Platinum Services, Inc.

Trademark Trial and Appeal Board

Sep 28, 2009

No. 77181654 (T.T.A.B. Sep. 28, 2009)

Mailed: September 28, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Platinum Services, Inc.
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Serial No. 77181654
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Daniel A. Rosenberg of Briggs and Morgan, P.A. for Platinum
Services, Inc.

Sung In, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Platinum Services, Inc. filed an application to
register the mark PLATINUM INSURANCE and design (INSURANCE
disclaimed), as shown below, for services ultimately
identified as “insurance agency services, namely, providing
THIS OPINION IS NOT A CITABLE
PRECEDENT OF THE TTAB
Ser No. 77181654
2
[insurance services in the] field[s] of home, accident,
fire, auto, life, medical, and marine insurance to
individuals and businesses” in International Class 36.1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if used in connection with applicant’s
services, would so resemble the previously registered mark
PLATINUM UNDERWRITERS REINSURANCE, INC. and design
(UNDERWRITERS REINSURANCE, INC. disclaimed), as shown
below, for “reinsurance services, namely, property and
casualty reinsurance underwriting and reinsurance claims
handling services” in International Class 36,2 as to be

1 Application Serial No. 77181654, filed May 15, 2007, based on a
bona fide intention to use the mark in commerce. The application
contains the statement that: The mark consists of the wording
PLATINUM INSURANCE and a rectangle with cross hatching. It
appears that the wording in the brackets was inadvertently
omitted when applicant amended its recitation of services. Given
our disposition of this appeal, this missing phrase should be
restored to the beginning of the recitation of services prior to
publication for opposition.
2 Registration No. 2933644, issued March 15, 2005. The
registration contains the following statement: The mark consists
of the color silver in connection with the stylized word
“PLATINUM” and the color blue in connection with the words
UNDERWRITERS REINSURANCE INC.” and the triangular design within
the word “PLATINUM.”
Ser No. 77181654
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likely to cause confusion.

When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the involved
marks are dominated by the identical term, namely
“PLATINUM.” The examining attorney also contends that the
involved services are similar in nature and purpose in that
they offer financial protection against loss due to
uncontrollable circumstances; and that in the absence of
any limitations in the recitation of services in the cited
registration, it must be presumed that registrant’s
reinsurance services are provided in all normal channels of
trade to all the usual classes of purchasers, which would
include individuals and businesses. The examining attorney
submitted third-party registrations to support her position
that the services are related.
Applicant, in urging reversal of the refusal,
maintains that the examining attorney fails to appreciate
that insurance agency services and reinsurance services are
offered to different customers, and that the customers of
reinsurance services are sophisticated. Insofar as the
Ser No. 77181654
4
marks are concerned, applicant argues that they are
distinguishable, pointing to the differences between
“INSURANCE” and “UNDERWRITERS REINSURANCE, INC.” In
support of its position, applicant submitted three Internet
printouts, one contains several definitions of the term
“reinsurance”; the other two contain more detailed
information about reinsurance.
Our determination of the issue of likelihood of
confusion is based on analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first compare the marks. In determining the
similarity or dissimilarity of the marks, we must compare
the marks in their entireties as to 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). Although
Ser No. 77181654
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the marks 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 marks. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, 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 their entireties that confusion as to the source
of the goods and/or services offered under the respective
marks is likely to result.
In this case, we find that the term “PLATINUM” is the
dominant portion in each mark. Insofar as applicant’s mark
is concerned, the disclaimed and generic term “INSURANCE”
is not ignored, but the fact is purchasers are more likely
to rely on the nondescriptive word “PLATINUM” as an
indication of source. Furthermore, while the design
element in applicant’s mark is visually prominent, it is
well settled that if a mark comprises both a word and a
design, then the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). With respect to registrant’s mark, the
Ser No. 77181654
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disclaimed and descriptive words “UNDERWRITERS REINSURANCE,
INC.” are not ignored, but again, the fact is that
purchasers are more likely to rely on the nondescriptive
word “PLATINUM” as an indication of source. Also, the word
“PLATINUM” is depicted in large letters and above the words
UNDERWRITERS INSURANCE, INC., and the design element is not
particularly striking. For these reasons, we consider the
word PLATINUM to be the dominant feature of each mark. The
dominant feature of each mark, PLATINUM, is identical in
sound and appearance.
Insofar as meaning is concerned, the term PLATINUM in
each mark appears to be arbitrary and, whatever connotation
it might have as used in connection with applicant’s
insurance agency services, it would have the same
connotation as used in connection with registrant’s
reinsurance services.
Viewed in their entireties by those knowledgeable in
this field, the descriptive terms “Insurance” and
“Underwriters Reinsurance” will connote distinctly
different parts of the industry. Nonetheless, we conclude
that registrant’s mark and applicant’s mark will engender
similar commercial impressions.
We next consider the services. It is well settled
that the question of likelihood of confusion must be
Ser No. 77181654
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determined on the basis of the services recited in
applicant’s application vis-à-vis the services recited in
the cited registration. In the present case, we compare
applicant’s “insurance agency services, namely, providing
insurance services in the fields of home, accident, fire,
auto, life, medical, and marine insurance to individuals
and businesses” with registrant’s “reinsurance services,
namely, property and casualty reinsurance underwriting and
reinsurance claims handling services.”
As previously indicated, applicant has submitted
information regarding reinsurance retrieved from websites.
The examining attorney did not rebut this evidence or
otherwise call into question the accuracy of the
information retrieved from the websites. Among the
definitions of the word “reinsurance” retrieved from the
websites are the following: (1) When one insurance company
agrees to carry all or part of a risk undertaken by another
insurance company. www.gia.org.sg/glossary.cfm
(2) A form of insurance that insurance companies buy for
their own protection. www.maine.gov/pfr/insurance/glossary
(3) A contractual relationship between two insurance
companies under which one insurer assumes a portion of the
risk of the insurance policy written by another.
www.crossroadsabstract.com/glossary
Ser No. 77181654
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Furthermore, according to the information at the
website of the Reinsurance Association of America,
“[r]einsurance can be purchased from three distinct
sources: reinsurance companies located in the United
States, reinsurance departments of U.S. primary insurance
companies, and alien reinsurers that are located outside
the U.S. and not licensed here,” and “[i]nsurers purchase
reinsurance for essentially four reasons: (1) to limit
liability on specific risks; (2) to stabilize loss
experience; (3) to protect against catastrophes; and (4) to
increase capacity.” Also, “[b]ased on its business needs,
an insurer negotiates with a reinsurer to determine the
terms, conditions and costs of a reinsurance contract.”
www.reinsurance.org
Although the involved services can be said to serve a
similar purpose in terms of protecting against loss, it is
nonetheless clear from the evidence submitted by applicant
that reinsurance is typically purchased by insurance
companies, not individuals and other types of businesses.
Thus, while the examining attorney’s third-party
registration evidence is probative of the fact that the
involved services may emanate from the same source, it does
not establish that such services travel in the same
channels of trade and are bought by the same purchasers.
Ser No. 77181654
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The examining attorney argues that in the absence of
any limitations in the registrant’s recitation of services,
it must be presumed that registrant’s reinsurance services
are offered in all the normal channels of trade for these
services, and to all usual classes of purchasers, which
would include individuals and businesses. However, based
upon the evidence submitted by applicant, the ordinary
channels of trade for reinsurance services are U.S.
reinsurance companies, reinsurance departments within U.S.
insurance companies, and foreign reinsurers located outside
the U.S., and the usual purchasers are insurance companies.
The examining attorney has offered no evidence to the
contrary regarding the purchasers of reinsurance and the
channels of trade in which reinsurance services move.
Furthermore, the nature of reinsurance clearly
requires that the transaction is made with care and
deliberation. Even within a U.S. insurance company that
offers both insurance agency services and reinsurance
services, it is reasonable to expect that different
departments of the company will handle the different
transactions. That is, one department will handle
insurance agency services for individuals and businesses,
while a different department will handle reinsurance
services for insurance companies. Indeed, the evidence
Ser No. 77181654
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submitted by applicant states that reinsurance can be
purchased by “reinsurance departments of U.S. primary
insurance companies.” (emphasis added) In any event, the
customers of reinsurance services are sophisticated and
certainly will know with whom they are dealing.3
In sum, since insurance agency services and
reinsurance services are rendered to different purchasers
and the purchasers of reinsurance are sophisticated,
notwithstanding the similarities in the marks, confusion is
not likely. See, for example, Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (TTAB
1992) [Applicant’s use of E.D.S. for battery chargers and
power supplies which are incorporated into medical
instruments and devices is not likely to cause confusion
with opposer’s mark EDS for computer services sold to
customers in the medical field since goods/services are
different and purchasers are substantially different and
usually sophisticated.]
Decision: The refusal to register under Section 2(d)
is reversed.

3 We recognize that some of the persons who purchase reinsurance
on behalf of insurance companies would also purchase insurance
for themselves and/or family members. We believe that the number
of persons who fall into this category is extremely small, and as
indicated, they are sophisticated with respect to the marketing
of these services.