Security Benefit Life Ins. Co.

Trademark Trial and Appeal Board

Mar 18, 2003

No. 75813178 (T.T.A.B. Mar. 18, 2003)

Hearing: Mailed: March 18, 2003
December 3, 2002 Paper No. 16
csl

ADD Doug’s edits
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Security Benefit Life Insurance Company
________
Serial No. 75/813,178
_______
Glenn A. Gundersen of Dechert Price & Rhoads for Security
Benefit Life Insurance Company.
Tanya L. Amos, Trademark Examining Attorney, Law Office 101
(Jerry L. Price, Managing Attorney).
_______
Before Simms, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Security Benefit Life Insurance Company (applicant), a
Kansas corporation, has appealed from the final refusal of
the Trademark Examining Attorney to register the mark
SECURITY FUNDS (“FUNDS” disclaimed) for mutual fund
investment services.1 The Examining Attorney has refused

1 Serial No. 75/813,178, filed September 28, 1999, based upon
allegations of use and use in commerce since April 1968.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/813,178
2
registration under Section 2(d) of the Trademark Act, 15
USC §1052(d), on the basis of Registration No. 1,242,311,
issued June 14, 1983, Section 8 declaration accepted,
Section 15 declaration acknowledged, for the mark shown
below:
(“FUND” disclaimed) for “banking services.” Applicant and
the Examining Attorney have submitted briefs, and an oral
hearing was held.
It is the Examining Attorney’s position that confusion
is likely because the respective marks are substantially
identical and the services are related. With respect to
the marks, the Examining Attorney argues that the word
portion of the registered mark and applicant’s mark are
virtually identical in sound and that the respective marks
are otherwise very similar in appearance, meaning and
commercial impression. Consumers are not likely to note
Serial No. 75/813,178
3
the slight difference in spelling, according to the
Examining Attorney. The Examining Attorney also argues
that the word portion of registrant’s mark is more likely
to be impressed on a purchaser’s memory and be used in
calling for registrant’s services.
Concerning the relatedness of registrant’s banking
services and applicant’s mutual fund investment services,
the Examining Attorney argues, first, that “banking
services” is a broad term which may include applicant’s
mutual fund investment services, as evidenced by at least
two third-party registrations of record (“banking services
offering mutual fund investments…”). In any event, she
argues that the services listed in the registration and
applicant’s application are all commercially related
financial services, and that many banks now also provide
mutual fund investment services. It is the Examining
Attorney’s position that the same class of consumers may be
exposed to both services and, if so, are likely to believe,
in view of the near identity of the respective marks, that
these services emanate from the same source. The Examining
Attorney asks us to resolve any doubt in favor of the
registrant.
As evidence of the relatedness of these services, the
Examining Attorney has made of record approximately 30
Serial No. 75/813,178
4
third-party registrations of marks covering both banking
and mutual fund services.2 The Examining Attorney has also
made of record excerpts from the Nexis database in an
attempt to show that banking and mutual fund investment
services are related.3 The Examining Attorney has also
relied upon a dictionary entry indicating that banks may
purchase or sell securities as for a trust account
customer.
Finally, with respect to applicant’s argument that
there have been no instances of actual confusion, the
Examining Attorney contends that applicant has provided no
information concerning the opportunity for confusion, such

2 It is noted that some of the third-party registrations issued
under Section 44 of the Act, 15 USC §1126, without any indication
of use of the mark in this country. Those registrations have
been given no weight in our consideration of this appeal.
3 We have excluded those excerpts dealing with foreign entities as
well as those excerpts indicated to be from newswire services,
without any indication that those articles have appeared in any
printed publication. See In re Men’s International Professional
Tennis Council, 1 USPQ2d 1917, 1918 (TTAB 1987). Other excerpts
are irrelevant, as applicant has pointed out, because they
discuss the offering of college courses dealing with various
topics, such as banking and investment, or the selling of
software systems for different uses, including banking and
investment purposes. Finally, because many of these excerpts
refer to investment banking services rather than banking
services, they are entitled to little weight. Investment banking
services, which, according to a definition of record, involve the
“sale and distribution of a new offering of securities, carried
out by a financial intermediary (as an investment banker), who
buys securities from the issuer as PRINCIPAL, and assumes the
risk of distributing the securities to investors (emphasis in
original),” are likely to be rendered to a different class of
purchasers than ordinary banking services.
Serial No. 75/813,178
5
as information concerning the quantity of sales or the
geographic extent of use of the registered mark.
Applicant, on the other hand, contends that confusion
is unlikely. Applicant states that it is a large,
“nationally-based” investment company which sells shares in
its family of mutual funds. According to applicant’s
attorney, applicant first used the SECURITY house mark for
financial services in 1950. Applicant states that it had
six mutual funds in its SECURITY FUNDS portfolio at the
time of registrant’s alleged first use in 1981, and has
added 12 funds to the family of funds since that time.
With respect to the marks, applicant argues that the
eagle design of registrant’s mark is the dominant source-
identifying and distinguishing element. Further, applicant
argues that the mark SECURITY is a weak one in the banking
field with 36 active registrations containing this word.
In this regard, applicant points to registrations, owned by
different entities, of the marks SECURITY NATIONAL BANK and
design (Reg. No. 2,500,295, issued October 23, 2001) and
SECURITY FEDERAL BANK and design (Reg. No. 2,506,312,
issued November 13, 2001). Because the cited registered
mark is allegedly not distinctive in the banking field,
applicant argues that the mark is not entitled to a broad
scope of protection. Applicant also contends that the word
Serial No. 75/813,178
6
“FUND” in the registered mark has a different meaning, that
of a “bank account,” from the word “FUNDS” in its mark,
meaning “mutual funds.” Applicant argues that the mark
SECURITY is well-known in the financial field, with
millions of investors having come to recognize its mark as
a source of origin of applicant’s services.
Concerning the services, applicant contends that
registrant, in reality, is a credit union which provides
banking services, and that these services are restricted to
members of the credit union. For example, applicant has
determined from registrant’s Web site that registrant’s
members include, among others, residents of certain
counties in Utah, federal employees in Utah, members of the
armed forces in Utah, and employees of federal government
contractors in Utah. Applicant also points to federal
regulations which prohibit a credit union from offering
uninsured investment products under the identical name as
the name of the credit union. Even if applicant were a
bank rather than a credit union, applicant states that
regulations require that bank tellers refer customers
seeking to buy uninsured investment products to other
employees of the bank who handle that part of the business.
It is applicant’s contention, therefore, that there is
little actual overlap between the customers in registrant’s
Serial No. 75/813,178
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specialized market and applicant’s mutual fund customers.
In any event, applicant argues that while some banks may
also market mutual funds to their customers (even under the
same mark), banks and mutual funds or regulated investment
companies are generally two separate businesses with
separate regulatory regimes. In the latter case, applicant
argues that the mandatory disclosure requirements for
investments reduce any possibility of confusion because of
the similarity of the marks.
Further, applicant contends that it owns 20
registrations and applications containing the word
“SECURITY” in the fields of life insurance, mutual funds,
individual retirement accounts, annuities, financial
planning and other financial services. In the field of
mutual fund services, for example, applicant points to its
ownership of registrations of such marks as SECURITY INCOME
FUND (Reg. No. 2,505,842, issued November 13, 2001, “INCOME
FUND” disclaimed), SECURITY EQUITY FUND (Reg. No.
2,505,843, issued November 13, 2001, “EQUITY FUND”
disclaimed), and SECURITY GROWTH AND INCOME FUND (Reg. No.
2,505,844, issued November 13, 2001, “GROWTH AND INCOME
FUND” disclaimed). Applicant’s alleged family of
registered SECURITY marks includes such marks as SECURITY
BENEFIT LIFE INSURANCE COMPANY, SECURITY ULTIMATE BENEFIT,
Serial No. 75/813,178
8
SECURITY 7, SECURITY UNIVERSAL LIFE, and SECURITY PREMIUM.
Finally, applicant’s attorney states that applicant has co-
existed with the registrant for almost 20 years without any
instances of actual confusion. Applicant contends that
refusal of registration here would only serve to injure
applicant, the senior user herein, and deprive the public
of notice of its trademark rights.
In contravention of the Examining Attorney’s third-
party registration evidence, applicant has made of record
registrations of similar marks such as FIDELITY, CITIZENS,
LIBERTY, METROPOLITAN and PIONEER, covering services
similar to those involved in this appeal, yet apparently
held by different entities. It is applicant’s contention,
therefore, that, in view of this fact, the general public
cannot assume that the use of similar marks used in
connection with banking services and mutual fund investment
services means that these different services are being
offered by a single source.
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
Serial No. 75/813,178
9
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).
Turning first to the marks--SECURITY FUND and design
vs. SECURITY FUND—-if both words and a design comprise a
mark, as is the case with registrant’s mark, the words are
normally accorded greater weight because the words are
likely to make an impression upon purchasers that would be
remembered by them and would be used by them to request the
goods and/or services. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.
Cir. 1983); In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). There is no
question that the word portions of the respective marks are
virtually identical, differing only by the letter “S” in
the word “FUNDS” in applicant’s mark. The respective marks
are virtually identical in pronunciation and appearance.
The stylized eagle design in registrant’s mark is not
sufficiently distinguishing as purchasers are unlikely to
differentiate source on the basis of that design element.
Serial No. 75/813,178
10
Contrary to the asserted differences in meanings of “FUND”
and “FUNDS” urged by applicant, we believe that those
subtle distinctions are not likely to be grasped by the
ordinary consumer. It is our belief, therefore, that the
suggestive connotation or meaning as well as the commercial
impression of these marks is also virtually identical. We
conclude that the marks are very similar.
We note that because the marks are nearly identical,
their contemporaneous use can lead to the assumption that
there is a common source “even when [the] goods or services
are not competitive or intrinsically related.” In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993); In re Concordia International Forwarding Corp., 222
USPQ 355 (TTAB 1983); and Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981). That is to say, the
greater the degree of similarity between applicant’s mark
and the cited registered mark, the lesser the degree of
similarity between applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion.
We turn, therefore, to a determination, under the
second du Pont factor, of the similarity or dissimilarity
of the services recited in applicant’s application and the
services recited in the cited registrations. As the
Serial No. 75/813,178
11
Examining Attorney points out, it is not necessary that the
goods or services of the parties be similar or competitive,
or even that they move in the same channels of trade to
support a holding of likelihood of confusion, as long as
they are related in some manner, and/or that the conditions
and activities surrounding the marketing of the goods are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See, e.g., 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); McDonald’s Corp. v. McKinley, 13 USPQ2d
1895, 1898 (TTAB 1989); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Also, our
analysis of the relatedness of the services, their channels
of trade, and classes of consumers is governed not by what
the record shows but, rather, by the respective
identifications in the cited registration and applicant’s
application (“banking services” vs. “mutual fund investment
services”). See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997)(“Indeed, the second
DuPont factor expressly mandates consideration of the
similarity or dissimilarity of the services as described in
Serial No. 75/813,178
12
an application or registration”); Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990)(“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”); and Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973)(“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).
The Examining Attorney has made of record
approximately 30 use-based third-party registrations, some
of which are held by the same entities, covering both
banking and mutual fund investment or mutual fund brokerage
services. These include, by way of example, registrations
of the marks FIRST NATIONAL INSURANCE SERVICES COMPANY
(Reg. No. 2,407,469, issued Nov. 20, 2000); INTEGRION
FINANCIAL NETWORK (Reg. No. 2,181,355, issued August 11,
1998); MEMBERSHIP B@NKING (Reg. No. 2,387,155, issued Sept.
19, 2000); USAA FIRST START (Reg. No. 2,267,819, issued
August 3, 1999); HOUSEHOLD and design (Reg. No. 2,101,720,
Serial No. 75/813,178
13
issued Sept. 30, 1997); PRUDENTIAL and design (Reg. No.
2,338,258, issued April 4, 2000); DROVERS BANK (Reg. No.
2,318,734, issued Feb. 15, 2000); WASHINGTON MUTUAL (Reg.
No. 2,318,138, issued Feb. 15, 2000); 1-800-THE-ROCK (Reg.
No. 2,339,970, issued April 11, 2000); THE BELVIDERE BANK
and design (Reg. No. 2,230,919, issued March 9, 1999);
BOSTON BALANCED FUND (Reg. No. 2,367,183, issued July 11,
2000); ORBITEX (Reg. No. 2,262,755, issued July 20, 1999);
and OVERLAND EXPRESS (Reg. No. 2,036,713, issued Feb. 11,
1997). This evidence tends to demonstrate that the same
entity may offer or render both banking and mutual fund
investment services. That is because third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988). Moreover, applicant has admitted that some
companies may provide both banking and mutual fund
investment services. Appeal brief, 8, reply brief, 7, 9.
Furthermore, there is no reason to believe that customers
of banking services and customers of mutual fund investment
services will be different. These services are offered to
Serial No. 75/813,178
14
the general public, which is comprised of people with
varying degrees of sophistication.
It is also important to realize that both registrant’s
registration and applicant’s application are unrestricted
in geographic scope. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Cir. 1983) (“Section 7(b) of the Trademark Act of 1946, 15
U.S.C. §1057(b), creates a presumption that the registrant
has the exclusive right to use its mark throughout the
United States. Therefore, the geographical distance
between the present locations of the respective businesses
of the two parties has little relevance in this case.”);
and Amcor, Inc. v. Amcor Industries, Inc., supra, at 73
(TTAB 1981) (“[T]he possible geographical separation
between the parties, although the evidence does show an
overlap on occasion, is of no significance in this
proceeding because applicant is seeking territorially
unrestricted registrations for its marks and, if granted,
the presumptions afforded the registrations under Section
7(b) include a presumption of use or the right to use the
registered marks throughout the United States.”). See also
Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
105 S.Ct. 658, 224 USPQ 327, 331, 331-332 (1985)(“The
Lanham Act provides national protection of trademarks in
Serial No. 75/813,178
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order to secure to the owner of the mark the goodwill of
his business and to protect the ability of consumers to
distinguish among competing producers. See S. Rep. No.
1333, at 3, 5. National protection of trademarks is
desirable, Congress concluded, because trademarks foster
competition and the maintenance of quality by securing to
the producer the benefits of good reputation. Id., at 4…
There is no question that the Lanham Act altered existing
law concerning trademark rights in several respects. For
example, § 22, 15 U.S.C. § 1072, provides for constructive
notice of registration and modifies the common-law rule
that allowed acquisition of concurrent rights by users in
distinct geographic areas if the subsequent user adopted
the mark without knowledge of prior use.”). Accordingly,
it is appropriate to analyze this case on the basis of the
assumption that the services under the respective marks
will be offered in the same locality. That is to say, we
must assume that a potential customer of applicant’s
SECURITY FUNDS mutual fund investment services offered in a
particular community is aware of registrant’s SECURITY FUND
and design banking services also available in that
community. When so viewed, and in view of the demonstrated
relationship between these services, we believe that the
ordinary consumer will believe that applicant’s SECURITY
Serial No. 75/813,178
16
FUNDS investment services emanate from or otherwise
sponsored by or affiliated with the same entity that
provides the SECURITY FUND (and design) banking services.
Further, while applicant’s attorney has indicated that
there have been no instances of actual confusion, this
uncorroborated statement is entitled to little weight. In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003) and authority cited therein. The
absence of actual confusion does not mean that there is no
likelihood of confusion. Giant Food, Inc. v. Nation's
Foodservice, Inc., supra at 396; and J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1892 (Fed. Cir. 1991). Moreover, applicant has provided no
information concerning the opportunity for confusion to
have arisen, such as evidence concerning the nature and
extent of applicant’s use of its mark in the state of Utah,
the apparent location of registrant’s actual use of its
mark for banking services.
A considerable portion of applicant’s argument is
directed to the alleged weakness of the registered mark.
We believe that the registered mark falls into the category
of a suggestive mark because it suggests that one’s money
is secure in registrant’s bank. A suggestive mark is, of
course, inherently distinctive and registrable without
Serial No. 75/813,178
17
evidence of acquired distinctiveness. While, generally, it
may be entitled to a narrower scope of protection than an
arbitrary or fanciful mark, it is nevertheless the case
that registration of another mark is to be refused if
confusion is likely. The third-party registrations which
applicant has made of record (for example, SECURITY
NATIONAL BANK, SECURITY FEDERAL BANK) are not evidence of
what happens in the marketplace or evidence that consumers
are aware of such marks and, in any event, cannot be used
to justify the registration of another confusingly similar
mark. See In re J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB
1988). See also In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985)(finding likelihood of
confusion between CASH MANAGEMENT ACCOUNT for certain
financial services and THE CASH MANAGEMENT EXCHANGE for
computerized cash management services, where the only
similarity between the marks were highly descriptive or
generic words); and Giant Food, Inc. v. Nation’s
Foodservice, Inc., supra (finding likelihood of confusion
between GIANT HAMBURGERS and design for hamburgers, hot dog
sandwiches and milk shakes as well as restaurant services
and GIANT and design for grocery and supermarket services
and a variety of food products). Moreover, as to the
listings from an Internet directory of various names of
Serial No. 75/813,178
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banks with the mark “SECURITY,” we have no information as
to nature and geographic extent of those uses, except that
one has an Oregon address and the other a Texas address,
and, therefore, cannot accord much weight to them.
Applicant has pointed to its ownership of a number of
registrations which include the words “SECURITY” and
“FUND.” When questioned about these registrations at the
oral hearing, the Examining Attorney maintained that the
instant mark, unlike those approved marks, is almost
identical to the registered mark. While those other marks
differ by only the addition of highly descriptive or
generic matter and while, of course, it is desirable for
the Office to achieve uniformity in the registration of
marks, the Board must assess each mark on the record before
it. In re Nett Designs, Inc, 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). Also, registrant’s failure to
file oppositions against those marks is not evidence that
we should consider on the issue of likelihood of confusion
and is not entitled to significant weight. In re Majestic
Distilling Co., Inc., supra, 65 USPQ2d at 1206-07.
Accordingly, as with the third-party registrations of
“SECURITY” marks, we find little persuasive value in these
registrations.
Serial No. 75/813,178
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Applicant’s attorney has also argued that it has prior
use of its mark. Suffice it to say that priority is not
relevant in an ex parte case and is not a factor to be
considered in the determination of likelihood of confusion.
In re Majestic Distilling Co., Inc., supra, 65 USPQ2d at
1206-07 (Court also noting, at 1202, that applicant,
despite having asserted use in commerce since 1984, did not
file its application until 1995). Moreover, there can be
no doubt that prompt registration of trademark rights has
numerous advantages and that delay in registering a mark
may result in a refusal if another entity with subsequent
use has, in the meantime, registered a confusingly similar
mark.
Finally, if we had any doubt regarding our conclusion,
in accordance with precedent that doubt must be resolved in
favor of the registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and In
re Shell Oil Co., supra, 26 USPQ2d at 1691 (Fed. Cir.
1993).
Decision: The refusal of registration is affirmed.