FM International Services (NY), Ltd.

Trademark Trial and Appeal Board

Feb 14, 2003

No. 76102991 (T.T.A.B. Feb. 14, 2003)

Mailed:
Feb. 14, 2003
Paper No. 13
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re FM International Services (NY), Ltd.
________
Serial No. 76/102,991
_______
Angelo Notaro of Notaro & Michalos P.C. for
FM International Services (NY), Ltd.
Wanda Kay Price, Trademark Examining Attorney, Law Office
111 (Kevin Peska, Acting Managing Attorney).1
_______
Before Hohein, Hairston and Bottorff Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark depicted below, for services recited in the
1 The examination of the application prior to appeal was handled
by a different Trademark Examining Attorney.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/102,991
2
application as “providing and administering employee
benefit and retirement programs.”2
The Trademark Examining Attorney has issued two final
refusals under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), based on two registered marks owned by a single
registrant, i.e., Franklin Mutual Insurance Company. The
first cited registration is of the typed-form mark FMI, for
“insurance underwriting services.”3 The second cited
registration, which also is for “insurance underwriting
services,” is of the special-form mark depicted below.4
2 Serial No. 76/102,991, filed on August 3, 2000. The
application was filed on the basis of intent to use under
Trademark Act Section 1051(b), 15 U.S.C. §1051(b). On August 27,
2001, applicant filed an Amendment to Allege Use (with the proper
fee), in which applicant alleged March 2000 as the date of first
use of the mark anywhere but failed to include the requisite
allegation of the date of first use of the mark in commerce. It
does not appear that the Amendment to Allege use has been
examined or accepted by the Office, and, according to the
Office’s automated database, the application remains in intent-
to-use status at this time.
3 Registration No. 1,439,493, issued May 12, 1987. §8 affidavit
(6-year) accepted; §15 affidavit acknowledged.
4 Registration No. 1,439,494, issued May 12, 1987. §8 affidavit
(6-year) accepted; §15 affidavit acknowledged.
Ser. No. 76/102,991
3
The Trademark Examining Attorney contends that applicant’s
mark, as applied to applicant’s services, so resembles each
of the cited registered marks as to be likely to cause
confusion, to cause mistake, or to deceive.
Applicant has appealed the final refusals. Applicant
and the Trademark Examining Attorney filed main briefs, but
applicant did not file a reply brief and did not request an
oral hearing. We reverse the refusals to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Ser. No. 76/102,991
4
First, we turn to a determination of whether
applicant’s mark and the cited registered marks, when
compared in their entireties in terms of appearance, sound
and connotation, are similar or dissimilar in their overall
commercial impressions. The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather an a specific
impression of marks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the
marks at issue must be considered in their entireties, it
is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applying these principles in the present case, we find
that applicant’s mark is more similar than dissimilar to
each of the cited registered marks. We are not persuaded
Ser. No. 76/102,991
5
by applicant’s argument that the stylized features of
applicant’s mark, i.e., the lowercase “i” and the arcuate
line design element, suffice to distinguish the marks. The
dominant feature in the commercial impression of each of
these marks, and the feature which purchasers are likely to
perceive and recall, is that each of the marks consists of
the three letters “f,” “m” and “i”; this point of
similarity between the marks outweighs the slight
differences in stylization. Nor are we persuaded by
applicant’s argument that purchasers will be able to
distinguish the marks because they will encounter (and
construe) them in conjunction with applicant’s and
registrant’s respective corporate names. We must compare
the marks as they appear in the drawings of the respective
registrations and application, and those drawings do not
include any corporate names. For these reasons, we find
that applicant’s mark is similar to each of the cited
registered marks, and that the first du Pont evidentiary
factor therefore weighs in favor of a finding of likelihood
of confusion.
We turn next to a comparison of applicant’s and
registrant’s services, under the second du Pont factor. It
is not necessary that the respective services be identical
or even competitive in order to support a finding of
Ser. No. 76/102,991
6
likelihood of confusion. Rather, it is sufficient that the
services are related in some manner, or that the
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); In re International Telephone & Telegraph Corp., 197
USPQ2d 910 (TTAB 1978). Moreover, the greater the degree
of similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
After careful review of the record, we are not
persuaded that applicant’s recited services (“providing and
administering employee benefit and retirement programs”)
Ser. No. 76/102,991
7
are sufficiently related to registrant’s recited services
(“insurance underwriting services”) that confusion is
likely to result, even if the respective services are
offered under the similar marks involved in this case.
The record simply does not support the Trademark
Examining Attorney’s conclusory contentions that the
respective services “overlap” or that registrant’s services
“could encompass applicant’s services.” Indeed, the only
evidence of record on this du Pont factor5 is the three
third-party registrations attached to the Trademark
Examining Attorney’s final office action, which are
summarized as follows:
Reg. No. 2,484,870 (issued September 4, 2001),
of the mark EDUCATOR’S ADVANTAGE (EDUCATOR’S
disclaimed) for “retirement benefit planning
5 Applicant has made of record (with its request for
reconsideration of the final refusal) copies of printouts
obtained from registrant’s website. Applicant offers this
evidence to prove: that registrant’s actual services consist only
of commercial and personal lines of insurance, which are
different from and “not typically associated with” the types of
employee benefit and retirement program services rendered by
applicant; that registrant operates only in New Jersey; and that
registrant renders its services only through professional
independent insurance agents. We have given no probative weight
to this evidence because it is irrelevant to the issue to be
decided in this case. Our likelihood of confusion determination
must be made on the basis of the registrant’s services as recited
in the registrations, i.e., “insurance underwriting services,”
and not on the basis of what extrinsic evidence might show to be
the more limited nature and scope of registrant’s actual
services. See Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ 1813 (Fed. Cir. 1987); In re
Continental Graphics Corporation, 52 USPQ2d 1374 (TTAB 1999).
Ser. No. 76/102,991
8
services and administration of employee benefit
plans; and insurance underwriting services,
namely, underwriting personal lines of
insurance for automobile, home, life and group
insurance, namely, annuities”;
Reg. No. 2,467,916 (issued July 10, 2001), of
the mark MOSERS (and design) for
“administration of a public employees
retirement plan, namely, payment of benefits
and investment of assets; administration of
life insurance and long term disability
insurance programs”; and
Reg. No. 2,576,701 (issued June 4, 2002), of
the mark LINCOLN ANNUITIES (ANNUITIES
disclaimed) for “insurance services, namely,
underwriting services for retirement products;
namely, annuity, pension and life insurance
products.”
Although these registrations are not evidence that the
marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
services identified therein are of a type which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).6
6 The third of the above-referenced registrations (Reg. No.
2,576,701) resulted from application Serial No. 76/101,211, which
was still in pending status when the Trademark Examining Attorney
cited it in the November 2, 2001 final office action. Although
third-party applications (as opposed to registrations) are not
probative evidence under Albert Trostel and Mucky Duck, supra,
because they prove only that the applications were filed, we have
considered this application as evidence of record for purposes of
Ser. No. 76/102,991
9
However, three is a de minimis number of third-party
registrations under Albert Trostel and Mucky Duck in any
event, and in this case only one of the three (i.e., Reg.
No. 2,484,870) actually covers both applicant’s recited
services and registrant’s recited services. Even assuming,
as the Trademark Examining Attorney contends, that “the
consuming public associates insurance programs with
retirement programs,” that fact is too generalized to be of
significant probative value here. The issue under the
second du Pont factor in this case is not whether
purchasers understand that insurance products may be
included in retirement programs, but whether they are
likely to assume that a single source would provide both
the insurance underwriting services recited in the
registrations and the benefit and retirement plan
administration services recited in the application. On
this record, it appears that there is only one company
which does so. We find that this evidence is insufficient
to establish that the respective services are similar or
related, under the second du Pont factor, and that this
this appeal, in view of its subsequent maturation to registration
and applicant’s lack of objection.
Ser. No. 76/102,991
10
factor accordingly weighs against a finding of likelihood
of confusion.
Under the third du Pont factor, we find that the
normal trade channels and classes of purchasers for
applicant’s and registrant’s respective types of services
are likely to overlap to some extent. Businesses would be
purchasers of both benefit and retirement program
administration services like applicant’s (through their
human resources department officials), as well as of
insurance underwriting services like registrant’s (most
likely through different officials). Assuming that a
business’ employees also might be deemed to be “purchasers”
of benefit and retirement plan administration services (to
the extent that they might be able to customize the details
of their particular plans), those employees also are
potential purchasers (albeit outside the workplace) of
insurance underwriting services such as registrant’s. The
third du Pont factor therefore weighs in favor of a finding
of likelihood of confusion.
However, under the fourth du Pont factor, we find that
applicant’s and registrant’s respective services are of a
type which typically are purchased (whether by company
officials or by individual employees and whether within or
outside the workplace) not on impulse but rather with some
Ser. No. 76/102,991
11
degree of care and consultation, a fact which mitigates
against a finding of likelihood of confusion.
After careful consideration of the relevant du Pont
factors in this case, we conclude that the Office has
failed to carry its burden of proving the existence of a
likelihood of confusion. Applicant’s mark is similar to
the cited registered marks, and the trade channels and
classes of purchasers for applicant’s and registrant’s
respective services most likely overlap. However, we
cannot conclude, based on the minimal evidence in this
record, that the services themselves are sufficiently
related that confusion is likely to occur, especially given
the likely degree of care involved in their purchase.
Decision: The refusals to register are reversed.