Universal Premium Acceptance Corp.

Trademark Trial and Appeal Board

Sep 8, 2003

No. 75777087 (T.T.A.B. Sep. 8, 2003)

Mailed: September 8, 2003
Paper No. 13
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Universal Premium Acceptance Corporation
________
Serial No. 75/777,087
_______
Timothy J. Feathers of Stinson Morrison Hecker LLP for
Universal Premium Acceptance Corporation.
Michael Webster, Trademark Examining Attorney, Law Office
102 (Tom Shaw, Managing Attorney).
_______
Before Chapman, Holtzman and Drost, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Universal Premium Acceptance Corporation (a Missouri
corporation) has filed an application to register on the
Principal Register the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/777087
2
for “electronic transmission of insurance premium financing
information” in International Class 38.1 The application
was filed on August 16, 1999, based on applicant’s claimed
date of first use and first use in commerce of April 26,
1999.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its
identified services, so resembles two prior registered
marks (both on the Principal Register) owned by two
different entities: (1) PFA EXPRESS for “commercial
premium finance administrative services in the nature of
providing financial rates and terms, for use by others” in
International Class 36;2 and (2) the mark shown below
for “mortgage lending services” in International Class 36,3
as to be likely to cause confusion, mistake or deception.
1 Informationally, various electronic transmission services are
generally classified in International Class 38.
2 Registration No. 2,054,143, issued April 22, 1997 to First
Premium Services, Inc., Section 8 affidavit accepted, Section 15
affidavit acknowledged. The term “express” is disclaimed.
3 Registration No. 2,479,100, issued August 21, 2001 to DePfa
Deutsche Pfandbreifbank AG.
Ser. No. 75/777087
3
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We affirm the refusal to register as to both cited
registrations. In reaching this conclusion, we have
followed the guidance of the Court in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key, although not exclusive,
considerations are the similarities of the marks and the
similarities of the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The means of distribution and
sale, although certainly relevant, are areas of peripheral
inquiry. The fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [and services] and differences
in the marks.”). See also, In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the services
involved in this case, and we note that the question of
likelihood of confusion in Board proceedings regarding the
registrability of marks, must be determined based on an
Ser. No. 75/777087
4
analysis of the goods or services identified in applicant’s
application vis-a-vis the goods or services recited in the
registration(s), rather than what the evidence shows the
goods or services actually are. See Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). Further, it is a general
rule that goods or services need not be identical or even
competitive to support a finding of likelihood of
confusion. Rather, it is enough that the goods or services
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be seen by the same persons under circumstances which could
give rise, because of the marks used therewith, to a
mistaken belief that they emanate from or are in some way
associated with the same producer or that there is an
association between the producers of each party’s goods or
services. See In re Peebles Inc., 23 USPQ2d 1795, 1796
(TTAB 1992); and In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
Applicant’s service of providing insurance premium
financing information is limited only in that it is
provided by electronic transmission; but there is otherwise
Ser. No. 75/777087
5
no restriction as to channels of trade or consumers. The
cited registration for the mark PFA EXPRESS which is
registered for “commercial premium finance administrative
services in the nature of providing financial rates and
terms, for use by others” is for essentially the same
service as that identified by applicant in its application,
namely, providing insurance premium financing information,
which could and presumably would include financial rates
and terms.4
Applicant asserts that “the services of both Applicant
and First Premium are provided to commercial entities in
the insurance industry,” but argues that the primary
consumers of applicant’s services are insurance agents and
brokers, while this cited registrant’s primary consumers
are insurance companies themselves. (Brief, pp. 7-8.)
This argument regarding different consumers is not
persuasive in light of the respective identifications of
services, which are not so limited.
We disagree with applicant’s conclusory statement that
because applicant could not find any use of this
registrant’s mark PFA EXPRESS on the Internet, applicant
4 The “premium finance administrative services” within this cited
registrant’s identification are further specified by the phrase
“in the nature of providing financial rates and terms.”
Applicant has not argued that it does not provide financial rates
and terms.
Ser. No. 75/777087
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had established that the mark is not used in any on-line
context. Applicant provided no information as to the
extent or the parameters of its search for this
registrant’s mark on the Internet. In any event, there is
no restriction in this registrant’s identification of
services stating that it will not offer its services
through the Internet.
With regard to applicant’s services vis-a-vis the
second cited registrant’s “mortgage lending services”
(offered under the mark EPfa), we find that these are
closely related services. While the specific services are
different, the record contains several third-party
registrations, based on use in commerce, listing both of
these types of services in connection with the same marks.
See, for example, Registration No. 1,872,759 for “...
insurance premium financing services, ... mortgage lending
services, ...”; Registration No. 1,939,383 for “providing
financial services, namely, mortgage brokerage services and
mortgage banking services and insurance premium
financing,...”; and Registration No. 1,635,683 for “...
insurance premium financing services, ... savings account
and mortgage lending services, ....”
When considering the third-party registrations
submitted by the Examining Attorney, we are aware that such
Ser. No. 75/777087
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registrations are not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them. Such third-party registrations
nevertheless have some probative value to the extent they
may serve to suggest that such services are of a type which
emanate from the same source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB
1988).
The Examining Attorney also submitted several
excerpted stories retrieved from the Nexis database to show
that mortgage lending services and insurance premium
financing services are frequently available from a single
source, such as the following examples:
Headline: Letters to the Editor:
Herman Dickey, Vice president of
marketing, PMI Mortgage Insurance Co.,
San Francisco
... Since premium financing burst on
the mortgage scene from 12 to 14 months
ago, popularity of these programs has
taken off.
...
All mortgage lenders (but particularly
mortgage bankers) have been hard-
pressed to compete with “No MI
[mortgage insurance]” programs.
Premium financing represents the only
viable response these lenders have to
such programs. “National Mortgage
News,” October 24, 1988;
Ser. No. 75/777087
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Headline: Latino Thrift Beefs Up
Subprime Unit’s Staff
... In addition to subprime mortgage
lending, the company does auto
financing and auto insurance premium
financing. “The American Banker,”
April 10, 1997;
Headline: Ex-New Yorker Finds Good
Climate For Convertible Notes in
California
... The bank concentrates on asset-
based financing, insurance premium
financing, mortgage banking and
construction lending. “The American
Banker,” February 16, 1988; and
Headline: Consumer Report: Bought by
Bank of New England
... The deal is seen as beneficial to
both Consumers and Bank of New England.
The immense resources of the larger
bank will give Consumers deeper
pockets, allowing it to rebuild
following last year’s loss. Consumers
has divested all but three of its
principal subsidiaries, retaining a
secondary mortgage company, a real
estate development firm and an
insurance premium financing company.
“Business Dateline,” April 14, 1986.
Based on the evidence of record, we find that
applicant’s services (insurance premium financing
information provided via electronic transmission) are
closely related to each of the two cited registrant’s
respective services (commercial premium financial
administrative services in the nature of providing
financial rates and terms, and mortgage lending services).
Ser. No. 75/777087
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We do not find any significant differences in the
channels of trade or purchasers for each of the three
identified services. While one of the registrations limits
the services to “commercial” premium financing information,
applicant’s identification is not so limited and hence
encompasses the “commercial” information offered by that
registrant. And it has been shown that insurance premium
financing and mortgage lending services are offered to the
same purchasers through some of the same channels of trade.
Therefore, the trade channels and purchasers at the very
least overlap.
Applicant’s limitation to “electronic transmission” of
such information does not compel a different result, as it
is very plausible in today’s business world that much
information in any of the identified services is or could
be transmitted electronically.
Applicant also argues that the purchasers of these
respective services are commercial entities with
sophisticated purchasing personnel who are able to
distinguish between the marks e-PFA and PFA EXPRESS and
EPfa. Even assuming, arguendo, that the purchasers of
insurance premium financing information services, the
services of providing financial rates and terms, and
mortgage lending services are all sophisticated,
Ser. No. 75/777087
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knowledgeable consumers, “even careful purchasers are not
immune from source confusion.” See Wincharger Corporation
v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); In
re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999);
and In re Decombe, 9 USPQ2d 1812 (TTAB 1988). See also, In
re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986)
[“While we do not doubt that these institutional purchasing
agents are for the most part sophisticated buyers, even
sophisticated purchasers are not immune from confusion as
to source where, as here, substantially identical marks are
applied to related products”]. That is, even relatively
sophisticated purchasers of these services are likely to
believe that the services come from the same source, if
offered under the involved substantially similar and
arbitrary marks. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990); and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992).
Turning next to a consideration of the marks,
applicant contends that its mark e-PFA (as shown above) and
PFA EXPRESS are “markedly distinct marks in terms of sight,
sound and appearance.” (Brief, p. 5.) Specifically
applicant contends that the “e” in its mark relates to
“electronic” commerce, while the term “express” in the
Ser. No. 75/777087
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first cited mark relates to something provided in a fast
manner; that the letters “PFA” in its mark are an acronym
for “premium financing agreements,” while the same letters
in the first registrant’s mark relate to “premium financing
administration”; and that the cadence and rhythm of these
two marks is very dissimilar.
The Examining Attorney contends that applicant’s mark
and PFA EXPRESS are “nearly identical” in sight, sound and
commercial impression (brief, p. 5); that the dominant
portion of each of these two marks is PFA; and that,
considering the marks as a whole, the addition of the
descriptive letter “e” and the descriptive term “express,”
respectively, does not negate the similarity of the overall
commercial impression of these marks.
We agree with the Examining Attorney that the marks
e-PFA and PFA EXPRESS are similar in sight, sound,
connotation and overall commercial impression. The more
arbitrary and dominant portion in each mark is the letters
“PFA.” It is, of course, well settled that marks must be
considered in their entireties. However, our primary
reviewing Court has held that in articulating reasons for
reaching a conclusion on the question of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
Ser. No. 75/777087
12
particular feature or portion of a mark. That is, one
feature of a mark may have more significance than another.
See Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985).
Moreover, the minor differences are not likely to be
recalled by purchasers seeing the marks at separate times.
Under actual market conditions, consumers do not have the
luxury of a side-by-side comparison of the marks; and
further, we must consider the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of the many trademarks encountered.
Thus, the purchaser’s fallibility of memory over a period
of time must also be kept in mind. See Grandpa Pidgeon’s
of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ
573 (CCPA 1973); and Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir.,
June 5, 1992).
With regard to the connotation of these two marks,
applicant’s assertion that the letter “A” in “PFA” means or
connotes “agreements” in applicant’s mark, but it refers to
“administration” in the PFA EXPRESS mark is unsupported by
any evidence of consumer perception of the letters “PFA” as
Ser. No. 75/777087
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different acronyms relating to premium financing agreements
or premium finance administration; and we are not convinced
that the purchasing public would make such a distinction.
Further, during the prosecution of applicant’s
application, the Examining Attorney inquired as to the
meaning of the letters PFA in the relevant trade or
industry, and applicant responded that it used the letters
to refer to premium financing agreement, but that those
terms had no particular significance in the relevant trade
or industry. (Applicant’s response, filed December 12,
2000, p. 4.)
Consumers may well believe that applicant’s mark e-PFA
simply refers to a modern “electronic” version of the cited
registrant’s mark PFA EXPRESS.
In comparing applicant’s mark e-PFA to the second
cited registered mark EPfa, we find that these marks are
similar in sound, appearance and overall commercial
impression. There is no evidence as to the connotation of
the registered mark. Applicant argues that the registered
mark is “by all accounts a trade name of a German
commercial mortgage company.” (Brief, pp. 10-11.)
However, applicant is incorrect as the name of this
registrant is DePfa Deutsche Pfandbreifbank AG. In any
event, there is nothing to indicate that EPfa would be
Ser. No. 75/777087
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perceived as this registrant’s trade name. Again we take
into account purchasers’ fallible memories. In addition,
when spoken, this registered mark could be pronounced as
“e-pfa” (i.e., “electronic – pfa”) or as a two syllable
term “ep-fa.” There is no “correct” pronunciation of a
trademark. See In re Belgrade Shoe, 411 F.2d 1352, 162
USPQ 227 (CCPA 1969); In re Lamson Oil Co., 6 USPQ2d 1041
(TTAB 1987); and In re Energy Telecommunications &
Electrical Association, 222 USPQ 350 (TTAB 1983).
Finally, although applicant’s attorney has represented
that there have been no instances of actual confusion since
applicant commenced use of its mark in April 1999, such
unsubstantiated statement is entitled to little weight.
Majestic Distilling Co., supra, 65 USPQ2d at 1205 (“With
regard to the seventh DuPont factor, we agree with the
Board that Majestic’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”). Importantly, in this case, the registered “EPfa”
mark is based on Section 44 of the Trademark Act, and in
any event, there is no evidence of applicant’s and either
of the cited registrants’ geographic areas of sales, or the
amount of the sales under the respective marks. Further,
there is no information from the registrants. In any
event, the test is likelihood of confusion, not actual
Ser. No. 75/777087
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confusion. See Weiss Associates Inc. v. HRL Associates
Inc., supra; and In re Kangaroos U.S.A., 223 USPQ 1025
(TTAB 1984). That is to say, the absence of evidence of
actual confusion is offset by the absence of evidence that
there has been a substantial opportunity for actual
confusion to have occurred (i.e., evidence of an overlap in
the respective actual trade channels). In these
circumstances, we cannot conclude that the apparent absence
of actual confusion is entitled to significant legal weight
in the likelihood-of-confusion analysis. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Decision: The refusal to register under Section 2(d)
is affirmed as to both cited registrations.