QBE Regional Companies (N.A.), Inc.

Trademark Trial and Appeal Board

Nov 4, 2008

No. 78874163 (T.T.A.B. Nov. 4, 2008)

Mailed: November 4, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re QBE Regional Companies (N.A.), Inc.
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Serial No. 78874163
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James D. Peterson of Godfrey & Kahn, S.C. for QBE Regional
Companies (N.A.), Inc.

James W. MacFarlane, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Hohein, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Winterthur U.S. Holdings, Inc. filed an application to
register on the Supplemental Register the mark PRECISE
PRICING (in standard character form) for services
ultimately identified as “insurance underwriting services
in the field of property and casualty insurance” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78874163
2
International Class 36.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the mark PRECISE LIFE
(in standard character form with a disclaimer of LIFE),
which is registered for “life insurance underwriting
services” in International Class 36,2 as to be likely to
cause confusion, mistake or deception.
Applicant and the examining attorney have filed
briefs.
Our determination of the issue of likelihood of
confusion is based on an 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/dissimilarities between the marks and the

1 Serial No. 78874163, filed on May 2, 2006, alleging dates of
first use of at least as early as January 4, 2006. Winterthur
U.S. Holdings, Inc. assigned the mark and the application to QBE
Regional Companies (N.A.), Inc. on June 4, 2007. The assignment
was recorded on November 15, 2007 at Reel 3661, Frame 0865.
2 Registration No. 1580546, issued on January 30, 1990; renewed.
Ser No. 78874163
3
similarities/dissimilarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
It is the examining attorney’s position that
applicant’s insurance underwriting services in the field of
property and casualty insurance and registrant’s life
insurance underwriting services are closely related. The
examining attorney maintains that the respective services
travel in the same channels of trade to the same customers,
namely, ordinary consumers interested in purchasing
insurance. In support of his position that the respective
services are closely related, the examining attorney
submitted Internet printouts which describe the job of an
insurance agent, and copies of third-party use-based
registrations of marks which he maintains show that
companies have registered their marks for both types of
services involved herein. With respect to the marks, the
examining attorney argues that due to the shared word
PRECISE, which is the dominant portion of both marks, the
marks are similar.
Applicant, on the other hand, argues that the
respective services are not related because property and
casualty insurance, on the one hand, and life insurance, on
the other hand, are distinct types of insurance. Also,
Ser No. 78874163
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applicant maintains that many of the third-party
registrations submitted by the examining attorney cover a
broad range of insurance and/or financial services, and
that such registrations are not probative of whether the
specific services involved herein, i.e., insurance
underwriting services in the field of property and casualty
insurance and life insurance underwriting services, are the
types of services which may emanate from a single source.
Also, applicant maintains that its insurance underwriting
services are marketed solely to insurance agents; not to
the ultimate purchasers of insurance. In this regard,
applicant submitted an Internet printout which indicates
that its services are offered to insurance agents. In
addition, applicant contends that insurance agents are
highly sophisticated and knowledgeable about the sources of
insurance services. With respect to the marks, applicant
argues that “because the [r]egistered [m]ark, PRECISE LIFE
is significantly descriptive, it is a weak mark, which
militates against finding a likelihood of confusion.”
(Brief, p. 4). Also, applicant maintains that when the
marks are considered in their entireties, they are
different in commercial impression.
We first consider the du Pont factor regarding the
similarity or dissimilarity of the involved services. In
Ser No. 78874163
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comparing the services, it is not necessary that they be
identical or even competitive in nature in order to support
a finding of likelihood of confusion. It is sufficient
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that would give rise, because
of the marks used in connection therewith, to the mistaken
belief that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, it is well settled that the question of
likelihood of confusion must be determined based on an
analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than on the basis of what the record
reveals the services to be. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Further, where the
services in an application or cited registration are
broadly described, such that there are no restrictions as
to trade channels and purchasers, it is presumed that the
identification of services encompasses not only all
services of the nature and type described therein, but that
Ser No. 78874163
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the identified services are provided in all channels of
trade which would be normal therefor, and that they would
be purchased by all potential customers thereof. See,
e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
We find that the record in this case supports a
finding that insurance underwriting services in the field
of property and casualty insurance, on the one hand, and
life insurance underwriting services, on the other hand,
are closely related. As noted, the examining attorney
introduced several Internet printouts which describe the
job of an insurance sales agent. The information in these
printouts indicates that insurance sales agents typically
offer several types of insurance, including property and
casualty insurance and life insurance. Moreover, as noted,
the examining attorney made of record copies of use-based
third-party registrations to show that services of the
types identified in the application and the cited
registration may be sold under a single mark by a single
source. See, for example, Registration No. 3215402 for
insurance underwriting in the field of property and
casualty, life and health, and auto insurance services;
Registration 3207308 for insurance brokerage, insurance
administration and insurance underwriting services for
worker’s compensation, automobile, property, casualty
Ser No. 78874163
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services for worker’s compensation, automobile, property,
casualty, employer’s liability and life insurance;
Registration No. 3194990 for insurance agency, insurance
brokerage, and insurance underwriting services in the
fields of life, annuities, health, disability, and property
and casualty insurance; Registration No. 3120076 for,
insurance services, namely, insurance brokerage in the
field of life, health, property and casualty insurance and
insurance underwriting services in the field of life,
health, property and casualty insurance; Registration No.
3336461 for insurance services for individuals and
businesses, namely, insurance agency services provided
through a single insurance agency or a group of insurance
agencies; insurance underwriting services for personal
property and casualty insurance, commercial property and
casualty insurance, accident insurance, life insurance, and
health insurance; insurance brokerage; insurance claims
administration services; and insurance claims processing;
Registration No. 3348207 for insurance services, namely
underwriting, brokerage and consultation in the field [of]
automobile liability, property, casualty, physical damage
and life insurance; Registration No. 3293877 for insurance
agency, brokerage, underwriting and administering services
in the fields of life, accident, health, disability, long-
Ser No. 78874163
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term care, travel accident, management and professional
liability, credit and export, travel, surety, fidelity
bonds, property, casualty, inland and ocean marine, boiler
and machinery, automobile, home and fire insurance, claims
administration and safety engineering services; providing
information in the field of insurance via the Internet,
global networks, telephone, facsimile, email and any other
means.
Third-party registrations which individually cover a
number of different services and which are based on use in
commerce are probative to the extent that they suggest that
the listed services are of a type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). With respect to applicant’s contention
that the third-party registrations are not probative of
whether the involved services are related, we acknowledge
that several of the registrations are analogous to house
marks because the recitations of services cover insurance
services and a broad range of financial services.
Therefore, the inclusion of insurance underwriting services
in the field of property and casualty insurance and life
insurance underwriting services is not particularly
significant. However, ten of the third-party registrations
specifically cover insurance services, including the
Ser No. 78874163
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involved services. We find that these registrations are
probative of whether the involved services are related. In
sum, we find that the evidence submitted by the examining
attorney is sufficient to establish that insurance
underwriting services in the field of property and casualty
insurance and life insurance underwriting services are
closely related.
Insofar as the du Pont factors pertaining to the
channels of trade and classes of purchasers are concerned,
applicant argues that its underwriting services are
marketed solely to insurance agents, and that such
agents are highly sophisticated and knowledgeable about the
sources of insurance services. The examining attorney, on
the other hand, argues that in the absence of any
restrictions as to the channels of trade and classes of
purchasers in the services identified in applicant’s
application, we must assume that such services are offered
to ordinary consumers who are interested in purchasing
insurance. As noted, applicant has submitted evidence
indicating that its particular services are offered to
insurance agents. However, neither applicant nor the
examining attorney submitted any evidence as to whether
insurance underwriting services typically are offered
exclusively to insurance agents or whether such services
Ser No. 78874163
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are also offered to ordinary consumers. In other words,
there is no evidence one way or the other as to the usual
classes of purchasers of insurance underwriting services.
We judicially notice that the word “underwrite” is defined
(in pertinent part) as:
2a. To sign (an insurance policy) so as to assume
liability in case of specified losses. b. To
insure. c. To insure against losses totaling (a
given amount).
The American Heritage Dictionary of the English
Language (4th ed. 2006).3

In view of the foregoing definition, it is not clear
that insurance underwriting services are of a nature that
they would not be offered to ordinary consumers. Because
there are no restrictions as to the channels of trade or
classes of purchasers in the services identified in
applicant’s application and registrant’s registration, it
is reasonable to assume that such services are available in
all normal channels of trade to all the usual purchasers of
such goods and services, including insurance agents and
ordinary consumers seeking to purchase insurance.

3 The Board may take judicial notice of a dictionary definition.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 78874163
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In sum, we find that the respective services are
closely related and that the trade channels and classes of
purchasers are the same.
We next consider the du Pont factor focusing on the
similarity or dissimilarity of the marks. We must
determine whether applicant’s mark and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Although 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 mark. 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 terms of their commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is
likely to result.
In this case, the marks PRECISE PRICING and PRECISE
LIFE are similar in sound and appearance. Both marks share
the identical first term PRECISE, followed by the
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disclaimed and descriptive term LIFE in registrant’s mark,
and the descriptive term PRICING in applicant’s mark. In
addition, we note that the shared word PRECISE is also the
first word in the marks. Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“… [it is]
a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.”).
Furthermore, the marks as a whole are similar in
connotation and commercial impression. The examining
attorney has made of record a definition from the Encarta
Dictionary wherein the word “precise” is defined (in
pertinent part) as “exact or detailed: exact and accurate
or detailed and specific.” In view of this definition,
both PRECISE LIFE and PRECISE PRICING generally connote
exactness and accuracy in the respective insurance
underwriting services. PRECISE LIFE and PRECISE PRICING
thus have similar connotations when used in connection with
the services of both applicant and registrant, and convey
similar commercial impressions.
In view of the foregoing, we find that applicant’s
mark PRECISE PRICING is similar to registrant’s mark
PRECISE LIFE in sound, appearance, connotation and
commercial impression.
Ser No. 78874163
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Insofar as the du Pont factor pertaining to the
purchasing conditions is concerned, we recognize that
insurance agents are knowledgeable about insurance
services. Moreover, even ordinary consumers are likely to
exercise some degree of care in purchasing the involved
insurance underwriting services. However, even
sophisticated purchasers are not immune from source
confusion when similar marks are used in connection with
closely related services.
With respect to applicant’s contention that
registrant’s mark PRECISE LIFE is “significantly
descriptive,” such an argument is no more than an
impermissible collateral attack on registrant’s
registration and will not be entertained in this appeal.
In re Peebles, Inc., 23 USPQ2d 1795 (TTAB 1992). In any
event, even if registrant’s mark is considered to be weak,
due to the asserted laudatory nature of the word PRECISE
and the descriptive nature of the word LIFE, even weak
marks are entitled to protection where confusion is likely.
In this case, registrant’s mark PRECISE LIFE is still
similar to applicant’s mark PRECISE PRICING, and the
respective services are closely related.
We conclude that purchasers familiar with registrant’s
life insurance underwriting services offered under the mark
Ser No. 78874163
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PRECISE LIFE would be likely to believe, upon encountering
applicant’s mark PRECISE PRICING for insurance underwriting
services in the field of property and casual insurance,
that the services originate from or are somehow associated
with or sponsored by the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.