Aspen Insurance Holdings Limited

Trademark Trial and Appeal Board

Aug 3, 2007

No. 78185508 (T.T.A.B. Aug. 3, 2007)

Hearing: Mailed:
May 16, 2007 August 3, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aspen Insurance Holdings Limited1

________

Serial No. 78185508
_______

Martin Schwimmer of Schwimmer Mitchell Law Firm for Aspen
Insurance Holdings Limited.

Kevin S. Corwin, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Holtzman, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On November 15, 2002, Exali Reinsurance Holdings
Limited (now Aspen Insurance Holdings Limited) filed an
application (Serial No. 78185508) to register the mark
ASPEN SPECIALTY (in standard character form) on the
Principal Register for services in International Class 36,
ultimately identified as follows:

1 On January 30, 2004, the Office recorded a change of name from
Exali Reinsurance Holdings Limited to Aspen Insurance Holdings
Limited at Reel No. 2905, Frame No. 0334.
THIS DECISION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78185508
2
underwriting special risk insurance for
businesses, namely writing insurance for
contingencies not considered standard property or
casualty business insurance risks, namely
cancellation of events, transportation of
valuable objects, contingencies for special
events and projects, terrorism, and surplus
coverage for unique business assets, namely
marine, energy, aviation and satellite
infrastructure; all such insurance excluding risk
coverages for individuals and homeowners.

The application claims a bona fide intent to use the mark
in commerce under Trademark Act 1(b), 15 U.S.C.
§ 1051(b). Applicant has entered a disclaimer of the term
SPECIALTY.
The examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of Registration No. 2644518 for
the mark ASPENCROSS (also in standard character form) on
the Principal Register for “insurance brokerage services,
financial planning, financial asset management, estate
planning, financial consultation, financial consultation in
the field of employee benefits and retirement plans, risk
management, investment advisory services for the purpose of
funding education” in International Class 36. Registration
No. 2644518, which issued on October 29, 2002, claims first
use anywhere and first use in commerce on November 15,
2000.
Ser No. 78185508
3
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs. An
oral hearing was held on May 16, 2007.
We first address one evidentiary point. With its
response to the first Office action, applicant listed the
particulars of five third-party registrations. This is not
the proper way to make such registrations of record. See
In re Volvo Cars of North America Inc., 46 USPQ2d 1455
(TTAB 1998). However, the examining attorney did not
advise applicant that the listing was insufficient at a
point where applicant could have corrected the error.
Therefore, the registrations are deemed to have been
stipulated into the record to the extent that the specific
data provided by applicant has been considered. See TBMP §
1208.02.
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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key, but not exclusive, considerations are
Ser No. 78185508
4
the similarities between the marks and the similarities
between the goods. 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). Each of the relevant du Pont
factors is discussed below.
We first consider the du Pont factor regarding the
similarity or dissimilarity of the marks. Our focus is on
whether the marks are similar in sound, appearance, meaning
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).
Applicant’s two-word mark consists of the term ASPEN
followed by the term SPECIALTY. According to applicant,
SPECIALTY “refers to ‘specialty’ forms of insurance –
insurance against narrowly defined risks such as
professional liability insurance or industry-specific forms
of insurance.” See p. 2 of applicant's November 5, 2003
response. Applicant also maintains that there is “common
use of the SPECIALTY element by large insurers such as
HARTFORD SPECIALTY, RELIANCE SPECIALTY and AIG SPECIALTY
….” SPECIALTY hence is a commonly used term which
identifies a characteristic of applicant's services. As
such, SPECIALTY is descriptive and has been disclaimed.
Ser No. 78185508
5
Descriptive terms which have been disclaimed are often less
significant in creating the mark’s commercial impression
and may be given little weight in reaching a conclusion on
the likelihood of confusion. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); In re
Code Consultants, Inc., 60 USPQ2d 1699 (TTAB 2001). See
also, M2 Software Inc. v. M2 Communications Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When
comparing the similarity of marks, a disclaimed term, here
‘COMMUNICATIONS,’ may be given little weight, but it may
not be ignored”). Thus, we find that ASPEN is the dominant
term in applicant's mark and is the component purchasers
will likely recall in referring to applicant's services.
Registrant’s mark is ASPENCROSS, which is a compound
term formed from the words ASPEN and CROSS. Since “Aspen”
is the beginning portion of registrant's compound term, it
would likely have greater significance for potential
purchasers than the term CROSS. In addition, registrant’s
mark is in standard character form. It is settled that a
mark registered in standard character form is not limited
to any particular manner of display; its scope of
protection extends to all reasonable manners of display.
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); INB National Bank v.
Ser No. 78185508
6
Metrohost, 22 USPQ2d 1585 (TTAB 1992). Thus, the scope of
protection for registrant’s mark extends to a stylization
in which ASPEN is emphasized over CROSS. When we consider
the marks as a whole, as we must, we find the marks to be
similar in sound and appearance in view of the shared term
ASPEN which is the first term in both standard character
form marks.
We next consider the meaning of the marks. Applicant
maintains that “there is some folkloric belief that the
term ASPEN CROSS refers to the cross of the crucifixion, in
that it was made of aspen wood,” referring to a Wikipedia
entry from the Internet for the term “aspen.” Brief at
p. 2. The Wikipedia entry, and other web pages purportedly
addressing this “forkloric belief” regarding “aspen cross”
are not properly of record. Applicant has not provided
copies of these web pages; applicant has merely provided
the web addresses for such web pages. See November 6, 2003
response to the first Office action. Web pages and their
contents do not become of record simply by providing their
web addresses. See In re Planalytics Inc., 70 USPQ2d 1453
(TTAB 2004). An applicant must provide a copy of the web
page to make the web page of record. Thus, applicant's
contention regarding the folkloric belief of “aspen cross”
Ser No. 78185508
7
is without evidentiary support and we give it no further
consideration.
Applicant has also stated on p. 2 of its brief that
“aspen” is the name of a type of wood and has argued at
p. 2 of its November 5, 2003 response that “Aspen” is “the
name of a well-known skiing destination.” “Cross” too has
different meanings. For example, besides “The upright post
with a transverse piece upon which Jesus was crucified” or
“A crucifix,” the definition of “cross” in The American
Heritage Dictionary of the English Language (4th ed. 2006),
of which we take judicial notice, includes “To combine the
qualities of two other things: a movie that crosses horror
with humor” and “to go or extend across; pass from one side
of to the other.” See University of Notre 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)
(the Board may take judicial notice of dictionary
definitions). In the context of registrant’s services,
“cross” may thus suggest that registrant combines the
expertise of its professionals in rendering its services,
or that with registrant’s assistance, a client may reach
financial security.
Because of the possible meanings that may be
attributed to ASPENCROSS, we are not persuaded by
Ser No. 78185508
8
applicant's arguments regarding the specific connotation of
applicant's mark, which applicant maintains is different
from the connotation of registrant’s mark. We find rather
that to the extent that the term ASPENCROSS has any
specific connotation as applied to registrant’s services,
the connotation would be similar to the connotation of
ASPEN SPECIALTY for applicant's services.
Additionally, we find that the commercial impression
of each mark is similar. ASPEN would be pronounced
separately from the other terms in each mark and would
create a separate impression from such other terms. It
also would be pronounced first in both marks and its
impression would be immediate in perceiving both marks.
Hence, we find that ASPEN plays a significant role in
forming the commercial impression of both applicant’s and
registrant’s marks, and that the commercial impression of
both applicant's mark and registrant’s is similar.
Applicant has argued in its response to the first
Office action that ASPEN is a “non-unique” term, relying on
the list of five registrations noted earlier in our
opinion. The list of registrations has limited probative
value because one of the registration numbers is obviously
incorrect (“19888120”) with too many digits (and not
subject to verification), and the services mentioned for
Ser No. 78185508
9
two other registrations are in unrelated fields (“computer
consultation and design services” and “marketing
advertising services”). As for the two registrations for
services identified as “business consultations,” because
they do not identify in what field such consultations are,
they too are of limited probative value. Further,
registrations are not evidence of use of the marks shown
therein and hence are not proof that consumers are familiar
with such marks so as to be accustomed to the existence of
similar marks in the marketplace, and as a result would be
able to distinguish between ASPEN marks. Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973); Richardson-Vicks, Inc. v. Franklin Mint Corp., 216
USPQ 989 (TTAB 1982).
Thus, upon consideration of the foregoing, we find the
du Pont factor regarding the similarity of the marks weighs
in favor of finding a likelihood of confusion.
We now consider the du Pont factor regarding the
similarity or dissimilarity of the services. Our
determination of the issue of likelihood of confusion
between the applied-for and registered marks must be made
on the basis of the services as they are identified in the
involved application and registration. In such
circumstances, if there are no limitations in the
Ser No. 78185508
10
identification, we must presume that the registration
encompasses all services of the nature and type described.
In re Elbaum, 211 USPQ 639 (TTAB 1981). Included within
registrant’s services is “insurance brokerage services.”
Because there is no limitation as to the type of insurance
brokerage services in registrant’s identification of
services, we construe registrant’s identification of
services as including special risk insurance brokerage
services for businesses.
The case law is clear that it is not necessary that
the services of applicant and the registrant be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective services are such that
they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). In
this case, the examining attorney has established that the
services are related by submitting a number of third-party
registrations demonstrating that a single mark has been
adopted by various entities for both the services
identified in applicant’s application and certain services
Ser No. 78185508
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(insurance brokerage, estate planning and financial
planning) identified in 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
of a type which may emanate from a single source. See In
re Infinity Broadcasting Corp. 60 USPQ2d 1214 (TTAB 2001).
These registrations include the following:
Registration No. 2367656 for inter alia insurance
brokerage and underwriting services, namely
securing insurance coverage in the areas of hard
to place and high risk insurance coverage, and
fire, flood and home;

Registration No. 2683745 for inter alia financial
planning, insurance underwriting and insurance
brokerage (without limitation);

Registration No. 2686208 for inter alia insurance
underwriting and insurance brokerage, both in the
fields of accident, health, life, executive and
professional errors and omissions, worker’s
compensation, property, casualty, and specialty
insurances covering risks including weather
contingencies, kidnap and ransom, lottery and
event cancellation;

Registration No. 2723753 for inter alia insurance
underwriting (without limitation), insurance
brokerage and estate planning services;

Registration No. 2805520 for inter alia financial
planning, insurance brokerage and insurance
underwriting (without limitation);

Registration No. 2955827 for inter alia insurance
underwriting, and brokerage services, both in the
field of special risk accident and property and
casualty insurance; and
Ser No. 78185508
12

Registration No. 3049542 for inter alia insurance
brokerage and underwriting in various fields
including commercial and specialty lines,
environmental claims, fine art/jewelers block,
property and construction insurance.

Additionally, Registration Nos. 2367656 and 2686208, and
the following third-party registrations, suggest that the
consuming public has come to expect that underwriters of
insurance provide policies for both specialty and non-
specialty insurance under a single trademark:
Registration No. 1487753 for inter alia
underwriting of insurance in connection with all
classes of property, casualty, marine, bonding,
life and excess and special risk insurance; and

Registration No. 2876514 for insurance brokerage
in the fields of life, disability, property and
casualty, homeowner’s, mortgage protection and
special hazards insurance.

The examining attorney has thus made a prima facie showing
of the relatedness of the services.
As for the du Pont factor regarding the similarity or
dissimilarity of trade channels, because there are no
restrictions in registrant’s identification of services,
registrant’s trade channels would also include the normal
channels of trade for insurance underwriting of the
specific special risks for businesses included in
applicant's identification of services. See Canadian
Imperial Bank of Commerce, National Association v. Wells
Ser No. 78185508
13
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In view of the similarity of applicant's and registrant’s
services, we find that applicant's trade channels overlap
with registrant’s trade channels.
Turning next to the du Pont factor regarding the
conditions of purchase, we assume that that purchasers of
applicant's underwriting special risk insurance for
businesses and purchasers of registrant’s insurance
brokerage services would exercise some sophistication and
degree of care in purchasing. However, assuming
sophistication of and care taken by the purchasers of these
services, “even careful purchasers are not immune from
source confusion.” In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999). That is, even sophisticated
purchasers of these related services are likely to believe
that the services emanate from the same source, when
offered under similar marks. See Weiss Associates Inc. v.
HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990); Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742 (TTAB 1992).
Applicant has argued that the “prior registrant’s
[services], which all, by their nature, require, if not a
face-to-face encounter between consumer and vendor, then
certainly some extended form of interaction in order for
Ser No. 78185508
14
the services to be provided.” Brief at p. 3. Applicant,
however, has not submitted any evidence in support of its
argument and we are not persuaded that this is necessarily
the case with such services. Additionally, to the extent
that applicant maintains at p. 3 of its brief that the fact
that the terms “planning,” “management,” “consultation” and
“advisory” services appear in registrant’s identification
of services, registrant intends some extended form of
interaction with its purchasers in rendering its “insurance
brokerage services,” applicant's argument is not well
taken. Applicant, in describing registrant’s
identification of services has improperly added a
limitation which has not been explicitly stated in
registrant’s identification of services. We do not
construe “insurance brokerage services” as being provided
under similar conditions to the other services in the
identification - which may require some extensive
interaction between the purchaser and vendor - simply
because “insurance brokerage services” is listed with the
other services. The Board must make determinations of
likelihood of confusion on the basis of the identifications
of goods and services set forth in applications and
registrations and may not read in limitations into such
identifications. Hewlett-Packard Co. v. Packard Press
Ser No. 78185508
15
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). Thus, a fair
reading of registrant’s identification of services does not
compel the conclusion that the insurance brokerage services
must be rendered through some extended form of interaction.
However, even if registrant’s purchasers take care in their
purchasing decisions and their decisions are rendered
through some extended form of contact, and they may well be
aware of the differences between the marks, we find that in
view of the shared term ASPEN in both two-word marks, they
likely will assume that the differences indicate variant
marks of a single source, rather than identify separate
sources. See, e.g., In re Smith & Mehaffey, 31 USPQ2d 1531
(TTAB 1994). Further, as noted earlier, even careful,
sophisticated purchasers are not immune from confusion as
to the source of the goods and services, particularly when
they are sold under similar marks. See Wincharger
Corporation v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289
(CCPA 1962); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). The
du Pont factor regarding the conditions of purchase hence
is neutral.
After considering all the evidence of record and the
arguments in this case bearing on the relevant du Pont
Ser No. 78185508
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factors, we conclude that there is a likelihood of
confusion between applicant's mark and the marks in the
cited registrations. We conclude so principally due to the
similarity of the marks and the fact that applicant’s and
registrant’s services are related and because the
conditions of purchase do not remove the likelihood of
confusion. While we have no doubt in this case, if there
were any doubt on the question of likelihood of confusion,
it must be resolved against applicant, which, as the
newcomer, has the opportunity of avoiding confusion, and is
obligated to do so. See TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
in view of Registration No. 2644518 is affirmed.