American Community Mutual Insurance Company

Trademark Trial and Appeal Board

May 21, 2008

No. 78759103 (T.T.A.B. May. 21, 2008)

Mailed:
May 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Community Mutual Insurance Company
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Serial No. 78759103
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John S. Artz, Dickinson Wright PLLC.

Nora Buchanan Will, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
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Before Zervas, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

American Community Mutual Insurance Company filed, on
November 22, 2005, an application to register on the
Principal Register the mark PRECEDENT (in standard
character form) for services ultimately identified as
“underwriting of health care plans and life insurance plans
for others; administration of pre-paid health care plans
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78759103
2
and life insurance plans for others” in International Class
36.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark PRECEDENCE (in typed form)
for “preferred provider programs in the field of mental
health and chemical dependency” in International Class 36.2
When the refusal was made final, applicant filed this
appeal and requested reconsideration. The examining
attorney denied the request for reconsideration and the
appeal was resumed. Both applicant and the examining
attorney have filed briefs. We affirm the refusal to
register.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See 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

1 Application Serial No. 78759103, claiming an intent to use the
mark in commerce pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).

2 Registration No. 1841483, renewed November 25, 2003.
Ser No. 78759103
3
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn initially to the first du Pont factor and
consider whether applicant's mark and the cited registered
mark are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005)
In the dictionary definitions from Merriam-Webster
Online Dictionary, located at merriam-webster.com,3 which
accompany the examining attorney’s brief, the words
“precedent” and “precedence” are defined as follows:
Precedent (adj.): “prior in time, order, arrangement,
or significance”

3 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that
the record in an application should be complete prior to the
filing of an appeal. See also TBMP § 1207.01 (2d ed. rev. 2004).
However, the Board may take judicial notice of dictionary
definitions, including online dictionary entries which exist in
printed format, and we take judicial notice of the definitions
provided by the examining attorney. See In re CyberFinancial.Net
Inc., 65 USPQ2d 1789 (TTAB 2002). See also University of Notre
Ser No. 78759103
4
Precedence (noun): “the fact of preceding in time”
The marks have apparent similarities in their meanings.
Additionally, because their meanings are similar, and
because the words “precedent” and “precedence” are similar,
the marks have similar commercial impressions. Further,
the marks have apparent similarities in sound and
appearance in view of the shared lettering in the marks,
differing only by their endings. We therefore resolve the
du Pont factor regarding the marks against applicant.
We next turn to the du Pont factor regarding the
services. It is well established that when the marks at
issue are the same or nearly so, the services in question
do not have to be identical to find that confusion is
likely. See In re Concordia International Forwarding
Corp., 222 USPQ 352, 356 (TTAB 1983) (“… the greater the
degree of similarity in the marks, the lesser the degree of
similarity that is required of the products or services on
which they are being used in order to support a holding of
likelihood of confusion.”).
Registrant’s identified services are “preferred
provider programs in the field of mental health and
chemical dependency.” An article taken from trinitygc.com

Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78759103
5
made of record by the examining attorney with her final
Office action describes registrant as “a not-for-profit,
preferred-provider organization specializing in the
delivery and management of mental health and substance
abuse benefit plans to area employers” and states that
registrant “specializes in offering employers clinical
criteria and protocols, PPO network credentialing and
contracting, utilization service/case management, complaint
and appeals procedures and patient, provider and health
plan satisfaction surveys.” We consider this evidence to
better understand the nature of registrant’s services, but
ultimately compare applicant's services as set forth in its
application with the services as set forth in the cited
registration in our likelihood of confusion analysis. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). Cf. In re
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
Both applicant's and registrant’s services are
directed in part to employers seeking mental health and
substance abuse assistance for their employees.4 See brief
at p. 5 stating “purchasers of the Appellant’s services are
typically businesses ….” An employer would have a choice

4 “Underwriting of health care plans” and “administration of pre-
paid health care plans” in applicant's identification of services
includes underwriting of insurance and administration of pre-paid
health care plans for mental health and substance abuse issues.

Ser No. 78759103
6
of contracting directly with registrant for such assistance
or contracting with applicant for insurance coverage so
that the employees could obtain treatment for mental health
and substance abuse issues. Ultimately, the employer would
be able to secure treatment for mental health and substance
abuse problems through either applicant's or registrant’s
services. In this respect, the services are related.
Further, to support a finding of likelihood of
confusion, it is sufficient to show that the respective
services are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from or are associated with, the same source.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). In this regard, the examining attorney has
made of record several use-based third-party registrations
that encompass the services identified in both the
application and the cited registration. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
Ser No. 78759103
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of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
See:
(1) Reg. No. 2482853 for, inter alia,
administration of health care insurance,
underwriting of prepaid mental health insurance
and administration of preferred provider plans in
the field of health care, in International Class
36; and

(2) Reg. No. 2550338 for, inter alia,
administration of health care insurance,
underwriting health care insurance,
administration of preferred provider plans in the
filed of health care and administration of mental
health care insurance, in International Class 36;

Also, U.S. Reg. No. 2198359 for, inter alia,
“administration of health plans” in International Class 36,
has some probative value because the recited services are
broad enough to encompass applicant's “administration of
pre-paid health care plans” and registrant’s services.
These third-party registrations suggest that consumers
could, because of the similar nature of the marks,
mistakenly believe that applicant's and registrant’s
services originate from the same source.
Thus, for the forgoing reasons, we resolve the du Pont
factor regarding the similarity of the services against
applicant.
We next consider the classes of consumers and the
trade channels. Applicant maintains at p. 5 of its brief
Ser No. 78759103
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that the purchasers of its services are typically
businesses and the Internet article from trinitygc.com
indicates that purchasers of registrant’s services are also
businesses. Thus, the purchasers for both applicant's and
registrant’s services overlap, encompassing businesses
seeking mental health and substance abuse coverage for
their employees. Regarding the trade channels of the
services, we note that the recitation of services in both
the application and the registration do not contain any
limitations with regard to channels of trade. We therefore
presume that applicant's and registrant's services
encompass all services of the type described and that the
services move in all normal channels of trade directed to
the same purchasers, typically employee benefits personnel
in such businesses. Elbaum, 211 USPQ at 640. The trade
channels hence overlap.
The du Pont factors regarding the classes of
purchasers and trade channels are also resolved against
applicant.
Next, we turn to the fourth du Pont factor, i.e., the
conditions under which and buyers to whom sales are made,
i.e., impulse versus careful, sophisticated purchasing, and
applicant's contention that purchasers of its services are
“relatively sophisticated”; and that “[t]he insurance
Ser No. 78759103
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services provided by [applicant] are extremely specialized
and expensive necessitating an informed and careful
purchasing decision on the part of the consumers.” Brief
at p. 5. We accept that purchasers of registrant’s and
applicant's services would have some degree of
sophistication and exercise some level of care in
purchasing the services. However, as the examining
attorney notes, the fact that purchasers are sophisticated
or knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or immune from source confusion. See
In re Decombe, 9 USPQ2d 1812 (TTAB 1988). In view thereof,
and because applicant has not provided any evidence
indicating the level of sophistication or care of
purchasers, we find this factor to be neutral.
In weighing the relevant du Pont factors discussed
above, we conclude that applicant's mark PRECEDENT for
“underwriting of health care plans and life insurance plans
for others; administration of pre-paid health care plans
and life insurance plans for others” is likely to cause
source confusion among purchasers with the registered mark
PRECEDENCE for “preferred provider programs in the field of
mental health and chemical dependency.”
Ser No. 78759103
10
Decision: The refusal to register under Section 2(d)
is affirmed.