Grange Insurance Association

Trademark Trial and Appeal Board

Nov 25, 2003

No. 76272754 (T.T.A.B. Nov. 25, 2003)

Mailed: November 25, 2003
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Grange Insurance Association
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Serial No. 76272754
_______
Faye L. Tomlinson of Christensen O’Connor Johnson Kindness
for Grange Insurance Association.
Eugenia K. Martin, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______
Before Hohein, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Grange Insurance
Association to register the mark “THE DAWNING OF A NEW
GRANGE GRANGE INSURANCE GROUP” for “property and casualty
insurance underwriting services.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
1 Serial No. 76272754, filed June 18, 2001, alleging first use
anywhere and first use in commerce in April 2001. The term
INSURANCE GROUP is disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76272754
2
U.S.C. §1052(d), on the ground that applicant’s mark, when
used in connection with the identified services, so
resembles the previously registered marks, shown below, as
to be likely to cause confusion:
Registration No. 1,535,724 issued April 18, 1989; Section 8
affidavit accepted; Section 15 affidavit received. The
registration is for “insurance underwriting services,
namely, property, casualty, life, accident, and health
underwriting services.” The word “INSURANCE” is disclaimed
apart from the mark as shown.
Registration No. 1,604,932 issued July 3, 1990; renewed.
The registration is for “life insurance underwriting
services.” The words LIFE INSURANCE are disclaimed apart
from the mark as shown.
Ser No. 76272754
3
Registration No. 1,663,622 issued November 5, 1991;
renewed. The registration is for “insurance underwriting
services in the field of property, casualty, life, accident
and health.” The word INSURANCE is disclaimed apart from
the mark as shown.
Registration No. 1,636,326 issued February 26, 1991;
renewed. The registration is for “life insurance
underwriting services.” The words LIFE INSURANCE are
disclaimed apart from the mark as shown.2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs on
the case. An oral hearing was not requested.
2 Registration Nos. 1,535,724 and 1,663,622 are owned by Grange
Mutual Casualty Company; and Registration Nos. 1,604,932 and
1,636,326 are owned by Grange Life Insurance Company. It appears
that the companies are related since PTO records show that they
have the same address.
Ser No. 76272754
4
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Turning first to the services, applicant does not
dispute that its services (property and casualty insurance
underwriting services) and the services in the cited
registrations (property, casualty, life, accident, and
health insurance underwriting services) are identical and
otherwise closely related. Thus, if the same or
substantially similar marks are used in connection with
these services, confusion as to source or sponsorship is
likely to occur.
We turn our attention then to the marks. It is the
Examining Attorney’s position that the dominant portion of
applicant’s mark and each of the cited marks is the term
GRANGE and because the marks share this term, they are very
similar.
Ser No. 76272754
5
Applicant, in urging reversal of the refusal to
register, argues that:
In view of the highly descriptive nature of the
term “Insurance,” the fact that as a licensee of
the National Grange, Appellant has a right to use
the term “Grange” in its trademark and because
the remaining portions of applicant’s and
registrant’s marks are not confusingly similar,
Appellant respectfully submits that Registrant’s
marks should not be a bar to registration of
Appellant’s mark.
(February 8, 2002 Response, p. 2).
Applicant has made of record an excerpt from the American
Heritage College Dictionary, (Third Edition) wherein the
word “grange” is defined as “an association of farmers
founded in the United States in 1867.” Also, applicant has
submitted a copy of a license agreement between it and an
entity named The National Grange of The Order of Patrons of
Husbandry (National Grange). The agreement provides in
pertinent part that:
NATIONAL GRANGE hereby agrees to [Grange Insurance
Association’s] use of the name “Grange” which is
recognized by [Grange Insurance Association]
as a registered trademark of NATIONAL GRANGE.
Finally, applicant argues that there has been a long period
of contemporaneous use without any actual confusion having
occurred between applicant’s mark and the cited marks.
In this case, we agree with the Examining Attorney
that when applicant’s mark and the cited marks are each
Ser No. 76272754
6
considered as a whole, they are highly similar in
commercial impression since the dominant literal and
source-identifying element of each mark is the term GRANGE.
While applicant’s and registrant’s marks must be considered
in their entireties, including any disclaimed or otherwise
descriptive matter, since that is how the marks appear when
they are used in the marketplace, it is nevertheless
appropriate for rational reasons to regard certain features
of the marks as being more dominant or otherwise
significant, and therefore to give those features greater
force and effect. Disclaimed or otherwise descriptive
matter is generally viewed as a less dominant or
significant feature of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751-52 (Fed. Cir.
1985).
Applying such principles to the marks at issue in this
case, it is clear that the term GRANGE is the dominant
literal and source-identifying element in each of the
respective marks. The disclaimed term INSURANCE GROUP in
applicant’s mark is the generic name for applicant’s
services and, as such, has little impact on the overall
commercial impression created by the mark THE DAWNING OF A
NEW GRANGE GRANGE INSURANCE GROUP.
Ser No. 76272754
7
Similarly, the disclaimed words INSURANCE and LIFE
INSURANCE are the generic names for registrants’ respective
services and, as such, have little impact on the overall
commercial impression created by registrants’ marks. Also,
the flag design in each of registrants’ marks and the
phrase YOUR PARTNER IN PROTECTION in two of the marks are
subordinate matter. Again, it is the term GRANGE which
dominates each of registrants’ marks and primarily creates
the commercial impression generated by each of them. Thus,
each of the cited marks is highly similar in commercial
impression to applicant’s mark.
With respect to applicant’s contention that it has a
right to register its mark in view of the licensing
agreement, as noted by the Examining Attorney, this
agreement is between applicant and a third party.
Moreover, the agreement provides only that applicant may
use the name Grange. This is different from a consent
wherein a registrant consents to registration of an
applicant’s mark. While a consent between applicant and
the owners of the cited registrations would be entitled to
weight in our likelihood of confusion determination, the
licensing agreement between applicant and a third party has
no bearing on our determination.
Ser No. 76272754
8
Further, according to applicant, there have been no
instances of actual confusion between applicant’s mark and
the marks in the cited registrations. However, there is no
evidence of applicant’s and registrants’ geographic areas
of sales, or the amount of sales under the respective
marks. Further, there is no information from the
registrants. In any event, the test is likelihood of
confusion, not actual confusion. See Weiss Associates Inc.
v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990); and In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB
1984).
We conclude that purchasers and prospective consumers
familiar with each of the registrants’ GRANGE
INSURANCE/LIFE INSURANCE (YOUR PARTNER IN PROTECTION) and
design marks for property, casualty, life, accident, and
health insurance underwriting services, would be likely to
believe, upon encountering applicant’s substantially
similar mark THE DAWNING OF A NEW GRANGE GRANGE INSURANCE
GROUP for property and casualty insurance underwriting
services, that the respective services emanate from or
associated with or sponsored by the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.