Lehman Brothers Inc.

Trademark Trial and Appeal Board

Sep 12, 2003

No. 76226454 (T.T.A.B. Sep. 12, 2003)

Mailed: Paper No. 14
September 12, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lehman Brothers Inc.
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Serial No. 76/226,454
_______
Tamara A. Miller of Leydig, Voit & Mayer, Ltd. for Lehman
Brothers Inc.
Ann K. Linnehan, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Lehman Brothers Inc. has applied to register the mark
RANGERS for “investment brokerage services, namely,
brokerage of an equity linked note,” in International Class
36. The application is based on applicant’s allegation
that it has used the mark, and used it in commerce, in
connection with the identified services, since March 2001.
The examining attorney refused registration under
Section 2(d) of the Lanham Act, arguing that there is a
This Opinion is Not
Citable as Precedent of
the TTAB
Ser. No. 76/226,454
2
likelihood of confusion among prospective purchasers of
applicant’s services, in view of the prior registration of
RANGER for “underwriting and servicing insurance,” also in
International Class 36.
Applicant argued against the refusal, but the
examining attorney was not persuaded by the arguments and
made the refusal final. Applicant has appealed. Both
applicant and the examining attorney have filed briefs.
Applicant did not request an oral hearing.
The record includes printouts of information retrieved
from the USPTO search system regarding certain third-party
registrations, article excerpts retrieved from the NEXIS
database, and an affidavit from Josef Muskatel, a senior
vice president of applicant. Applicant has not disputed
the examining attorney’s assertion that the marks are
virtually identical and that the difference between the
singular and plural forms of a term is insignificant.1 The
evidence made of record all goes to the issue of the
relatedness of the services, classes of consumers therefor,
1 Applicant does cite in its brief to First National Bank in
Sioux Falls v. First National Bank South Dakota, 47 USPQ2d 1847,
153 F.3d 885 (8th Cir. 1998), and summarizes that decision as
stating, in part, that consumers are more likely to notice what,
in other contexts, may be relatively minor differences in names,
when selecting financial services. Applicant does not, however,
make any direct argument that the marks involved herein are
different or that the difference between the singular RANGER and
the plural RANGERS is, on its own, significant.
Ser. No. 76/226,454
3
and the channels of trade through which the respective
services are marketed.
The examining attorney essentially argues that the
marks are virtually identical and that the services are
related. On the latter point, the examining attorney
relies on the NEXIS evidence and third-party registrations
to show that “many companies offer both financial
investment and insurance services.” Also, the examining
attorney notes that applicant has admitted in its brief
that “some companies” offer both types of services.
Further, the examining attorney asserts that the evidence
shows that applicant’s services would be within the normal
field of expansion for the owner of the cited registration.
Finally, the examining attorney asserts that even if, as
applicant asserts, prospective purchasers of investment
services and insurance services are sophisticated, that
does not foreclose the possibility of confusion.
Applicant argues that there is no per se rule that all
financial services are related for likelihood of confusion
purposes; and that prospective purchasers of applicant’s
services are looking to make a profit from an investment
while prospective purchasers of registrant’s services are
looking to protect against a loss from a predefined risk.
Ser. No. 76/226,454
4
While acknowledging that some insurance products “have an
investment component to them,” applicant asserts that, in
those instances, the “investment aspect is secondary” to
the insurance component. Brief, p. 4, relying on Muskatel
affidavit, ¶7.
As to channels of trade, applicant argues that its
notes “will be sold directly by Lehman Brothers Inc. or
through other broker-dealers to both institutional and
retail investors”; that broker-dealers may sell other
investment products, but “do not sell insurance products”;
and that consumers purchasing insurance do so through
insurance agents. Brief, p. 5, relying on Muskatel
affidavit, ¶¶ 3, 5 and 6.
As to the sophistication of the involved consumers,
applicant asserts that the minimum purchase for its notes
is $1,000 and that “typically investors will not purchase
any less than $10,000 worth of the notes at a time.”
Likewise, applicant argues that insurance products are
expensive, “especially over time.” Customers for both
applicant’s and registrant’s services, applicant asserts,
exercise care in making purchases not just because of the
relative expense of the services but also because they take
care in selecting providers of such services.
Ser. No. 76/226,454
5
Finally, applicant argues that it is not aware of any
instances of actual confusion, even though the parties’
respective services have been contemporaneously marketed
under the RANGER/RANGERS marks since March 2001.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re E.I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In the analysis of likelihood of confusion
presented by this case, key considerations are the
virtually identical nature of the marks, the related nature
of the services and, notwithstanding applicant’s arguments
to the contrary, the overlap in classes of consumers for
the respective services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by §2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
The essential identity of the involved marks makes it
likely that, if the marks were used in connection with
related services, confusion would result. In this regard,
Ser. No. 76/226,454
6
the Board has stated that "[i]f the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a holding of likelihood of confusion." In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Turning, then, to the involved services, we note the
well-settled proposition that services need not be
identical or competitive to support a finding of likelihood
of confusion. It is sufficient if the services are related
in some way or the circumstances of their marketing are
such that they would be encountered by the same persons,
even if not contemporaneously, who would, because of the
marks, mistakenly conclude that the services are in some
way associated with the same provider, or that there is an
association between the providers. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
We accept as true, for the purpose of our analysis,
applicant’s argument that investing services and insurance
services serve different basic purposes, i.e., investing is
intended to generate wealth, while insurance is intended to
maintain or safeguard wealth against risk of loss. We also
accept as true applicant’s contention that for insurance
Ser. No. 76/226,454
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products or services that have an investment component, the
latter is generally of secondary concern.
On the other hand, we do not agree with the conclusion
applicant reaches based on the distinction between
investing and insurance, i.e., that the prospective
purchasers of the respective services are necessarily
different. It seems fundamental that the two services are
often marketed to the same individuals. Specifically,
those who have attained wealth through investing are
candidates for insurance products that will allow them to
safeguard the accumulated wealth against loss. Certainly,
there are no restrictions in the identifications that would
preclude marketing of the involved services to the same
individuals.
In addition, we find the excerpts retrieved from the
NEXIS database and made of record by the examining attorney
suggest that ultimate consumers would be aware that varied
investment and insurance services often are available from
a single source. See the following examples from among
those in the record:
While agreements that restrict an employee’s ability
to contact former clients are common in many
professions, it is only now affecting banks as they
get into other financial services arenas such as
investment brokerage and insurance….
Milwaukee Journal Sentinel, January 17, 2002.
Ser. No. 76/226,454
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In recent years, Hibernia has added insurance and
brokerage services, as well as an investment banking
subsidiary.
The Times-Picayune (New Orleans), December 22, 2001.
The Cedar Rapids, Iowa, firm is a National
Association of Securities Dealers member, with
securities brokerage, insurance, investment banking
and underwriting operations.
The Bismarck Tribune, April 28, 1996.
Also, the third-party registrations that the examining
attorney has made of record, which individually cover a
number of different financial services and are based on use
in commerce, serve to suggest that the listed services are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Examples of these registrations include the following:
TELLER TRADER SERVICES, Reg. No. 1,988,676, for,
inter alia, “financial and insurance services, namely
… brokerage of stocks, options, mutual funds, money
market funds, fixed income securities, treasury
bills, bonds, notes, CDs, unit investment trusts,
investment accounts, and zero coupon bonds …
underwriting and issuance of variable annuities and
variable life insurance.”
ALL PRO SERIES and design, Reg. No. 2,391,585, for,
inter alia, “investment brokerage services; insurance
services….”
FOR THE LIFE YOU DESERVE, Reg. No. 2,450,217, for,
inter alia, “underwriting insurance for life and
disability insurance and annuities … brokerage in the
fields of investments, annuities, insurance, stocks
and commodities….”
ESTATE PLANNING SOLUTIONS, INC., Reg. No. 2,459,223,
for, inter alia, “investment brokerage services; and
Ser. No. 76/226,454
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insurance underwriting in the field of life, health,
long term care, and disability.”
In regard to the relative cost of the involved
services and the asserted sophistication of prospective
purchasers for the involved services, we note that
applicant has acknowledged that its investment notes are
sold, among other ways, through broker-dealers directly to
retail customers in amounts as low as $1,000. While the
purchase of an investment note for $1,000 is not an impulse
purchase, it clearly can be considered as within reach of
many individuals who, for example, choose to save for
retirement, a home purchase, or to fund a child’s
education. Similarly, since there are no restrictions in
its identification, we consider the registrant’s services
to include underwriting and insurance of all types, e.g.,
car, home, life, and health; and depending on variables
such as coverage amounts, deductibles, etc., we consider
the services to be available at a wide range of prices to
many different consumers. In short, we consider the
respective services of the applicant and registrant to be
available to many ordinary consumers with varying degrees
of sophistication about investments and insurance, not just
sophisticated, well-heeled individuals and institutions.
See Freedom Savings & Loan v. American Fidelity Assurance
Ser. No. 76/226,454
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Co., 222 USPQ 71, 74 (TTAB 1984) (“We agree that… the
purchasers of group insurance are probably discriminating
purchasers. However… since the limitation is not specified
in the identification, it cannot be presumed, and
purchasers of individual insurance policies would include
purchasers at all levels of sophistication.”).
We readily acknowledge that purchase of a $1,000
investment note or a moderately priced insurance policy
still would be a purchase made with some degree of care.
However, even careful consumers may be confused as to
source or sponsorship of these services when, as in this
case, they are marketed under essentially the same mark and
it is clear, as the record before us shows, that such
services can emanate from the same source.
Turning to the channels of trade, applicant asserts
that though its investment notes are available to retail
consumers through broker-dealers, those broker-dealers do
not sell insurance. Muskatel affidavit, ¶5. The basis for
the assertion, however, is unclear. We do not know whether
applicant is asserting that broker-dealers in notes such as
those marketed by applicant do not ever also sell insurance
services, or whether applicant is asserting that it markets
its notes only through broker-dealers that happen not to
also sell insurance services. As to the former
Ser. No. 76/226,454
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possibility, the NEXIS excerpts and third-paty
registrations suggest that investment services and
insurance services can have a common source. As to the
latter possibility, there is no restriction in applicant’s
identification of services that mirrors the asserted actual
trade channel restriction. Accordingly, we must consider
applicant’s services to be available, or potentially
available, through all sorts of sources for investment
notes. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990), and Canadian Imperial Bank of Commerce, N. A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Thus, we do not find the assertion in the affidavit
very persuasive.
Moreover, even if we were to assume that the
respective services would always be marketed by distinct
types of entities, there is still the possibility of
confusion if the marks are used by retailers of the
respective services to advertise the products. See Freedom
Savings & Loan Assn. v. Fidelity Bankers Life, 224 USPQ
300, 304 (TTAB 1984) (“The descriptions before us do not
preclude the marks of either party from being used in
service promotion to consumers, who may use, at least
potentially, both savings and loan association services and
Ser. No. 76/226,454
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life insurance services; and it is established that self-
limitations or limitations imposed by current marketing
practices cannot cure this potential for service or trade
channel overlap.”).
The only remaining point to consider is applicant’s
assertion that the respective services have been offered
under the involved marks contemporaneously since March 2001
and applicant is not aware of any instances of actual
confusion. While it is clear from the date of the Muskatel
affidavit that applicant is asserting that there have been
no instances of actual confusion in the 13 months between
the date of first use of the mark and the execution of the
affidavit, we have not been provided with any information
regarding the extent of sales or advertising of the notes
during that time. In addition, applicant has not specified
the extent of actual direct sales to consumers vis a vis
the extent of indirect sales through retail broker-dealers;
nor has applicant provided information about the extent of
sales to individuals rather than institutional consumers.
In short, the affidavit is lacking in detail and covers
only approximately 13 months of contemporaneous use. See
Freedom Savings, supra, 224 USPQ at 305. (In this
September 1984 decision, the Board considered, but accorded
little weight to, applicant’s allegation of no instances of
Ser. No. 76/226,454
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actual confusion despite contemporaneous use of FREEDOM
for, on the one hand, various financial services involving
investing and making of loans, and, on the other hand,
insurance underwriting involving policies with investment
aspects, because applicant’s mark had first been used only
in 1982).
In addition, we have not had the opportunity to hear
from registrant as to whether it is aware of any incidents
of actual confusion. Moreover, because the services are
not directly competitive, the type of confusion that would
occur would involve misapprehension about source or
sponsorship or affiliation, not mistaken purchasing of an
investment note when one was seeking insurance, or vice
versa. If consumers found both applicant and registrant’s
services acceptable, any confusion about mutual sponsorship
or affiliation would not necessarily be brought to the
attention of either applicant or registrant.
Applicant’s lack of knowledge of incidents of actual
confusion is not particularly probative on the question of
likelihood of confusion. Solid evidence of actual
confusion is sometimes difficult to obtain and, while it is
the best evidence of likelihood of confusion, it need not
be present for the Board to conclude that confusion is
likely. See Majestic Distilling, supra, 65 USPQ2d at 1205
Ser. No. 76/226,454
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(“The lack of evidence of actual confusion carries little
weight …especially in an ex parte context.”); see also
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992); Block Drug v. Den-Mat Inc., 17 USPQ2d 1315,
1318 (TTAB 1989).
In sum, the marks are virtually identical and, so far
as the record reveals, arbitrary when used for the involved
services. Despite the fact that the services are not
directly competitive, they may be marketed to the same
classes of ultimate consumers, through similar channels of
trade and at varying price points to consumers of varying
degrees of sophistication. Thus, we find a likelihood of
confusion to exist.
Decision: The refusal of registration under Section
2(d) of the Lanham Act is affirmed.