American Community Mutual Insurance Company

Trademark Trial and Appeal Board

Sep 17, 2008

No. 78827035 (T.T.A.B. Sep. 17, 2008)

Mailed: 9/17/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Community Mutual Insurance Company
________

Serial No. 78827035
_______

John S. Artz of Dickinson Wright for American Community
Mutual Insurance Company.

Kathleen Lorenzo, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

American Community Mutual Insurance Company filed an
application to register the mark PAY AS YOU GO for
“insurance underwriting in the field of health care plans
and life insurance plans and insurance administration in
the field of health care plans and life insurance plans” in
International Class 36.1

1 Application Serial No. 78827035, filed March 2, 2006, alleging
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78827035
2
The trademark examining attorney refused registration
on two bases, namely 1) 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 PAY-AS-
YOU-GO for “insurance brokerage services, insurance claims
administration and claim processing services, and insurance
consultation services”2 as to be likely to cause confusion;
and 2) under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark, if
used in connection with applicant’s services, would be
merely descriptive thereof.
When the refusals were made final, applicant appealed.3
Applicant and the examining attorney filed briefs.
Mere Descriptiveness
Applicant agrees that the term “pay as you go”
“generically refers to the practice of paying for services
as you use them instead of in advance.” (Brief, p. 9).
Applicant also stated that “the intended use of the product
will allow customers of this plan to buy coverage when it

2 Registration No. 3043248, issued January 17, 2006 pursuant to
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
3 The examining attorney also issued a final refusal based on
applicant’s noncompliance with a requirement to submit additional
information about the mark and services. The examining attorney,
in her brief, indicated that she has withdrawn the requirement.
Ser No. 78827035
3
is needed.” (Response, 2/28/07). In response to the
refusal, applicant offers only the conclusory statement
that the mark is not descriptive of an ingredient, quality,
characteristic, function, feature, purpose and/or use of
the services. Applicant also notes “with irony, that the
cited registration, for which the examining attorney relies
on to reject the Appellant’s mark under a likelihood of
confusion standard, was not rejected as being descriptive
but was allowed to issue.” (Brief, pp. 9-10).
The examining attorney maintains that the terminology
“pay as you go” is commonly used to refer to the practice
of paying for services as you use them, instead of in
advance. Thus, the examining attorney contends, the
proposed mark merely describes applicant’s insurance
services that allow individuals to pay for coverage as they
need it, that is, on a “pay-as-you-go” basis. The
examining attorney also points out that, contrary to the
gist of applicant’s remarks, the cited registration issued
under the acquired distinctiveness provision of Section
2(f). In support of the refusal, the examining attorney
submitted dictionary definitions of “pay as you go” and an
excerpt of a third-party’s webpage regarding its health
plan.
Ser No. 78827035
4
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. Contrary to the gist of a portion
of applicant’s argument, that a term may have other
meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
Ser No. 78827035
5
settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). The “average”
or “ordinary” consumer is the class or classes of actual or
prospective customers of applicant’s goods or services. In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987).
The term “pay-as-you-go” is defined as “the system or
practice of paying debts as they are incurred.” The
American Heritage Dictionary of the English Language (4th
ed. 2000); and “when you pay for services as you use them,
instead of in advance.” www.moneyglossary.com
Also of record is an excerpt of “Illinois Health Plan
Analysis” (Winter 2007) retrieved from the Internet. This
material refers to applicant’s insurance program offered
under PAY AS YOU GO, describing it as a plan in which “an
individual can buy additional coverage as they need it.”
Based on the meaning of the terminology “pay as you
go,” and applicant’s own description of its prospective
insurance product as one that will allow customers to buy
coverage when it is needed (a fact supported by the
Ser No. 78827035
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Internet excerpt), we find that the terminology is merely
descriptive. The terminology PAY AS YOU GO immediately
describes, without speculation or conjecture, a significant
feature of applicant’s insurance services, namely that the
insurance products it intends to sell will allow customers
to pay for insurance coverage as they need it, rather than
in advance.
Lastly, as the examining attorney pointed out, the
cited registration issued pursuant to Section 2(f), thereby
undercutting applicant’s argument that this application and
the cited registration were subject to inconsistent
treatment by the Office. See, e.g., Yamaha International
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988) [for procedural purposes, a
claim of distinctiveness under Section 2(f) may be
construed as conceding that the matter to which it pertains
is not inherently distinctive]. In any event, the issuance
of the cited registration under Section 2(f) is irrelevant
to our analysis. 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.”]. As often stated, each case must stand on its own
Ser No. 78827035
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record. The present record amply supports our conclusion
in this appeal.
The Section 2(e)(1) refusal based on mere
descriptiveness is affirmed.

Likelihood of Confusion
Registration has been refused on the ground that
applicant’s mark, if used in connection with applicant’s
“insurance underwriting in the field of health care plans
and life insurance plans and insurance administration in
the field of health care plans and life insurance plans,”
would so resemble the previously registered mark PAY-AS-
YOU-GO for “insurance brokerage services, insurance claims
administration and claim processing services, and insurance
consultation services” as to be likely to cause confusion.
The examining attorney maintains that the marks are
virtually identical, differing only in the hyphenation
between the words comprising the registered mark. The
services, according to the examining attorney, must be
compared in terms of how they are identified in the
involved application and registration. When the services
are compared under such constraints, they are closely
related. In support of the refusal, the examining attorney
introduced excerpts of third-party web pages.
Ser No. 78827035
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Applicant, although conceding that the marks are
“similar” (brief, p. 3), goes on to argue that the
hyphenation in the registered mark may change the meaning
of the words and serves to distinguish the commercial
impression conveyed by the mark. As to the services,
applicant contends that they are “significantly and
drastically different.” (Brief, p. 4). More specifically,
applicant states that while its services relate to the
underwriting and administration of health and life
insurance policies, registrant’s services relate to a
payroll product that assists in handling and paying for
workers’ compensation insurance. Applicant also contends
that the channels of trade and customers for the respective
services are different.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
Ser No. 78827035
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and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
The marks PAY AS YOU GO and PAY-AS-YOU-GO differ only
in the presence of the hyphens in registrant’s mark. The
marks are identical in sound, meaning and overall
commercial impression, and are virtually identical in
appearance. Simply put, applicant is way off base in
arguing that the hyphenation distinguishes the marks. It
is telling that while applicant contends that the
hyphenation gives registrant’s mark a meaning and
commercial impression different from applicant’s mark,
applicant never identifies the different meaning and
commercial impression. The fact that registrant’s mark
employs hyphens to connect the words in its mark is of
virtually no significance when comparing the marks;
consumers are not likely to notice or remember this subtle
difference between the marks. See In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988) [when the same words are used
Ser No. 78827035
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in marks, the presence or absence of hyphens or other
punctuation marks generally will be of little
significance].
The fact that the marks are virtually identical is a
du Pont factor that weighs heavily in favor of finding a
likelihood of confusion between the marks.
We next turn to a consideration of the services. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s services and
registrant’s services that is required to support a finding
of likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, or
virtually the same as in this case, it is only necessary
that there be a viable relationship between the services in
order to support a finding of likelihood of confusion. In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983).
With respect to the services, it is well settled that
the question of likelihood of confusion must be determined
based on an analysis of the services recited in applicant’s
application vis-à-vis the services identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
Ser No. 78827035
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USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the services in the
application at issue and/or in the cited registration 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 identification of services
encompasses not only all the services of the nature and
type described therein, but that the identified services
are offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Applicant’s services are identified as “insurance
underwriting in the field of health care plans and life
insurance plans and insurance administration in the field
of health care plans and life insurance plans,” while
registrant’s services are identified as “insurance
brokerage services, insurance claims administration and
claim processing services, and insurance consultation
services.”
Applicant’s contention that the services are
“significantly and drastically different” is ill founded
Ser No. 78827035
12
given the constraints under which we compare the services.
Applicant’s contention that registrant’s services relate to
a payroll product that assists in handling workers’
compensation insurance is of no consequence. An applicant
may not restrict the scope of the goods and/or services
covered in a cited registration by argument or extrinsic
evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986). Rather, as indicated earlier, we
determine the likelihood of confusion based on the services
as identified in the involved application and registration.
In the present case, registrant’s services do not
include any restriction or limitation to workers’
compensation insurance, or any other type of insurance.
Thus, we presume for purposes of our analysis that
registrant’s insurance services relate to health care and
life insurance, that is, the same products involved in
applicant’s services. So as to be clear, applicant’s
insurance services, on the one hand, are limited to the
field of health care plans and life insurance plans; on the
other hand, registrant’s services, broadly identified with
no restrictions or limitations, are presumed to be rendered
in all types of insurance fields, including the health care
and life insurance fields. Further, given that the
services are so closely related, the services are presumed
Ser No. 78827035
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to be offered through the same trade channels (insurance
brokers and agents) to the same classes of purchasers
(including ordinary consumers looking for insurance
coverage).
In view of the above, the factors of the similarity
between the services, trade channels and classes of
purchasers weigh in favor of finding a likelihood of
confusion.
In reaching our decision, we recognize that merely
descriptive marks, as in the case of registrant’s mark, may
be entitled to a narrower scope of protection than an
arbitrary or coined word. In re Box Solutions Corp., 79
USPQ2d 1953 (TTAB 2006). However, even a weak mark is
entitled to protection, as in this case, against the
registration of a virtually identical mark for closely
related services. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We conclude that consumers familiar with registrant’s
insurance brokerage services, insurance claims
administration and claim processing services, and insurance
consultation services rendered under the mark PAY-AS-YOU-GO
would be likely to believe, upon encountering applicant’s
mark PAY AS YOU GO for insurance underwriting in the field
of health care plans and life insurance plans and insurance
Ser No. 78827035
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administration in the field of health care plans and life
insurance plans, that the services originate from or are
associated with or sponsored by the same entity.
The Section 2(d) refusal based on likelihood of
confusion is affirmed.
Decision
The refusals to register under Section 2(d) on the
ground of likelihood of confusion, and under Section
2(e)(1) on the ground of mere descriptiveness are affirmed.