Silver Cafe Insurance, LLC

Trademark Trial and Appeal Board

Apr 28, 2021

88515573 (T.T.A.B. Apr. 28, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Silver Cafe Insurance, LLC
_____

Serial No. 88515573
_____

Amy Sullivan Cahill of Cahill IP, PLLC,
for Silver Cafe Insurance, LLC.
Kim Saito, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Taylor, Adlin and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Silver Cafe Insurance, LLC (“Applicant”) seeks registration on the Principal
Register of the mark shown below,

for, as amended, “Promotion of financial and insurance services, on behalf of third
parties” in International Class 35; and “Providing information about the healthcare
Serial No. 88515573
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insurance plans of others via online videos” in International Class 36.1 The
application includes the following description: “The mark consists of an orange
rounded rectangle. The rectangle contains the stylized underlined wording ‘MISTER
MEDICARE.’ All the wording, the horizontal line, and the outline of the rectangle are
white, silver, and black.” The colors white, silver, black, and orange are claimed as
features of the mark.
The Trademark Examining Attorney has refused registration of Applicant’s
MISTER MEDICARE mark on the ground that, when used in connection with the
identified services, it is confusingly similar to the mark in Registration No. 4193668,2
MR. MEDICARE (in standard characters), for “insurance brokerage services” in
International Class 35, within the meaning of Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the

1 Application Serial No. 88515573 was filed on July 15, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark
anywhere and in commerce for the services identified in both international classes on July 1,
2019.

2 Issued August 21, 2012; Section 8 & 15 Affidavits accepted and acknowledged. We will refer
to the owner of the cited registration as the “Registrant.”
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goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019)
(Board considers each DuPont factor for which there is evidence and argument).
II. The Marks
A. Strength of the Marks
Because the strength of the cited mark may affect the scope of protection to which
it is entitled, we first examine Applicant’s claim that Registrant’s mark MR.
MEDICARE is a weak mark entitled to only an extremely narrow scope of protection,
because it combines the weak term “MR.” with the highly descriptive term
“MEDICARE.”3 Applicant particularly argues that “[c]onsumers are clearly exposed
to extensive use of ‘MR.’ marks in connection with Class 36 services and have the
ability to distinguish between them” and that there are “literally hundreds of marks

3 See 7 TTABVUE 6-9. Page references herein to the application record are to the
downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR)
system. References to the briefs and orders on appeal are to the Board’s TTABVUE docket
system.
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incorporating the term ‘MEDICARE’ in Class 36.” Applicant’s br. pp. 6-7.4 As support,
Applicant relies on the following eleven third-party registrations of marks including
“MR.” combined with a descriptive term for various services in International Class
36:5
Registration No. Mark Relevant Services
5801256 MR. INCOME Insurance brokerage services;
insurances agency services focused
on retirement and financial
preparation
1173598 MR. AUTO
(Auto disclaimed)
Insurance brokerage services
5937820 Mr209 Real estate agency services; real
estate brokerage; real estate
investment services; real estate
lending services; real estate
multiple listing services
1741675
“MR. REAL ESTATE”
(Real Estate
disclaimed)
Real estate brokerage services;
real estate management services
for others; and mortgage lending
services

4 7 TTABVUE 8-9.
5 Applicant submitted twelve registrations, but we have not relied on Registration
No. 1407947 because it has expired. An expired or cancelled registration is evidence of
nothing but the fact that it once issued. Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d
1744, 1747 (TTAB 1987).
In addition, although Applicant indicates that it supported its position with evidence of both
third-party use and registration of MR.-formative marks, the record only includes third-party
registration evidence. Therefore, we have no evidence of any commercial weakness of the
cited mark. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar
marks on similar goods [or services] is relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.”); Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d 1043, 1059 (TTAB 2017) (“As to commercial weakness, ‘the probative value of
third-party trademarks depends entirely upon their usage’”) (quoting Palm Bay, 73 USPQ2d
at 1693).

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Registration No. Mark Relevant Services
5812916 MrLeasor.com Real estate management services
3123447

MR. WATERFRONT
(Waterfront disclaimed)
Real estate brokerage of
waterfront property
2858152 MR. DREAM HOME Real estate brokerage services
2755504 MR. PAYROLL Check cashing services
2595690

Online banking services
2781421

Ticket brokering services for
shows, sporting events and
entertainment events
1890150
MR. HOCKEY
(Hockey disclaimed) Charitable fundraising services

Applicant also relies on third-party registrations for the marks PROFESSOR
MEDICARE (Reg. No. 6106264), MEDICARE MILLIONAIRE (Reg. No. 5621683),
MEDICARE MATT (Reg. No. 6046775), THE MEDICARE LADY (Reg. No. 5465987),
MEDICARE ANSWER MAN (Reg. No. 5107477), and MEDICARE BOB (Reg. No.
4688057), all with the word MEDICARE disclaimed and all for insurance related
services.
“[E]vidence of third-party registrations is relevant to ‘show the sense in which a
mark is used in ordinary parlance,’ …; that is, some segment that is common to both
parties’ marks may have ‘a normally understood and well-recognized descriptive or
suggestive meaning, leading to the conclusion that that segment is relatively weak[.]’”
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Serial No. 88515573
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Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015). The extent to which third-party use-based registrations bear on our
determination of the cited mark’s conceptual strength depends on the number of
registrations, the level of similarity between the involved marks, and the closeness of
the goods or services recited in the third-party registrations vis-à-vis those in the
cited registration. Third-party registrations for unrelated goods, however, are of
limited probative value. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for goods in other
classes where the proffering party “has neither introduced evidence, nor provided
adequate explanation to support a determination that the existence of I AM marks
for goods in other classes, ... support[s] a finding that registrants’ marks are weak
with respect to the goods identified in their registrations”); In re Thor Tech Inc., 90
USPQ2d 1634, 1639 (TTAB 2009) (third-party registrations for goods that appear to
be in fields which are far removed from the goods at issue are of limited probative
value).
As regards the third-party registrations for MR.-formative marks, although they
all recite services in International Class 36, only two, i.e., Registration Nos. 5801256
and 1173598, cover services in the insurance field. Even so, we recognize that the
abbreviation MR. is often used to personify a word, and conceptually is weak. As for
the registrations for MEDICARE-formative marks, they evidence the descriptive
Serial No. 88515573
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nature and resulting weakness of the word MEDICARE in the insurance industry.6
Thus, we agree with Applicant that the individual terms “MR.” and “MEDICARE”
are conceptually weak in association with insurance related services.
None of these proffered third-party registrations, however, include both the
abbreviation “MR.” and the word “MEDICARE.” On this record, only Applicant’s and
Registrant’s marks include both terms and therefore Applicant has not shown that
the cited mark as a whole is so weak that it is not entitled to protection against
Applicant’s similar mark.
Moreover, we must assume that the cited mark is at worst suggestive (and thus
inherently distinctive) because it is registered on the Principal Register without a
disclaimer or a claim of acquired distinctiveness. In re Fiesta Palms LLC, 85 USPQ2d
1360, 1363 (TTAB 2007). And, even weak marks are entitled to protection against
confusion. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
B. The Marks
Under the first DuPont factor concerning the similarity or dissimilarity of the
marks, we compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and overall commercial impression. DuPont, 177
USPQ at 567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed.
Cir. 2018). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1746

6 See https://en.wikipedia.org/wiki/Medicare_(United_States), a Wikipedia article describing
“Medicare” as “a national health insurance program in the United States ….” August 3, 2020
Request for Reconsideration, TSDR 24.
Serial No. 88515573
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(TTAB 2018), aff’d mem., 777 F. App’x (Fed. Cir. 2019) (quoting In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 (2019)
(quotation omitted).
Because similarity is determined based on the marks in their entireties, our
analysis is not predicated on dissecting the marks into their various components.
In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). However, “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.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
We compare Applicant’s mark with the cited mark MR.
MEDICARE. The wording in Applicant’s mark, MISTER MEDICARE is virtually
identical to the cited mark MR. MEDICARE. Both comprise two elements; “MR.”
which is an identically-pronounced abbreviation for “MISTER,” used as a title before
a man’s name,7 coupled with the word MEDICARE. Thus the two marks are phonetic
equivalents. Similarity in sound alone may be sufficient to support a finding that the

7 MERRIAM-WEBSTER online dictionary, www.merriam-webster.com/dictionary/Mr.
September 30, 2019 Office Action at TSDR 9.
Serial No. 88515573
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marks are confusingly similar. See e.g., In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988).
Visually, Applicant’s mark includes an orange rounded rectangle, outlined in
white, silver and black, in which the literal elements of Applicant’s mark are
contained. Where both words and a design comprise a mark, the words are normally
accorded greater weight because they are more likely to make an impression upon
purchasers, would be remembered by them, and would be used by them to call for or
discuss the services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed.
Cir. 2012) (citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the goods to which it is affixed”)).
Moreover, notwithstanding the color elements, we find that the rounded rectangle
design is merely an “ordinary geometric shape that serves as a background for the
[stylized letter] mark” that “is not sufficiently distinctive to change the commercial
impression conveyed by the mark.” In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1742 (TTAB 2016) (citing In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261,
1267 (TTAB 2011) (“And certainly the oval designs in the marks are merely
background … and do not make a strong commercial impression.”)).
Similarly, and contrary to Applicant’s position, the stylization of the wording in
Applicant’s mark cannot and does not distinguish it from the cited mark. Registrant’s
MR. MEDICARE mark is a standard character mark and marks appearing in
Serial No. 88515573
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standard character form may be displayed in any font style, color, and size, including
the identical stylization and color scheme of the literal elements of Applicant’s mark,
because the rights reside in the wording and not in any particular display or
rendition. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983) (“[T]he argument concerning a difference in type style is not viable where one
party asserts rights in no particular display. By presenting its mark merely in a typed
drawing, a difference cannot legally be asserted by that party.”). Thus, we must
consider Registrant’s standard character mark to include iterations displaying the
mark in the same or similar font, size, and colors as the term MISTER MEDICARE
appears in Applicant’s composite mark. In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1186-87 (TTAB 2018). Accordingly, Applicant’s evidence showing how
Registrant uses its mark in the marketplace is irrelevant. See Id. at 1186 (citing In
re i.am.symbolic, 123 USPQ2d at 1749).
As to the marks’ connotations and commercial impressions, we also find them
similar. Given the virtually identical shared wording, consumers would attribute the
same meaning to, and derive the same commercial impression from, MISTER
MEDICARE in Applicant’s mark as in the cited MR. MEDICARE mark.
Applicant argues that the marks are not similar because of the differences in their
visual commercial impressions and, citing a 2009 medical paper, maintains that
“visual recognition dominates over auditory memory.” Applicant’s br. p. 14.8
Applicant has not demonstrated here that “visual recognition” would dominate

8 7 TTABVUE 15.
Serial No. 88515573
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consumer perception and, for the reasons discussed above, we find this argument
unavailing.
Applicant also has introduced the trio and two pairs of registrations listed below,
arguing that the Office previously has allowed phonetically similar marks to issue.
Applicant urges, like in those cases, the differences in the visual commercial
impressions between its mark and the cited mark is sufficient to avoid any customer
confusion.
Registration No.

Mark

Services

4319936

MISTER MONEY Services relating to convenient
access to currency/legal
tender, namely, pawn
shop/pawn brokerage services,
and current and post-dated
check cashing services (Class
36)
3006120 MR. MONEY Printed publications, namely
books, about financial
investments, stocks and bonds,
real estate, insurance and
financial planning (Class 16)
2757394 MR. MONEY Entertainment services in the
nature of radio shows,
television shows, and online
radio and television shows all
related to financial
investments, stocks and bonds,
real estate, insurance and
financial planning (Class 41)
3827895

(Real Estate disclaimed)
real estate brokerage services
(Class 36)
1741675 “MR. REAL ESTATE”

(Real Estate disclaimed)
Real estate brokerage services;
real estate management
services for others; and
Serial No. 88515573
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Registration No.

Mark

Services

mortgage lending services
(Class 36)
5109036 MISTER PLUMBER Cleaning preparations for
household purposes (Class 3)
2035166 MISTER PLUMBER Plumbing services (Class 37)

These third-party registrations have limited probative value in our decision. First,
although the trio of MISTER/MR. MONEY marks and the pair of MISTER
PLUMBER marks are phonetically the same, unlike in this case (as discussed below),
the goods and services covered by those marks are not related on the face of the
identifications and the record before us is devoid of any evidence showing any
relatedness of those identified goods and services. While the remaining pair of
registrations cover seemingly related services, the subject marks differ significantly
in both sound and appearance as the MR. HOMES REAL ESTATE and design mark
includes both distinguishing phonetic and visual elements not present in the MR.
REAL ESTATE mark.
Moreover, it has been noted many times that each case must be decided on its own
facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“Even if some prior registrations had some characteristics similar to
[Applicant’s] application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”); see also In re Ala. Tourism Dep’t, 2020 USPQ2d 10485,
*11 (TTAB 2020) (“The Board recently reiterated that ‘[w]hile we recognize that
consistency is highly desirable,’ . . . consistency in examination is not itself a
substantive rule of trademark law, and a desire for consistency with the decisions of
Serial No. 88515573
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prior examining attorneys must yield to proper determinations under the Trademark
Act and rules.’”) (quotation omitted). Simply put, the co-existence of these other
registered marks on the Principal Register does not persuade us that confusion is not
likely in this case or that consistency requires a different result.
At bottom, while there are differences between the two marks, we find in their
entireties that they are much more similar than dissimilar. This DuPont factor thus
strongly favors a finding of likelihood of confusion.

III. Relatedness of the Services, Trade Channels and Classes of
Consumers
We now compare the services under the second DuPont factor. In making our
determination regarding the relatedness of the services, we must look to the services
as identified in Applicant’s application and the cited registration. See In re Detroit
Athletic 128 USPQ2d at 1052; In re Dixie Rests., 41 USPQ2d at 1534; see also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
“This factor considers whether ‘the consuming public may perceive [the respective
services of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014).
In an ex parte proceeding, such as this one, we must presume Applicant’s and
Registrant’s services encompass all services of the nature and type identified in the
application and registration. See In re Solid State Design Inc., 125 USPQ2d 1409,
1413-14 (TTAB 2018) (where the goods in an application or registration are broadly
Serial No. 88515573
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described, they are deemed to encompass all the goods of the nature and type
described therein); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137
(TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant services are used together or used by the same
purchasers; advertisements showing that the relevant services are advertised
together or sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both applicant’s services and the services listed in
the cited registration. See, e.g., In re Davia, 110 USPQ2d at 1817 (finding pepper
sauce and agave related where evidence showed both were used for the same purpose
in the same recipes and thus consumers were likely to purchase the products at the
same time and in the same stores). The issue is not whether purchasers would confuse
the services, but rather whether there is a likelihood of confusion as to their source.
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223
USPQ 830, 832 (TTAB 1984).
Applicant’s services are identified as “promotion of financial and insurance
services, on behalf of third parties” and “providing information about the healthcare
insurance plans of others via online videos” and the Registrant’s services are
identified as “insurance brokerage services.”
Serial No. 88515573
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Applicant maintains that its services are not identical to, overlapping, or
competitive with Registrant’s insurance brokerage services. Applicant, citing In re
Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990), and pointing to a Wikipedia
excerpt,9 argues “the wording in Registrant’s identification of services has a specific
and specialized meaning to those in the relevant niche field” and that Registrant’s
services “requir[e] … licensure and heavy state and federal regulation.” Applicant’s
br. p. 9 (emphasis supplied).10 While an insurance broker acts on behalf of the insured
and contracts directly with insurance carriers, Applicant asserts that, by contrast, it
promotes financial and insurance services on behalf of third-party providers and
provides education and information about the same. Id.
The Examining Attorney argues that the services are related because “[both
Applicant’s and Registrant’s] services are directed to the same consumers, namely,
those seeking information and coverage under supplemental Medicare insurance
policies.” Examining Attorney’s brief.11
We note initially that contrary to Applicant’s contention, Registrant’s recitation of
services is in plain language, is clear and unambiguous, and needs no extrinsic
evidence or further interpretation. Cf. In re Trackmobile, supra (considering extrinsic

9 Applicant’s March 10, 2020 Response, TSDR 62-64.
10 4 TTABVUE 10. Applicant, at page 9 of its brief, 7 TTABVUE 10, also cites to a URL
address to demonstrate how it provides its financial and insurance services on behalf of third
parties. The Board, however, will not follow hyperlinks or look for evidence that has not been
actually submitted. In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012)
(“reference to a website’s internet address is not sufficient to make the content of that website
or any pages from that website of record”).
11 9 TTABVUE 10.
Serial No. 88515573
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evidence to interpret “vague” terminology with special meaning in the industry). We
accordingly make clear that our comparison of the services is based on the
identification as recited in Applicant’s application vis-à-vis the one recited the cited
registration. See In re Detroit Athletic 128 USPQ2d at 1052. In so doing, we
nonetheless give all of the evidence properly of record the appropriate probative
value.
Turning then to our analysis, it is not necessary that the services be identical or
even competitive in order to find that they are related for purposes of our likelihood
of confusion analysis. Confusion may occur if the respective services are “related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that [the goods or services] emanate from
the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007))
As stated in a Wikipedia article made of record by Applicant, “[a]n insurance
broker sells, solicits, or negotiates insurance for compensation.”12 The article further
expounds:
Insurance brokers play a significant role in helping
companies and individuals procure property and casualty
(liability) insurance, life insurance and annuities, and
accident and health insurance. For example, research
shows that brokers play a significant role in helping small
employers find health insurance, particularly in more
competitive markets. … Brokers provide services beyond
procuring insurance, such as providing risk assessments,

12 Applicant’s March 10, 2020 Response, TSDR 62.
Serial No. 88515573
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insurance consulting services, insurance-related
regulatory and legislative updates, claims assistance
services, assisting with employee enrollment, and helping
to resolve benefit issues.13
We therefore find from the face of the identifications that the respective services
are related in that both Applicant and Registrant provide information regarding
insurance options – including supplemental Medicare insurance; Applicant by
promoting insurance services on behalf of third parties and by providing information
about the healthcare insurance plans of others via online videos, and Registrant as
part of its insurance brokerage services which, as identified, are broad enough to
cover supplemental Medicare insurance.14 In re Solid State Design, 125 USPQ2d at
1413-14. Moreover, to the extent Applicant promotes third-party insurance services
and provides information about various insurance plans, these services are
complementary to Registrant’s insurance brokerage services, as Applicant may offer
information about the insurance plans Registrant brokers.
The following Internet excerpts show that the Registrant offers information
regarding Medicare supplemental insurance and Medicare brokerage services and
that Applicant provides information regarding Medicare supplemental insurance,
corroborating our findings.

13 Id. at TSDR 63. In assigning probative weight to this article, we acknowledge that it further
states that “some states consider the provision of services that are unrelated to the insurance
procured through the broker to be an impermissible rebate or inducement.” Id.
14 Although Applicant’s services additionally include promotion of financial services on behalf
of third parties, we need not find relatedness as to every service listed in the identification.
It is sufficient for a refusal based on likelihood of confusion that relatedness is established
for any service in each class. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745
(TTAB 2014); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981).
Serial No. 88515573
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Registrant’s website:15

15 April 14, 2020 Final Office action, TSDR pp. 6-10.
Serial No. 88515573
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Serial No. 88515573
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Applicant’s website:16

16 Id. at TSDR 14; Applicant’s November 18, 2019 Response to Office Action, TSDR 21.
Serial No. 88515573
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That Registrant’s services are federally and state regulated does not alter our
findings. Indeed, as the Examining Attorney notes, consumers may not even be aware
of such regulation.
We therefore find the services related for purposes of our likelihood of confusion
analysis.
Furthermore, because there are no limitations as to channels of trade or classes
of purchasers in Applicant’s or Registrant’s recitation of services, we must presume
that Applicant’s and Registrant’s services, which include providing insurance
information, move in all usual channels of trade for these services including, as
demonstrated by the record, online videos and sales agents that can be contacted
through email and by phone, and are offered to and purchased by the usual classes of
purchasers of the services which, in this case, include ordinary consumers seeking
information or coverage related to supplemental Medicare insurance. See In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). We accordingly find the channels
of trade and classes of consumers to overlap.
Accordingly the DuPont factors concerning the relatedness of the services, trade
channels and classes of purchasers also favor a finding of likelihood of confusion.
IV. Purchaser Sophistication and Purchasing Care
Applicant maintains that “the cost and importance of consumer outcomes in the
area of healthcare mandate careful sophisticated purchasing,” and therefore, this
DuPont factor favors registration. Applicant’s br. p. 11.17 More specifically, according

17 7 TTABVUE 12.
Serial No. 88515573
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to Applicant, “consumers typically carefully research their options to make informed
decisions before selecting an insurance broker such as Registrant” while “[t]hose
utilizing Applicant’s services are also informed and seeking further information.”
Id. at pp. 10-11.18 We base our decision on the least sophisticated potential consumer,
including ordinary members of the general public seeking insurance information and
coverage. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1039 (TTAB 2016) (citing Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ 1157, 1163 (Fed. Cir. 2014)). Given the nature
of insurance products and the need to select the right one, we agree that even
ordinary purchasers of both Applicant’s insurance-centric promotion and information
services and Registrant’s insurance brokerage services will exercise some degree care
in their purchasing decisions. See, e.g., Carefirst of Md., Inc. v. FirstHealth of the
Carolinas, Inc., 77 USPQ2d 1492, 1503 (TTAB 2005) (“it is common knowledge that
even ordinary consumers tend to exercise some sophistication when it comes to
decisions relating to healthcare and healthcare insurance services.”). However, we do
not believe that the degree of care exercised by the respective consumers is outcome
determinative. Even knowledgeable and careful purchasers can be confused as to
source, especially where, as here, very similar marks are used in connection with
complementary and related services. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories

18 Id. at 11-12.
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even of discriminating purchasers … are not infallible.”)). See also Refreshment Mach.
Inc. v. Reed Indus., Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated
purchaser does not automatically eliminate the likelihood of confusion because “[i]t
must also be shown how the purchasers react to trademarks, how observant and
discriminating they are in practice, or that the decision to purchase involves such
careful consideration over a long period of time that even subtle differences are likely
to result in recognition that different marks are involved”).
We find the DuPont factor concerning purchaser sophistication and care favors
Applicant.
V. Actual Confusion
Applicant’s reliance on the absence of actual confusion is misplaced. Because there
is no evidence regarding the extent of Applicant’s use of its mark or Registrant’s use
of the cited mark, we cannot gauge whether or to what extent there has been an
opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v.
E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The
absence of any showing of actual confusion is of very little, if any, probative value
here because (1) no evidence was presented as to the extent of ETF’s use of the
VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re
Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). While examples of actual confusion may point
toward a finding of a likelihood of confusion, an absence of such evidence is not
compelling in support of a finding of no likelihood of confusion. In any event, a lack
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of evidence of actual confusion carries little weight in an ex parte case such as this.
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
“[I]t is unnecessary to show actual confusion in establishing likelihood of confusion.”
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed.
Cir. 1983). This DuPont factor is neutral.
VI. Conclusion
When we consider all of the arguments and evidence relating to the relevant
likelihood of confusion factors, we conclude, on balance, that confusion is likely
between Applicant’s mark for both “promotion of financial
and insurance services, on behalf of third parties” in International Class 35 and
“providing information about the healthcare insurance plans of others via online
videos” in International Class 36 and the cited registered mark MR. MEDICARE for
“insurance brokerage services” in International Class 36. We conclude so principally
due to the substantial similarity of the marks, the complementary and related nature
of the services and the overlap in purchasers, which is not outweighed by any care
exercised by consumers during the purchasing process.
Decision: The refusal to register Applicant’s mark MISTER MEDICARE under
Section 2(d) is affirmed.