Theodore E. Charlesv.Guardian Life Insurance Co. of America

Trademark Trial and Appeal Board

Mar 9, 1999

No. 92025414 (T.T.A.B. Mar. 9, 1999)

Paper No. 29
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Theodore E. Charles
v.
The Guardian Life Insurance Company of America
_____
Cancellation No. 25,414
_____
George E. Kersey for Theodore E. Charles.
Virginia R. Richard of Kane, Dalsimer, Sullivan, Kurucz,
Levy, Eisele and Richard, LLP for The Guardian Life
Insurance Company of America.
_____
Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Theodore E. Charles has filed a petition to cancel
Registration No. 1,745,375 on the Supplemental Register for
the mark INVESTOR (in the design form shown below) for
Cancellation No. 25,414
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“underwriting and administering an annuity insurance plan,”
pursuant to Section 2(d) of the Trademark Act.1
In the petition to cancel, petitioner, “as an
individual trading as Investors Marketing and Investors
Capital,” alleges that prior to respondent’s first use of
its mark in January 1990, petitioner was using the marks
INVESTOR’S MARKETING and INVESTOR’S CAPITAL in commerce in
connection with the sales of stocks, bonds, insurance and
annuities and that use by respondent of its mark INVESTOR
and design is likely to cause confusion with use by
petitioner of his marks.
Respondent, in its answer, denied the salient
allegations of the petition to cancel and asserted, as
affirmative defenses, that the petition fails to state a
claim upon which relief can be granted and that, since
petitioner’s alleged marks are descriptive terms, as a
matter of law, respondent’s use of its mark cannot cause
confusion with those descriptive terms.
The record consists of the file of the involved
registration; the trial testimony of Theodore E. Charles in
his own behalf and accompanying exhibits; the trial

1 Reg. No. 1,745,375, issued Jan. 5., 1993, claiming first use
dates of Jan. 1990. Section 8 affidavit filed and accepted.
Cancellation No. 25,414
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testimony of Peggy Coppola, an officer of respondent, and
accompanying exhibits; respondent’s first notice of reliance
introducing status and title copies of three registrations
for marks which include the word INVESTOR owned by
respondent and copies of articles reprinted from the Nexis
database which refer to or discuss respondent, its wholly–
owned subsidiary Guardian Investor Services Corporation
and/or its variable annuity fund THE GUARDIAN INVESTOR;
respondent’s second notice of reliance introducing status
and title copies of two additional registrations owned by
respondent and one additional article referring to the
GUARDIAN INVESTOR variable annuity.2 Both parties have
filed briefs but an oral hearing was not requested.
In the deposition taken of Theodore E. Charles,
petitioner testified that, as of June 1997, he was chairman
of Investors Capital Holding Company; that he became
involved with forming Investors Marketing Services (IMS) in
1987, which was incorporated in 1989, at which time he was
president of the corporation; that IMS was and is a
wholesaler of insurance products; that in 1988 IMS began
advertising under the names “Investors” and “Investors

2 Respondent’s motion to strike petitioner’s notice of reliance
was granted in the Board’s order of January 6, 1998 and thus
petitioner’s notice of reliance and exhibits PA-PJ have been
given no consideration. Respondent’s motion to strike
petitioner’s reply brief was denied on April 14, 1998 and thus
the reply has been considered.
Cancellation No. 25,414
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Marketing Services” in various publications and sending out
a monthly newsletter to the agents or brokers it had
licensed as well as to potential recruits, using the title
INVESTORS; and, that in June 1991 petitioner’s counsel
responded to a “cease and desist” letter from respondent, in
which petitioner’s counsel stated that Investor Marketing
Services, Inc. had used its INVESTORS and design mark prior
to any use by respondent and had the right to continue to do
so (Exhibit 10).3 Petitioner introduced a copy of the
incorporation document as well as a copy of the Uniform
Application for Investment Advisory filed by petitioner in
1996 which listed petitioner’s employment history with
various companies through the years, including his position
as president of Investors Marketing Services since 1987. As
evidence of use of the mark INVESTORS, petitioner introduced
copies of a newsletter dated September 1989 bearing the
heading INVESTORS Marketing Services, Inc., in which
references are made to various “Investors” Seminars (Exhibit

3 Respondent has strongly objected to the introduction of this
letter as evidence that counsel for respondent had sent cease
and desist letters to IMS and as evidence that IMS had
advertised in certain publications, as stated in the letter.
Respondent contends that it should be stricken as double
hearsay. Petitioner argues that the letter is being relied upon
only to show that it was sent in response to letters from
respondent and not for the truth of the matter asserted therein.
We do not find that the letter is inadmissible as hearsay when
relied upon solely to show that a letter was written to
respondent’s counsel by counsel for petitioner in response to
prior letters from respondent. We have given no probative
weight to the particular statements made in the letter.
Respondent’s request to strike is denied.
Cancellation No. 25,414
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6), of a marketing piece used to recruit agents to sell
equity products of Investors Marketing Services, Inc.
(Exhibit 7) and of newsletters dated January 1990 (Exhibit
8) and January 1991 (Exhibit 9) bearing the heading
INVESTORS Newsletter, with the name Investors Marketing
Services, Inc. in smaller print in the line below.
Respondent, by means of its notices of reliance, has
established ownership of four registrations on the Principal
Register for marks containing as a portion thereof the
phrase GUARDIAN INVESTOR.4
In the deposition of Peggy Coppola, an officer of both
respondent and Guardian Investors Services Corporation (the

4 Reg. No. 1,890,167, issued Apr. 18, 1995, for the mark
GUARDIAN INVESTOR SERVICES CORPORATION for investment advisory
and mutual fund services, namely, managing funds, stocks, and
bonds and other investments for institutions and the general
public. A disclaimer has been made of the words “Investor
Services Corporation.”
Reg. No. 1,651,016, issued July 16, 1991, for the mark THE
GUARDIAN INVESTOR for underwriting and administering an annuity
insurance plan. A disclaimer has been made of the word
“Investor.”
Reg. No. 1,634,339, issued Feb. 5, 1991, for the mark GUARDIAN
INVESTOR SERVICES for investment advisory and mutual fund
services namely, managing funds, stocks and bonds and other
investments for institutions and the general public. A
disclaimer has been made of the words “Investor Services.”
Reg. No. 1,634,338, issued Feb. 5., 1991, for the mark GUARDIAN
INVESTOR SERVICES and Bull & Bear design for investment advisory
and mutual fund services, namely, managing funds, stocks, bonds,
and other investments for institutions and the general public.
A disclaimer has been made of the words “Investor Services.”
Cancellation No. 25,414
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brokers-dealers subsidiary of respondent), Ms. Coppola
testified that THE GUARDIAN INVESTOR was developed as a
variable annuity in 1990; that the product has been
continuously sold since 1990 under both that mark and the
INVESTOR and design mark depicted in respondent’s
Supplemental Registration; that at the time of the
deposition there were about 85,000 contract holders in THE
GUARDIAN INVESTOR variable annuity; that this annuity has
consistently received high ratings; that the annuity is sold
through licensed brokers, either respondent’s registered
representatives or independent brokers who have a selling
agreement with respondent; that respondent has spent
approximately $10 million in extensive advertising and
promotion of the annuity since 1990 and that respondent’s
income from sales of the annuity has neared $2 billion since
its introduction; that respondent distributes millions of
pieces of promotional materials each year in connection with
THE GUARDIAN INVESTOR variable annuity, including, for
example, sales kits to brokers and agents, prospectuses to
the public, and semi-annual reports to contract holders, all
of which show use of the registered INVESTOR and design
mark; and that the annuity has received substantial,
unsolicited, favorable publicity since its introduction.
Ms. Coppola also testified that Investor’s Capital
Corp.(ICC), of which petitioner is CEO, entered into a
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selling agreement with respondent’s subsidiary Guardian
Insurance & Annuity Company in 1993 permitting ICC brokers
to sell THE GUARDIAN INVESTOR annuity and other equity
products of respondent and that this agreement remains in
effect.
Petitioner maintains that, on the basis of the evidence
of use by IMS of the mark INVESTORS since 1987, he has shown
that he has prior rights with respect to use of the mark.
Petitioner argues that respondent’s assertions that
petitioner’s marks are merely descriptive terms and cannot
result in confusion is without merit, since, even if
descriptive, the principal feature of both petitioner’s and
respondent’s marks is the word “investor”.5 Petitioner
further asserts that respondent has abandoned its registered
mark by nonuse, and has committed fraud on the Office by
defending this registration, since all the evidence of
record shows use by respondent of the mark INVESTORS in
connection with the word GUARDIAN. Petitioner notes that in

5 Although petitioner alleged use of the marks INVESTOR’S
CAPITAL and INVESTOR’S MARKETING in its petition to cancel,
petitioner’s evidence is directed to use of the mark INVESTORS.
Since, however, respondent has raised no objection to this
evidence as not being within the allegations of the pleadings,
we find the issue of use of the mark INVESTORS by petitioner to
have been tried by the implied consent of the parties and the
pleadings to be amended accordingly. FRCP 15(b).
Cancellation No. 25,414
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all other of registrant’s registrations the phrase “Investor
Services” or the word “Investor” has been disclaimed.6
As its initial defense, respondent contends that
petitioner has failed to establish his standing to bring
this action. Respondent argues that petitioner has not
proved that petitioner, “trading as Investors Marketing or
Investors Capital,” has ever used the word “investors” or a
stylized combination word/design mark which includes the
word “investors” in commerce. Respondent notes that
although petitioner may be titular president of and a
consultant for IMS, there is no evidence of record of
petitioner’s ownership interest in the company. Respondent
argues that the assertion of the potential rights of the

6 Respondent points out that the issues of fraud and abandonment
have been raised for the first time in petitioner’s brief. Upon
review of the trial record, we find it clear that these claims
were not only not raised in the original pleadings of
petitioner, but also were not tried by either express or implied
consent. See FRCP 15(b). Accordingly, petitioner’s arguments
with respect to its claims of fraud and abandonment have been
given no consideration. While we do not find these claims so
specious as to be considered violative of Rule 11, as argued by
respondent, we note that respondent is entirely correct in its
arguments that more than one trademark may be used at the same
time without the loss of the source indicating function of each
portion. See Procter & Gamble Co. v. Keystone Automotive
Warehouse, Inc., 191 USPQ 468 (TTAB 1976). Thus, the fact that
respondent may use GUARDIAN in close proximity to its registered
INVESTOR and design mark is not indicative of abandonment or
nonuse of the registered mark in itself.
Furthermore, the fact that “Investor” or “Investor Services”
has been disclaimed in other registrations of respondent is no
more than cumulative evidence of the descriptive nature of the
term “Investor," as has already been acknowledged by
respondent’s registration of its INVESTOR and design mark on the
Supplemental Register.
Cancellation No. 25,414
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third party IMS does not give petitioner standing.7
Respondent also argues that petitioner has failed to show
any likelihood of damage to him as a result of the continued
registration of respondent’s mark as is necessary for
standing. Finally, on the issue of standing, respondent
maintains that since petitioner is relying upon an
unregistered term, petitioner must prove either that the
term is inherently distinctive or that the mark has acquired
distinctiveness prior to respondent’s first use, a burden
which respondent argues petitioner has failed to meet.
Petitioner, in his response with respect to the
standing issue, states that he is not only chairman of
Investors Capital Holding Company but also president of IMS
and employed by it. Petitioner claims that Exhibits 6 and 7
substantiate his use of the mark “Investors Marketing” and
“Investor’s Capital” prior to 1990 and that the
advertisements placed in various publications in 1988 and
1989 were at his instruction. Petitioner insists that the
record is “full of references to the use by Petitioner (or

7 Respondent points to the following testimony during cross-
examination of Mr. Charles by respondent’s counsel:
Q. And this action is brought on your own personal behalf,
in your own name, correct?
A. Correct, and on behalf of Investors Marketing Services.
Q. And what is your relationship with Investors Marketing
Services that you would bring an action on in your own
name?
A. I’m employed by Investors Marketing Services as well
and receive fees as a consultant.
[Charles Tr. 31].
Cancellation No. 25,414
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any third party on behalf of which Petitioner claims to
assert the rights) of the marks INVESTOR, INVESTORS
MARKETING AND INVESTORS CAPITAL...” [Reply p.12].
All that is necessary to establish standing under
present day standards is that petitioner has a real interest
in the proceeding beyond that of the general public. See
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). However, a party
cannot assert the rights of a third party unless it can
establish that it has legitimate reasons for asserting the
claim in its own behalf. See Jewelers Vigilance Committee
Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed.
Cir. 1988). The fact that a person is an officer of a
corporation, without any evidence of commercial activity or
use of the pleaded mark in his own behalf rather than by the
corporation, is not sufficient to establish standing for
that person, as an individual. See Societe Civile des
Domaines Dourthe Freres v. S.A. Consortium Vinicole De
Bordeaux et De La Gironde, 6 USPQ2d 1205 (TTAB 1988).
therein.
Petitioner in this case claims that the evidence
demonstrates use by him of the pleaded (or tried) marks and
potential damage to him, as is sufficient to establish
standing for him as an individual. In addition, however,
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petitioner claims the right to assert the rights of the
third party IMS. Thus, the question before us is whether
petitioner has shown any commercial activity in his own
behalf in connection with the marks upon which he relies or
whether ownership and use of the marks lies solely with IMS
and petitioner has no legitimate reasons for asserting a
claim as an individual.
Petitioner has testified that he became involved with
forming Investors Marketing Services in 1987 and that this
company began advertising in 1988 in various publications,
and also began issuing a newsletter at that time. In 1989
the company was incorporated, and as shown by the
incorporation document made of record, petitioner and Janice
Charles were the sole officers and directors listed for the
company. The only evidence of actual use of the mark
INVESTORS (or INVESTORS Marketing Services, Inc.) which has
been demonstrated, however, is in connection with
newsletters issued since 1989, presumably after
incorporation because the corporation was so identified in
the newsletters.
Regardless of the limited evidence of use, however, we
find that petitioner has adequately shown that he, as an
individual, has a real interest in this proceeding. He has
testified as to his participation in the founding of
Investors Marketing Services and in the advertising by this
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entity under the names “Investors” and “Investors Marketing
Services” beginning in 1988. Thus, at this point,
petitioner was directly involved in the commercial activity
with respect to use of the pleaded (or tried) marks. When
the company was incorporated in 1989 and use of the marks
switched to the corporation, petitioner was the principal
officer of the corporation. Although petitioner has
introduced no written evidence to prove that use of the
marks by IMS inured to his benefit, either by means of his
ownership of the marks and licensing to IMS or his ownership
of IMS, we find that his major involvement in the
predecessor company and later in IMS is sufficient to
presume at least an implied license from petitioner to IMS
for use of the marks. Cf. In re Briggs, 229 USPQ 76 (TTAB
1986) [since applicant had established his adoption and use
of mark as an individual and the later oral license of mark
to corporation of which he was president, applicant
effectively controlled quality of services offered under
mark, and use by corporation inured to benefit of
applicant]. Accordingly, we find that petitioner has
adequately demonstrated the real interest necessary to
establish his standing to seek cancellation of respondent’s
registration.
We find, however, that petitioner has failed to meet
his burden of proof with respect to the issue of likelihood
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of confusion. Even without resolving the issue of priority
or the questions raised by respondent with respect to
petitioner’s proof that the term INVESTORS, as used by
petitioner or IMS, either was inherently distinctive or had
acquired distinctiveness, we find petitioner’s case to be
insufficient.
In the first place, the term INVESTORS is, at the very
least, highly suggestive when used in connection with goods
or services related to the investment field. Thus,
petitioner’s mark cannot be considered to have strong
trademark significance and cannot be relied upon as the
determinative factor, in itself, in resolving the issue of
likelihood of confusion, although petitioner apparently
believes this to be the case. See Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In
re Hamilton Bank, 222 USPQ 174 (TTAB 1984). Second, the
only use of the mark INVESTORS shown by the evidence of
record is in connection with a newsletter sent to broker-
agents and arguably in connection with the seminars offered
therein. As such, the only proven use of the mark is for
the limited purposes of recruitment, training and general
dispensing of information, by means of a newsletter or
seminars, to brokers or agents, a sophisticated level of
purchasers. There is no evidence of use by petitioner or
IMS of INVESTORS, or any version thereof, as a mark in
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connection with the sale of stocks, bonds, insurance and
annuities to the general public.
Thus, we find such disparity between the services with
which respondent uses its registered INVESTOR and design
mark and the publications or seminars intended only for
brokers with which petitioner uses its INVESTORS mark as to
preclude any holding of likelihood of confusion. There is
no need to go into the issues of whether or not petitioner
has the burden of demonstrating acquired distinctiveness for
the mark used by IMS and whether or not this acquired
distinctiveness must be prior to respondent’s first use of
its mark or prior to respondent’s mark’s having acquired
distinctiveness.8 See Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134 (TTAB 1992)
Decision: The petition to cancel is dismissed.
E. W. Hanak
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board

8 In view of our decision, we have no need to consider the
equitable defenses argued by respondent in its brief. We would
note, however, that these defenses also were not raised in the
pleadings, and do not appear to have been tried either by
express or implied consent of the parties.
Cancellation No. 25,414
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