AFBA Financial Services Co.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75094841 (T.T.A.B. Sep. 28, 2000)

Hearing Paper No. 15
April 4, 2000 PTH
9/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AFBA Financial Services Company1
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Serial No. 75/094,841
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Simor L. Moskowitz of Jacobson, Price, Holman & Stern PLLC
for AFBA Financial Services Company.
Asmat Khan, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by AFBA Financial
Services Company to register the mark FIVE STAR WHOLE LIFE
and design as shown below,

1 We note that Office assignment records show that applicant has
changed its name from Armed Forces Benefit Services, Inc. to AFBA
Financial Services Company.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/094,841
2
for “insurance services, namely, marketing, underwriting
and administration of life insurance.”2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark, if
used in connection with applicant’s services, would so
resemble the previously registered mark FIVE STAR for
“insurance underwriting services in the field of property
and casualty,”3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs and
an oral hearing was held before this panel.
We affirm the refusal of registration.
Our determination is based on an analysis of all of

2 Serial No. 75/094,841, filed April 16, 1996, alleging a bona
fide intention to use the mark in commerce. The term WHOLE LIFE
is disclaimed apart from the mark as shown.
3 Registration No. 2,038,224 issued February 18, 1997.
Ser No. 75/094,841
3
the probative facts in evidence that are relevant to the
factors set forth in In re E. I. duPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Food, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant contends that there is no likelihood of
confusion in this case because the services are not
competitive and the marks have different connotations and
create different commercial impressions. In particular,
applicant maintains that FIVE STAR in its mark connotes the
military because applicant issues life insurance policies
to members and veterans of the Armed Forces and their
families which are befitting a five-star general, whereas
FIVE STAR in the cited mark connotes exclusivity because
registrant’s insurance is offered only to “five star”
restaurants and hotels. Applicant submitted a letter from
Robert Puglisi, a private investigator, who determined that
registrant’s FIVE STAR insurance was offered only to well-
established and upscale, i.e., “five star,” restaurants and
hotels. As to the respective services, applicant argues
that they are not competitive and the mere fact that both
applicant’s services and registrant’s services fall into
Ser No. 75/094,841
4
the general category of insurance services does not mean
that consumers will assume that they emanate from the same
source.
The Examining Attorney maintains that the marks are
similar due to the shared presence of the words FIVE STAR.
Further, the Examining Attorney contends that applicant’s
services and the services rendered by the registrant are
related. In this regard, the Examining Attorney made of
record over sixteen use-based third-party registrations for
marks, which, in each instance, are registered for life
insurance underwriting services, on the one hand, and
casualty and property insurance underwriting services, on
the other hand. For example, ARBELLA and design is
registered for, inter alia, insurance underwriting services
in the fields of life insurance and commercial property and
liability insurance (Registration No. 2,038,945); PRICOA is
registered for, inter alia, life, property and casualty
insurance underwriting services (Registration No.
2,169,633); CNA is registered for, inter alia, underwriting
services in the fields of life and property insurance
(Registration No. 2,169,594); NDIRECT is registered for,
inter alia, insurance services, namely underwriting of
life, property and casualty insurance (Registration No.
2,142,880); PFN is registered for, inter alia, insurance
Ser No. 75/094,841
5
agency in the fields of life insurance and property and
casualty insurance (Registration No. 2,150,438); and AMERUS
DIRECT is registered for, inter alia, insurance
underwriting in the fields of property and casualty, and
life insurance (Registration No. 2,119,595).
Also, the Examining Attorney made of record
advertisements from the Internet and a Yellow Pages
Directory which show that insurance companies offer a wide
range of insurance services, including life insurance and
property insurance.
With respect to the services, it is well settled that
the issue of likelihood of confusion in a proceeding such
as this must be determined on the basis of the services
specified in the subject application vis-à-vis the services
set forth in the cited registration, without limitations or
restrictions not reflected therein. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). In this case, because
applicant’s application and the cited registration contain
no restrictions/limitations as to channels of trade and
purchasers, we must presume that the respective services
travel in all the normal channels of trade for such
services and that they are available to all potential
customers. In other words, we can not take into
Ser No. 75/094,841
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consideration applicant’s argument that registrant offers
its services only to upscale hotels and restaurants.
Moreover, it is not necessary that the services be
identical or even competitive in nature in order to support
a finding of likelihood of confusion. It is sufficient
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that would give rise, because
of the marks used in connection therewith, to the mistaken
belief that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, we find that the record supports the
Examining Attorney’s position that applicant’s services of
marketing, underwriting and administration of life
insurance and registrant’s underwriting services in the
field of property and casualty are related. Although the
third-party registrations are not evidence that the
different marks shown therein are in use or that the public
is familiar with them, they nevertheless have some
probative value to the extent that they serve to suggest
that the services listed therein are of a kind which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re
Ser No. 75/094,841
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Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 (TTAB 1988) at
n. 6.
Turning next to a comparison of applicant’s mark FIVE
STAR WHOLE LIFE and design and the registered mark FIVE
STAR, we find that the marks, when considered in their
entireties, are very similar. Although we have compared
the marks in their entireties, there is nothing improper in
giving more weight, for rational reasons, to a particular
portion of a mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, “that 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 a mark …”
224 USPQ at 751. The dominant portion of applicant’s mark
is the words FIVE STAR, which is identical to the cited
mark FIVE STAR. Applicant has disclaimed WHOLE LIFE,
thereby acknowledging the descriptiveness of this phrase.
Also, the five star design in applicant’s mark is
subordinate matter and simply reinforces the words FIVE
STAR.
In view of the foregoing, we conclude that purchasers
familiar with registrant’s insurance underwriting services
in the field of property and casualty rendered under its
mark FIVE STAR, would be likely to believe, upon
Ser No. 75/094,841
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encountering applicant’s mark FIVE STAR WHOLE LIFE and
design for marketing, underwriting and administration of
life insurance, that applicant’s services originated with
or are somehow associated with or sponsored by the same
entity. In particular, purchasers would be likely to
believe that due to the shared term FIVE STAR, the life
insurance services offered by applicant under the mark FIVE
STAR WHOLE LIFE and design represents a new insurance
service from registrant.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
R. F. Cissel
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board