken belief that Applicant’s and
Registrant’s services originate from or are in some way associated with the same
source. Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1432
(TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re Int’l Tel. & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would confuse
the services, but rather whether there is a likelihood of confusion as to the source of
the services. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
Finally, Applicant’s argument that the relevant consumers are sophisticated and
careful is not well taken, because neither Applicant’s nor Registrant’s identification
of services limits the class of customers therefor. Stone Lion Capital, 110 USPQ2d at
1162-63 (“Stone Lion effectively asks this court to disregard the broad scope of
services recited in its application, and to instead rely on the parties’ current
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investment practices … the Board properly considered all potential investors for the
recited services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original).
In short, both of Applicant’s marks are similar to Registrant’s mark, the services
are related and the channels of trade overlap. We find that confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.