Modern Woodmen of America

Trademark Trial and Appeal Board

Jan 6, 2012

No. 77308822 (T.T.A.B. Jan. 6, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Hearing: August 23, 2011 Mailed: January 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Modern Woodmen of America
________

Serial Nos. 77308794, 77308779, and 773088221
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen
of America.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Taylor, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Modern Woodmen of America (“applicant”) has filed
applications in International Class 36 for the following
marks:

1 While the cases are not technically consolidated, we have
issued a single opinion in these three applications because they
involve common questions of law and fact and contain virtually
identical records.
Serial Nos. 77308794, 77308779, and 77308822

2

1. (MODERN WOODMEN BANK and design)
for “Banking services including checking and savings
account services, credit card services, and loan
services, namely, consumer and mortgage loan
services.”2

2. (MODERN WOODMEN GENERAL AGENCY and
design) for “Insurance brokerage and administration
services in the fields of life, disability and health
insurance, including substandard life insurance, and
for insurance agency services.”3

3. (MODERN WOODMEN FRATERNAL FINANCIAL
and design) for “Fraternal services, namely, insurance
underwriting for fraternal benefit organizations in
the field of annuity contracts and life insurance;
financial services, namely, financial analysis and
consultation, financial administration of retirement
plans, financial forecasting; banking, investment
advisory and insurance agency services; life insurance
brokerage and issuance of annuities and other
financial services, namely, annuity underwriting, and
financial advice.”4

2 Ser. No. 77308794, filed October 19, 2007 on the basis of
applicant’s bona fide intent to use the mark in commerce;
amendment to allege use filed August 1, 2008 alleging first use
in commerce as of January 1, 2008; the colors blue and green are
claimed as a feature of the mark and a disclaimer of "BANK" has
been entered.
3 Ser. No. 77308822, filed October 19, 2007 on the basis of
applicant’s bona fide intent to use the mark in commerce;
amendment to allege use filed October 22, 2008 alleging first use
in commerce as of April 1, 2008; the colors blue and green are
claimed as a feature of the mark and a disclaimer of "GENERAL
AGENCY" has been entered.
4 Ser. No. 77308779, filed October 19, 2007 on the basis of
applicant’s bona fide intent to use the mark in commerce;
Serial Nos. 77308794, 77308779, and 77308822

3

The examining attorney has refused registration of
applicant’s marks under Section 2(d) of the Trademark Act, 15
U.S.C. §1052, having determined that registration would lead
to a likelihood of confusion in view of the services recited
in the following registrations:
1. Registration No. 0890680 for the mark OMAHA WOODMEN for
“underwriting of insurance;”5

2. Registration No. 2767582 for the mark WOODMEN FINANCIAL
SERVICES for “financial services, namely, broker-dealer
services and insurance agency services in the field of
variable life and annuity insurance policies and mutual
funds;”6

3. Registration No. 2995606 for the mark WOODMEN MORTGAGE
SERVICES for “mortgage banking services;”7

4. Registration No. 2995607 for the mark WOODMEN INSURANCE
AGENCY for “general insurance agency;”8 and

amendment to allege use filed October 21, 2008 alleging first use
in commerce as of January 1, 2008; the colors blue and green are
claimed as a feature of the mark and a disclaimer to "FRATERNAL
FINANCIAL" has been entered.
5 Registered May 5, 1970; renewed; first use in commerce claimed
as of October 1, 1937.
6 Registered September 23, 2003; Section 8 (6-year) accepted &
Section 15 acknowledged; first use in commerce claimed as of July
1, 2002. Registrant has disclaimed the exclusive right to use
FINANCIAL SERVICES apart from the mark as shown.
7 Registered September 13, 2005; first use in commerce claimed as
of July 1, 2002. Registrant has disclaimed the exclusive right
to use MORTGAGE SERVICES apart from the mark as shown. The
Section 8 affidavit was due in this registration by September 13,
2011; however, the affidavit may still be filed within the grace
period. See Trademark Rule 2.160(a) and the Trademark Manual of
Examining Procedure (“TMEP”) Section 1604.04 (8th Edition 2011).
8 Registered September 13, 2005; first use in commerce claimed as
of January 26, 2004. Registrant has disclaimed the exclusive
right to use INSURANCE AGENCY apart from the mark as shown. The
Section 8 affidavit was due in this registration by September 13,
2011; however, the affidavit may still be filed within the grace
period. See Trademark Rule 2.160(a) and the Trademark Manual of
Examining Procedure (“TMEP”) Section 1604.04 (8th Edition 2011).
Serial Nos. 77308794, 77308779, and 77308822

4

5. Registration No. 3559362 for the mark WOODMEN OF THE
WORLD for “underwriting of life insurance.”9

We affirm.
I. Ownership of the Cited Registrations
As a preliminary matter, we note that the cited
registrations are of record as being owned by different
entities. OMAHA WOODMEN and WOODMEN OF THE WORLD are owned
by “Woodmen of the World Life Insurance Society and/or
Omaha Woodmen Life Insurance Society,” a Nebraska
corporation (hereinafter “Woodmen of the World”). WOODMEN
FINANCIAL SERVICES is owned by Woodmen Financial Services;
WOODMEN MORTGAGE SERVICES is owned by Woodmen Mortgage
Services, Inc.; and WOODMEN INSURANCE AGENCY is owned by
Woodmen Insurance Agency, Inc. These latter three
companies are wholly-owned subsidiaries of Woodmen of the
World.10 Applicant argued that the evidence of common

9 Registered January 13, 2009; first use in commerce claimed as
of 1890. The underlying application was the subject of a
concurrent use proceeding (No. 94000320) with Registration No.
0868519 (now expired). The registration is limited to the area
comprising the District of Columbia and the states of Alabama,
Alaska, Arizona, Arkansas, Connecticut, Delaware, Florida,
Georgia, Hawaii, Illinois, Indiana, Iowa, Kansas, Kentucky,
Louisiana, Maine, Maryland, Massachusetts, Michigan, Minnesota,
Mississippi, Missouri, Nebraska, New Hampshire, New Jersey, New
Mexico, New York, North Carolina, North Dakota, Ohio, Oklahoma,
Pennsylvania, Rhode Island, South Carolina, South Dakota,
Tennessee, Texas, Vermont, Virginia, West Virginia and Wisconsin.
10 See printout from http://www.woodmen.org, 5/27/2009, submitted
by the examining attorney, and the copy of an organizational
chart submitted by applicant, showing the relationship of Woodmen
of the World’s subsidiaries.
Serial Nos. 77308794, 77308779, and 77308822

5

ownership is insufficient to show that the cited
registrations form a “family of marks,” and the refusal on
this basis has now been withdrawn.11 To the extent
applicant further contends that Reg. No. 2995607 is void as
containing an erroneous claim of ownership of prior
registrations, such contention is an impermissible
collateral attack on the registration and has been given no
consideration.12 See In re Dixie Restaurants, Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In re
Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). We
find the registrations to have common ownership in Woodmen
of the World and its wholly-owned subsidiaries.
II. Request for Judicial Notice
At the oral hearing, applicant submitted a copy of a
printout from Webster’s Third New International Dictionary,
Unabridged and requested that the Board take judicial
notice of the given definition for the term “woodman.”13
The request is hereby granted.14

11 Examining Attorney’s Appeal Brief, p. 10 (unnumbered).
12 For the same reason, we have not considered applicant’s
argument in favor of registrability based on its assertion that
its use precedes the use of the mark of each cited registration.
13 Webster’s Third New International Dictionary, Unabridged.
Merriam-Webster, 2002. http://unabridged.merriam-webster.com (23
August 2011).
14 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002); see
also, University of Notre Dame du Lac v. J. C. Gourmet Foot
Serial Nos. 77308794, 77308779, and 77308822

6

The definition as stated in that dictionary
excerpt is:
1 a : WOODSMAN b : one who cuts wood especially
for fuel
2 usually capitalized [from Modern Woodmen of
America, society founded at Lyons, Iowa in 1883
and Woodmen of the World, society founded at
Omaha, Nebraska in 1890]: a member of either of
two fraternal and beneficiary societies.

III. Applicable Law under Section 2(d)
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and Dixie Restaurants, 41 USPQ2d at
1533 (“Indeed, any one of the factors may control a
particular case.”). In considering the evidence of record
on these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 2(d) goes to the cumulative

Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). Judicial notice may be
taken at any stage of a Board proceeding. See Fed. R. Evid.
201(f) and Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385, 1393 n.5 (TTAB 1999).

Serial Nos. 77308794, 77308779, and 77308822

7

effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc.,
50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. Similarity of the Services
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services identified in the cited
registration(s). See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); and Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”)
Here, applicant’s mark MODERN WOODMEN BANK and design
(Ser. No. 77308794) covers “banking services” and “mortgage
loan services.” These services are legally identical to,
or encompass, “mortgage banking services,” recited in Reg.
No. 2995606.
Serial Nos. 77308794, 77308779, and 77308822

8

Applicant’s mark MODERN WOODMEN GENERAL AGENCY and
design (Ser. No. 77308822) covers “insurance agency
services,” which are legally identical to the services
recited in Reg. No. 2995607, i.e., “general insurance
agency” services.
Applicant’s mark MODERN WOODMEN FRATERNAL FINANCIAL
and design (Ser. No. 77308779) covers “insurance
underwriting,” “insurance agency services” and “life
insurance brokerage and issuance of annuities and other
financial services, namely, annuity underwriting, and
financial advice.” These services are legally identical to
the services recited in Reg. Nos. 0890680 (“underwriting of
insurance”), 3559362 (“underwriting of life insurance”),
2995607 (“general insurance agency”) and 2767582
(“insurance agency services”).
In comparing the recitation of services in the
applications with those of the cited registrations, we note
that “[l]ikelihood of confusion may be found based on any
item that comes within the identification of goods [or
services] in the involved application and registration.”
In re La Peregrina Ltd., 80 USPQ2d 1645, 1646 (TTAB 2008);
see also, Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The services
Serial Nos. 77308794, 77308779, and 77308822

9

in applicant’s marks directly overlap with, or are
encompassed by, those of the cited registrations.
In addition, the examining attorney has made of record
several use-based, third-party registrations that list
banking services and insurance agency services as part of
their recitations of services. For example,
WEBSTER FINANCIAL CORPORATION (Reg. No. 3334635) is
registered for, inter alia, “banking services,” “mortgage
loans,” and “insurance agency, brokerage, underwriting and
administration services in the fields of life, accident,
health, disability, long-term care, management and
professional liability, credit and export, travel surety,
property, casualty, automobile, home and fire insurance;”
FIRST NATIONAL BANK OF PENNSYLVANIA and design (Reg.
No. 2797535) is registered for, inter alia, “banking
services” and “insurance services, namely insurance
underwriting, brokerage and extended warranty contracts;”
IOWA CITY BANK OFFICE OF HALLS BANK (Reg. No. 3076667)
is registered for “banking” and “insurance agencies;” and
HSH NORDBANK and design (Reg. No. 3264513) is
registered for “insurance administration, agencies,
brokerage, consultation and life insurance underwriting”
and “banking services.”
Serial Nos. 77308794, 77308779, and 77308822

10

As further examples, the mark EVERYONE COUNTS (Reg.
No. 3318154) is registered for “banking services” and
“underwriting services” and the mark ALTA ALLIANCE BANK
(Reg. No. 3455844) is registered for, inter alia,
“banking,” “real estate and mortgage brokerage” and
“insurance services, namely, underwriting and brokerage of
property.” This evidence is probative to show that
consumers would likely perceive both banking and loan
services and insurance underwriting services as being
services performed by a single company. See In re Infinity
Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB
2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
We are not persuaded by applicant’s argument that it
provides services only to its fraternal society members.
There are no such restrictions to the classes of purchasers
in the recitation of services in Ser. Nos. 77308794 and
77308822; and no such restrictions to the banking services
and insurance agency services in Ser. No. 77308779. As
such, we must consider that applicant may, whether
presently or in the future, provide its services to non-
members of its society. An applicant may not restrict the
scope of the goods covered in the cited registration by
argument or extrinsic evidence. In re La Peregrina Ltd.,
Serial Nos. 77308794, 77308779, and 77308822

11

80 USPQ2d 1645, 1646-7 (TTAB 2008); see also, Tuxedo
Monopoly, 209 USPQ at 988 (“The question of the likelihood
of confusion must be based upon a consideration of
appellant’s goods as described in the application”).
Accordingly, based on the recitations themselves, and
in view of the evidence of record suggesting that services
provided by registrants and applicant may emanate from a
single source, we find that applicant’s services are
identical or related to the services recited in the cited
registrations.
B. Similarity or Dissimilarity of the Marks in Their
Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. Where, as in the present case, the marks
appear in connection with, at least in part, legally
identical services, the degree of similarity between the
marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate v. Century
Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Although we must compare the marks in their
entireties, one feature of a mark may be more significant
than another and it is not improper to give more weight to
Serial Nos. 77308794, 77308779, and 77308822

12

this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“There
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”). For
instance, as our principle reviewing court has observed,
“[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
the mark.” See In re National Data Corp., 224 USPQ at 751.
With the above principles in mind, we turn to a
comparison of applicant’s marks -- MODERN WOODMEN BANK and
design; MODERN WOODMEN GENERAL AGENCY and design; and
MODERN WOODMEN FRATERNAL FINANCIAL and design -- with
registrants’ marks OMAHA WOODMEN; WOODMEN FINANCIAL
SERVICES; WOODMEN MORTGAGE SERVICES; WOODMEN INSURANCE
AGENCY; and WOODMEN OF THE WORLD.
The marks are similar in appearance and pronunciation,
all sharing the word WOODMEN. As to the meanings of the
marks, there is nothing in the record to suggest that any
but the dictionary meaning of “woodmen” as the plural of
Serial Nos. 77308794, 77308779, and 77308822

13

“woodman” is intended for either applicant’s marks or the
cited marks. The noticed dictionary definition of
“woodman” shows that the term “Woodmen” refers to a member
from either applicant or registrant Woodmen of the World’s
“fraternal and beneficiary societ[y]” and that members of
either of these two societies may be referred to as
“Woodmen.”
In terms of commercial impression, the dominant
feature of each of applicant’s marks is the term “MODERN
WOODMEN.” It appears in a contrasting color from the rest
of the mark; it appears in a larger font; and it forms the
first words of the mark. “[I]t is often the first part of
a mark which is most likely to be impressed upon the mind
of a purchaser and remembered.” Presto Prods., Inc. v.
Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
Moreover, the remainder of each of the marks, i.e., the
word “BANK,” the term “GENERAL AGENCY” and the term
“FRATERNAL FINANCIAL,” is descriptive, or generic, matter
and has been disclaimed in the applications. See Dixie
Restaurants, 41 USPQ2d at 1533-34 (generic term that has
been disclaimed does not form dominant portion of mark).
Finally, while there is a design element in each mark,
visually it stands a distance apart from the word portion
of the mark and has no meaning in relation to the words.
Serial Nos. 77308794, 77308779, and 77308822

14

In general, it is the words in a mark which will dominate
over a design element inasmuch as it is the words by which
consumers call for the goods. In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Thus, when
encountering applicant’s marks, consumers are likely to
focus on the words MODERN WOODMEN therein.
The cited registrations are also dominated by the word
“WOODMEN.” It is the first word in each of the
registrations except OMAHA WOODMEN, where “Omaha” appears
to modify “Woodmen” in suggesting services coming from
Omaha, Nebraska. As for WOODMEN FINANCIAL SERVICES,
WOODMEN MORTGAGE SERVICES, and WOODMEN INSURANCE AGENCY,
all of the words other than “Woodmen” are descriptive or
generic, and have been disclaimed; the descriptive and/or
generic matter is less significant in creating the marks’
commercial impressions. With respect to WOODMEN OF THE
WORLD, again, the wording “of the World” appears to modify
“Woodmen,” this time evoking an impression of international
scope. The dominant portion of the marks is “WOODMEN.”
Consumers familiar with registrants’ marks OMAHA
WOODMEN, WOODMEN FINANCIAL SERVICES, WOODMEN MORTGAGE
SERVICES, WOODMEN INSURANCE AGENCY, and WOODMEN OF THE
WORLD are likely to believe, when encountering applicant’s
marks, that the services offered under the mark MODERN
Serial Nos. 77308794, 77308779, and 77308822

15

WOODMEN are an updated or “modern” line emanating from the
same source as registrants’ other services. The term
“modern” evokes such impressions; the word is defined as
“of, relating to, or characteristic of a period extending
from a relevant remote past to the present time.”15 Thus,
the marks are similar in their overall commercial
impressions.
Under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. See Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The average
purchaser normally retains a general rather than a specific
impression of trademarks. See H.D. Lee Co. v. Maidenform
Inc., 87 USPQ2d 1715, 1727 (TTAB 2008); and Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Here,
consumers are likely to remember the term MODERN WOODMEN
from applicant’s marks and the term WOODMEN from the cited
marks, and believe they both point to a single source of
origin for the respective services. Accordingly, this du
Pont factor favors finding the marks similar in appearance,

15 Ex. Brief, p. 11 (unnumbered), n. 1; Merriam-Webster Online
Dictionary, 2009, at http://www.merriam-webster.com (8 June
2009). We take judicial notice of this definition.
Serial Nos. 77308794, 77308779, and 77308822

16

pronunciation, meaning and overall commercial impression.
C. Channels of Trade and Classes of Purchasers
It is settled that in making our determination
regarding the channels of trade, we must look to the
services as identified in the involved application and
cited registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); and Paula Payne, 177 USPQ at 77. Where
the services in the application at issue and/or in the
cited registration(s) are broadly identified as to their
nature and type, such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that, in
scope, the recitation of services encompasses not only all
those of the nature and type described therein, but that
the identified services are offered in all channels of
trade which would be normal therefor, and that they would
be purchased by all potential consumers thereof. In re
Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); see
also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Because
applicant’s insurance and banking services have been found
to be legally identical to registrants’ insurance and
banking services, and there are no limitations or
restrictions as to trade channels or class of consumers in
Serial Nos. 77308794, 77308779, and 77308822

17

either the cited registrations or applicant’s applications,
such services are presumed to move in the same channels of
trade and be encountered by the same classes of purchasers.
Applicant argues that consumers of both its and
registrants’ services would make “careful purchasing
decision[s]” because they involve “significant financial
commitments,” financial security, and a “relationship of
trust with the service provider.”16 Applicant has presented
no evidence in support of these contentions. General
consumers of banking and financial services encompass all
levels of sophistication and we must consider all potential
customers, including the less sophisticated. Even assuming
arguendo that purchasers of such services would carefully
deliberate before making a purchasing decision, this does
not mean that they are immune from confusion as to the
origin of the respective services, especially where, as we
view the present case, the similar nature of the marks and
the identity of the services outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing

16 Applicant’s Brief, p. 14.
Serial Nos. 77308794, 77308779, and 77308822

18

decision, and expensive goods). See also In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers … are
not infallible.”). Even sophisticated consumers may view
the marks as variations on a theme (MODERN WOODMEN as the
newest “line” in the WOODMEN OF THE WORLD services)
intended to differentiate identical services having a
common source or sponsorship.
D. Length of Concurrent Use; Actual Confusion
Applicant has introduced evidence showing that it was
first established on January 5, 1883.17 This date is
supported by the judicially noticed Merriam-Webster
dictionary definition of “woodman,” which also indicates
that the registrant “Woodmen of the World” was founded in
1890; and that, as there are two fraternal societies with
the term “Woodmen” in their corporate name, members of
either society may be referred to as “Woodmen.”
The parties have co-existed for “over 100 years.”18
Applicant admits, however, that during this period there

17 “Benefit Certificate of Modern Woodmen of America,” Ex. 1 to
Response to Suspension Inquiry, Ser. No. 77308779; Barnes Dec.,
p. 6.
18 Barnes Dec., p. 5.
Serial Nos. 77308794, 77308779, and 77308822

19

has been consumer confusion between the marks. Applicant
characterizes this confusion as “minimal.” Patrick J.
Barnes, applicant’s Chief Marketing Officer, states that
“any confusion between Modern Woodmen of America and
Woodmen of the World over the past 100 years has been
minimal.”19
The Board is not in a position to “meaningfully
assess whether the claimed period of contemporaneous use
has provided ample opportunity for confusion to have
arisen.” In re General Motors, 23 USPQ2d 1465, 1470 (TTAB
1992) (“Normally, in the absence of a detailed consent
agreement, the registrant has no opportunity to be heard in
an ex parte proceeding of this type….”) Here, applicant’s
declarant attests to “minimal” confusion. Even “minimal”
instances of actual confusion are probative of whether
confusion is likely. See Molenaar, Inc. v. Happy Toys
Inc., 188 USPQ 469 (TTAB 1975) (even a single instance of
actual confusion is at least “illustrative of a situation
showing how and why confusion is likely,” citing Libbey-
Owens-Ford Glass Company v. Thermoproof Glass Company, 156
USPQ 510, 511 (CCPA 1968)). Inasmuch as no specifics are
given as to the actual quantity or quality of any such
instances of confusion, and the fact that members of either

19 Ibid.
Serial Nos. 77308794, 77308779, and 77308822

20

society may be referred to as “Woodmen,” we cannot discount
the potential impact of the marks’ co-existence on
purchaser perception. Under the circumstances, we find the
existence of actual confusion, albeit minimal, to weigh in
favor of a finding of likelihood of confusion. At a
minimum, applicant’s evidence fails to persuade us that
confusion is not likely to occur.
III. Conclusion
We have carefully considered the entire record, all
arguments and the evidence submitted by the parties. We
conclude, in light of the similarity of the marks at issue,
the related services, classes of customers, and channels of
trade, that use of applicant’s marks in association with
the identified services is likely to cause confusion with
the marks in the cited registrations despite the long
period of contemporaneous use of the marks.
Decision: The refusals to register trademark
application Serial Nos. 77308794, 77308779, and 77308822
under Trademark Act § 2(d) are accordingly affirmed.