The Independent Order of Forestersv.Catholic Order of Foresters

Trademark Trial and Appeal Board

Jul 31, 2009

No. 92042562 (T.T.A.B. Jul. 31, 2009)

Baxley Mailed: July 31, 2009

Opposition No. 91168839

Catholic Order of Foresters

v.

The Independent Order of
Foresters

Cancellation No. 92042562

The Independent Order of
Foresters

v.

Catholic Order of Foresters

Before Seeherman, Rogers and Taylor,
Administrative Trademark Judges

By the Board:

On October 10, 2003, The Independent Order of Foresters
("Independent") commenced the above-captioned cancellation
proceeding involving Catholic Order of Foresters's
("Catholic") Registration No. 2219467 for the mark FORESTER
LIFE in typed form for "life insurance underwriting" in
International Class 36.1 In the second amended petition to
cancel that Independent filed on September 10, 2008,
pursuant to the Board order of August 11, 2008, Independent

1 Registration No. 2219467, issued January 19, 1999, from an
application filed December 16, 1996, reciting June 23, 1997 as
the date of first use anywhere and in commerce; renewed.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91168839; Cancellation No. 92042562
2
set forth the following grounds for cancellation: 1)
likelihood of confusion with Independent’s previously used,
unregistered marks that are composed in part of the words
FORESTER or FORESTERS, including FORESTER UNIVERSAL LIFE and
FORESTER UNIVERSAL LIFE 2, "in connection with many goods
and services, including the sale of insurance and insurance
products;"2 2) fraud based on alleged nonuse by Catholic of
the FORESTER LIFE mark, both when the statement of use was
filed in the application for that registration and when the
affidavit under Trademark Act Section 8, 15 U.S.C. Section
1058, was filed in support of that registration; and 3)
abandonment based on alleged nonuse of the mark. Catholic
denied the salient allegations of the second amended
petition to cancel in its answer and asserted affirmative
defenses, including laches.
In Opposition No. 91168839, which commenced January 25,
2006, Catholic opposes issuance of a registration based on
Independent's application Serial No. 78426446, for the mark
FORESTERS INVESTING SHARING INSPIRING and design in the
following form,

2 Although not stated expressly in the second amended petition to
cancel, this claim is pursuant to Trademark Act Section 2(d), 15
U.S.C. Section 1052(d).
Opposition No. 91168839; Cancellation No. 92042562
3
,
for "periodical publications, namely newsletters and
magazines pertaining to charitable activities, insurance,
financial matters and recognition of members who do
charitable work" in International Class 163 on the ground of
likelihood of confusion with its previously used and
registered mark FORESTER LIFE in typed form for "life
insurance underwriting" in International Class 36, which
registration is the subject of the above-captioned
cancellation proceeding.4 Independent, in its answer,
denied the salient allegations of the notice of opposition.
The above-captioned proceedings were consolidated in an
April 7, 2006 Board order.

3 This application was filed on May 27, 2004, based on an
assertion of a bona fide intent to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and based
on Trademark Act Section 44(e), 15 U.S.C. Section 1126(e),
through ownership of Canadian Registration No. TMA584789.

4 "COUNT I" of Catholic’s notice of opposition is captioned as a
claim for "trademark infringement." The Board is an
administrative tribunal of limited jurisdiction empowered solely
to determine the registrability of trademarks. See Trademark Act
Sections 17, 18, 20, and 24, 15 U.S.C. Sections 1067, 1068, 1070,
and 1092. The Board is not empowered to determine the right to
use, nor may it decide broader questions of infringement or
unfair competition. See Paramount Pictures Corp. v. White, 31
USPQ2d 1768, 1771 n.5 (TTAB 1994). Notwithstanding such
captioning, the notice of opposition sets forth a claim under
Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), and will
be treated as such.
Opposition No. 91168839; Cancellation No. 92042562
4
This case now comes up for consideration of: 1)
Independent's motion (filed April 10, 2009) for partial
summary judgment in the above-captioned cancellation
proceeding on its likelihood of confusion claim, based
specifically on its prior use of the marks FORESTER
UNIVERSAL LIFE and FORESTER UNIVERSAL LIFE 2 ("FORESTER
UNIVERSAL marks") in connection with the sale and
administration of universal life insurance "certificates;"5
and 2) Catholic's motion (filed April 13, 2009) for summary
judgment whereby it seeks, in the cancellation proceeding,
an order dismissing all of Independent's pleaded claims and
sustaining its pleaded affirmative defense of laches and, in
the opposition, an order sustaining Catholic's pleaded
Section 2(d) claim. The motions have been fully briefed.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). The evidence must be viewed in a light most

5 Independent refers throughout its filings to "certificates"
instead of "policies."
Opposition No. 91168839; Cancellation No. 92042562
5
favorable to the non-movant, and all justifiable inferences
are to be drawn in the non-movant’s favor. See Lloyd's Food
Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027
(Fed. Cir. 1993); Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992);
Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
When the moving party's motion is supported by evidence
sufficient to indicate that there is no genuine issue of
material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed
facts that must be resolved at trial. The nonmoving party
may not rest on the mere allegations of its pleadings and
assertions of counsel, but must designate specific portions
of the record or produce additional evidence showing the
existence of a genuine issue of material fact for trial. In
general, to establish the existence of disputed facts
requiring trial, the nonmoving party "must point to an
evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an
affidavit by a knowledgeable affiant." Octocom Systems Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 941, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990).

Opposition No. 91168839; Cancellation No. 92042562
6
We will first consider the parties' cross-motions for
summary judgment in connection with Independent's Section
2(d) claim in the cancellation proceeding. In support of
its motion, Independent claims that it has priority based on
its use of the FORESTER UNIVERSAL marks since 1984; that its
FORESTER UNIVERSAL marks are inherently distinctive
identifiers of insurance certificates and related services;
and the marks at issue are nearly identical in commercial
impression, are used on legally identical services, and
travel in the same trade channels. Accordingly, Independent
contends that there is no genuine issue of material fact
that it has priority and that Catholic’s use of its mark is
likely to cause confusion, and therefore that it is entitled
to entry of judgment on its Section 2(d) claim as a matter
of law.
As evidence in support of its motion, Independent
submitted the declaration of its director of product
solutions, Stephan Lintner, wherein Mr. Lintner avers to the
following: that he has been employed at Independent since
1980; that, prior to becoming director of product solutions,
he served as director of business analysis from 1988 to
2006; that, as director of product solutions, he is
responsible for the implementation of new products and
product features, contract drafting and obtaining rate
approvals of Independent financial products; that he has
Opposition No. 91168839; Cancellation No. 92042562
7
personal knowledge of Independent's advertising, sale,
administration and maintenance of certificates issued under
Independent's life insurance plans, including those issued
under the FORESTER UNIVERSAL marks; that, for the past
twenty-five years, Independent has sold and/or administered
universal life insurance certificates under the FORESTER
UNIVERSAL marks; that Independent sold insurance
certificates under the FORESTER UNIVERSAL LIFE mark between
1984 and 1987 and under the FORESTER UNIVERSAL LIFE 2 mark
between 1987 and 2002; that more than 65,000 insurance
certificates sold under the FORESTER UNIVERSAL marks remain
active in the United States; that, since 2002, there have
been more than 152,000 "incidents of activity" on all
certificates sold under the FORESTER UNIVERSAL marks; and
that Independent also uses the FORESTER UNIVERSAL marks in
association with training materials provided to agents
regarding how to administer such certificates.
Evidence submitted by way of Mr. Lintner's declaration
includes the following: a) copies of literature for sales
in the United States of life insurance certificates sold
under the FORESTER UNIVERSAL LIFE mark; b) copies of
FORESTER UNIVERSAL LIFE certificates that were issued in the
United States in 1984 and 1985; c) copies of FORESTER
UNIVERSAL LIFE 2 certificates that were issued in the United
States in 1988, 1989, and 1994; d) copies of annual
Opposition No. 91168839; Cancellation No. 92042562
8
statements for FORESTER UNIVERSAL LIFE II (sic) certificates
from 2002; e) copies of United States sales agent agreements
from 1996 through 1999 which show use of the FORESTER
UNIVERSAL marks; f) copies of annual statements from 2002
through 2009 showing ongoing administration of certificates
that were issued under the FORESTER UNIVERSAL LIFE II (sic)
mark in 1988-91, 1993-94, 1996, and 2003; and g) copies of
sales training materials showing use of the FORESTER
UNIVERSAL marks. As additional support, Independent
submitted the April 8, 2009 declaration of its actuary
Terence M. Mawhinney, who avers that Independent sold
259,534 certificates under the FORESTER UNIVERSAL marks in
the United States between 1984 and 2003; that, as of the end
of 2008, the expected annual premiums to be paid for these
certificates was approximately 44 million dollars; and that
the life insurance protection provided by these certificates
exceeded 4.5 billion dollars.
In opposition to Independent's motion for summary
judgment and in support of its cross-motion for summary
judgment on Independent's Section 2(d) claim, Catholic
asserts that the parties had co-existed as fraternal benefit
societies for more than 100 years prior to the filing of
Independent's petition to cancel; that the marks at issue
have been in co-existence for twelve years with no reported
actual confusion; that Independent ceased selling life
Opposition No. 91168839; Cancellation No. 92042562
9
insurance certificates under the FORESTER UNIVERSAL marks
seven years ago; that, in view of Independent's use of the
additional components UNIVERSAL and 2 in its marks, there is
no likelihood of confusion between the marks; that Catholic
always displays its house mark on all materials that display
its FORESTER LIFE mark; that the petition to cancel is
barred by laches; and that the Board should disregard the
entire Lintner declaration and its exhibits because, in it,
Mr. Lintner relies in part upon documents used only in
commerce in Canada or in commerce between Canada and the
United Kingdom. Catholic's evidence includes: a) copies of
brochures and Internet website excerpts showing the FORESTER
LIFE mark used near Catholic's house mark(s); b) excerpts
from the discovery depositions of Catholic's high chief
ranger/president David Huber and employee Mary Anne File,
wherein the deponents state that the FORESTER LIFE mark is
used with Catholic's house mark(s); and (c) a declaration
from Mr. Huber.
In reply in support of its motion for summary judgment
and in opposition to Catholic's cross-motion for summary
judgment, Independent asserts that its supporting evidence
was all used in the United States during the relevant time
period; and contends that, because "confusion is not only
likely but inevitable, ... the absence of evidence of actual
confusion carries little weight;" and that the affirmative
Opposition No. 91168839; Cancellation No. 92042562
10
defense of laches is inapplicable because confusion between
the marks at issue is inevitable.
As the party moving for summary judgment in its favor
on its Section 2(d) claim, Independent must establish that
there is no genuine dispute that (1) it has standing to
maintain this proceeding; (2) that it is the prior user of
its pleaded FORESTER UNIVERSAL marks; and (3) that
contemporaneous use of the parties' respective marks in
connection with their respective services would be likely to
cause confusion, mistake or to deceive consumers. See
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001).
With regard to standing, we note that Catholic has not
challenged Independent's standing to petition to cancel the
involved registration. Moreover, there is no genuine issue
that Independent has used the FORESTER UNIVERSAL marks in
connection with the sale and administration of life
insurance. Whether or not the use was in connection with
sales in the United States, the use is sufficient to
establish Independent's standing in the cancellation
proceeding.
We turn next to whether there is a genuine issue of
material fact regarding Independent's asserted priority of
use. To establish the absence of a genuine issue that it
has priority, a party must prove, vis-à-vis the other party,
Opposition No. 91168839; Cancellation No. 92042562
11
that it owns "a mark or trade name previously used in the
United States ... and not abandoned...." Trademark Act
Section 2, 15 U.S.C. Section 1052. A plaintiff may
establish its own prior proprietary rights in a mark through
actual use or through use analogous to trademark use, such
as use in advertising brochures, trade publications,
catalogues, newspaper advertisements and Internet websites
which creates a public awareness of the designation as a
trademark identifying the party as a source. See Trademark
Act Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and
1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37
USPQ2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrac v.
T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
Catholic filed the intent-to-use application for its
involved registration on December 16, 1996. See Trademark
Act Section 7(c), 15 U.S.C. Section 1057(c). In the
discovery deposition of Catholic's high chief
ranger/president David Huber that Independent submitted in
support of its motion, Mr. Huber "venture[s] a guess" that
Catholic commenced use in commerce of the FORESTER LIFE mark
in commerce in "maybe 1996." Mr. Huber further averred in a
declaration filed as an exhibit to Catholic’s brief in
support of its motion for summary judgment that Catholic has
used the FORESTER LIFE mark in connection with life
insurance underwriting services "at least as early as June
Opposition No. 91168839; Cancellation No. 92042562
12
23, 1997." Thus, at best, the earliest date on which
Catholic can rely is 1996.
We turn then to Independent’s evidence of priority. As
an initial matter, we note that some of the sample
certificates upon which Independent relies in support of its
motion for summary judgment are based upon currency other
than United States dollars. See, e.g., Lintner declaration,
exhibit L, which specifies that the certificate at issue is
based on United Kingdom currency. Independent is based in
Canada and these certificates appear to show use of the mark
outside of the United States, e.g., between Canada and the
United Kingdom, which is not relevant in this case. See
Johnson & Johnson v. Salve S.A., 183 USPQ 375 (TTAB 1974).
Compare First Niagara Insurance Brokers Inc. v. First
Niagara Financial Group Inc., 81 USPQ2d 1375 (Fed. Cir.
2007). Accordingly, we have not considered any certificates
based upon currency other than United States dollars in this
decision.
In some of the sales deputy contracts that Independent
made of record through the Lintner declaration, the
"GOVERNING LAW" provisions are set forth as follows: "This
agreement shall be deemed to have been made and delivered in
the Municipality of Metropolitan Toronto in the Province of
Ontario, Canada." E.g., Lintner declaration exhibit W at
paragraph 18. However, the "TERRITORY" provisions of these
Opposition No. 91168839; Cancellation No. 92042562
13
agreements indicate that the sales deputy "shall perform his
duties ... in the State, Province or County of ...." Id. at
paragraph 4. Further, Mr. Lintner states in a supplemental
declaration that was submitted with Independent's reply
brief that these documents, as well as other documents
submitted by Independent, but which Catholic contends
contain no explicit indication of country of origin, "were
provided as evidence of [Independent's] use of the [FORESTER
UNIVERSAL marks] ... in the United States." Lintner
supplemental declaration at paragraph 3. Accordingly,
except as noted, there is no genuine issue that these
documents were used in the United States.
After reviewing the parties' arguments and evidence, we
find that there is no genuine issue of material fact that
Independent owns "a mark or trade name previously used in
the United States ... and not abandoned...." as required by
Section 2(d). The evidence of record establishes that
Independent commenced use in commerce of the FORESTER
UNIVERSAL marks in connection with the sale and/or
administration of life insurance certificates prior to 1996
and that use of those marks in connection with life
insurance administration services is ongoing. In
particular, the declaration of Independent’s actuary,
Terence M. Mawhinney, avers that Independent sold 259,534
certificates under the FORESTER UNIVERSAL marks in the
Opposition No. 91168839; Cancellation No. 92042562
14
United States between 1984 and 2003; that, as of the end of
2008, the expected annual premium for these certificates was
approximately 44 million dollars; and that the life
insurance protection provided by these certificates exceeded
4.5 billion dollars. Independent's additional documentary
evidence includes: 1) examples of certificates sold under
the FORESTER UNIVERSAL LIFE mark based on United States
dollars from 1984; 2) examples of certificates sold under
the FORESTER UNIVERSAL LIFE 2 mark based on United States
dollars from 1988; 3) annual statements for certificates
sold in 1988-91, 1993-94, 1996, and 2003 under the FORESTER
UNIVERSAL LIFE II (sic) mark from 1989, 1994, 2002, 2003 and
2005-09; 4) a "reproposal" for a certificate sold under the
FORESTER UNIVERSAL LIFE 2 mark based on United States
dollars from 1995; and 5) redacted letters dated March 10,
2009 in connection with modification of certificates sold
under the FORESTER UNIVERSAL marks. While the evidence
shows that Independent has not sold new certificates under
those marks since 2003, it continues to render insurance
administration services in support of the existing
certificates. Independent also submitted copies of internal
communications regarding administration of certificates
under the FORESTER UNIVERSAL marks. Although these
documents are not public in nature, they provide additional
cumulative evidence of ongoing administration of
Opposition No. 91168839; Cancellation No. 92042562
15
certificates sold under the FORESTER UNIVERSAL marks. See
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d
1660 (Fed. Cir. 1994). Thus, there is no genuine issue of
material fact that Independent has made prior and continuing
use of the FORESTER UNIVERSAL marks, and has not abandoned
them.
Turning to the likelihood of confusion issue, we find
that there are no genuine issues, and that Independent is
entitled to judgment as a matter of law. The determination
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).
With respect to our consideration of the marks, there
is no genuine issue that Independent has rights in the marks
FORESTER UNIVERSAL LIFE and FORESTER UNIVERSAL LIFE 2, and
that these marks and Catholic’s mark FORESTER LIFE are
substantially similar in appearance, pronunciation,
connotation and commercial impression. We are not persuaded
by Catholic's contention that, because Independent's
FORESTER UNIVERSAL marks include the additional elements
UNIVERSAL and 2, confusion between the marks at issue is
unlikely. Rather, the term FORESTER which is common to all
the marks is clearly the dominant element in each. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
Opposition No. 91168839; Cancellation No. 92042562
16
(Fed. Cir. 1985). We take judicial notice that "universal
life insurance" is a generic term for "[a] form of term life
insurance in which the premiums are paid from the insured's
earnings from a money-market fund."6 Black's Law Dictionary
808 (7th ed. 1999). In addition, we note that Catholic has
disclaimed the generic term "LIFE" in its involved
registration. As for the number 2 in Independent's FORESTER
UNIVERSAL LIFE 2 mark, this number connotes an upgrade or
second edition of the insurance product/service. Thus, the
additional elements in the marks do not serve to distinguish
them. Because the involved marks all begin with the word
FORESTER and contain both FORESTER and LIFE, there is no
genuine issue of material fact that, when these marks are
considered in their entireties, they are substantially
similar in appearance, sound, connotation and overall
commercial impression. See In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553 (TTAB 1987).
Catholic also relies on the assertion that its FORESTER
LIFE mark is always used in combination with its house
mark(s) and that Independent regularly uses its FORESTER
UNIVERSAL marks in combination with its house mark(s), so
that confusion between the marks is unlikely. However, the
record shows no genuine issue of material fact that

6 The Board may take judicial notice of dictionary definitions.
See The University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982).
Opposition No. 91168839; Cancellation No. 92042562
17
Independent also uses its FORESTER UNIVERSAL marks alone,
i.e., without a house mark. And, in regard to Catholic’s
mark, our analysis must be based on the mark in Catholic's
involved registration and not on the basis of how Catholic
actually uses that mark. See United Foods Inc. v. J.R.
Simplot Co., 4 USPQ2d 1172 (TTAB 1987).
With regard to the similarity of the services at issue,
because Catholic has a registration, we must consider its
services based on the identification in the registration.
See, e.g., Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
On the other hand, because Independent is relying on its
common law rights, we must consider what the evidence shows
Independent’s services to be. There is no genuine issue
that Independent has used its FORESTER UNIVERSAL marks for
sales and/or administration of life insurance and continues
to use the marks for the administration of life insurance.
As such, there is no genuine issue of material fact that the
services identified in Catholic's involved registration,
i.e., "life insurance underwriting," are closely related to
the services in connection with which Independent uses its
FORESTER UNIVERSAL marks.
Opposition No. 91168839; Cancellation No. 92042562
18
As for channels of trade and classes of consumers,
there is no genuine issue that Independent insurance
policies have been sold to its members and are administered
on their behalf. As for Catholic’s services, we must
presume that the scope of the registration encompasses all
services of the nature and type described, that the
identified services move in all channels of trade that would
be normal therefor, and that the services would be purchased
by all customary potential customers. See In re Elbaum, 211
USPQ 639 (TTAB 1981). As such, Catholic's services are
presumed to travel in all the normal channels of trade for
the underwriting of insurance products. Thus, Catholic’s
services could be directed to or at least be encountered by
Independent's members. The services must therefore be
treated as traveling in the same channels of trade to the
same classes of consumers. Accordingly, Catholic has not
created a genuine issue of material fact regarding the
classes of consumers for the involved insurance products and
services.
Although Catholic alleges that there has been no actual
confusion between the marks at issue, this is insufficient
to raise a genuine issue of material fact with regard to
Independent's Section 2(d) claim. The test in determining
likelihood of confusion is not actual confusion but
likelihood of confusion. See Miguel Torres S.A. v. Casa
Opposition No. 91168839; Cancellation No. 92042562
19
Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998).
Although Catholic alleges that there has been no actual
confusion between the marks at issue, Catholic has not shown
that the marks at issue have been used in the same
geographic area for a significant period of time or under
other specific circumstances that could give rise to actual
confusion. Further, any lack of actual confusion could be
explained by Catholic's use of its house mark with the
FORESTER LIFE mark. Thus, the absence of actual confusion
fails to raise a genuine issue of material fact with regard
to Independent's likelihood of confusion claim in the
cancellation proceeding.
Based on the foregoing, we find that Independent has
met its burden of showing that there is no genuine issue of
fact and that it is entitled to judgment on the issue of
likelihood of confusion in the cancellation proceeding, and
that Catholic’s cross-motion in such proceeding is
insufficient to show either that Catholic is entitled to
judgment dismissing the petition or even that Independent’s
motion must be denied and the petition tried on its merits.
With regard to Catholic's cross-motion for summary
judgment in the cancellation proceeding on its affirmative
defense of laches, that affirmative defense is not available
where confusion between the marks at issue is inevitable.
See Nat'l Cable Television Ass'n Inc. v. American Cinema
Opposition No. 91168839; Cancellation No. 92042562
20
Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir.
1991); Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB
1999). In view of the substantial similarity of the
involved marks and the close relationship of the services,
trade channels and purchasers, as discussed above, we find
that confusion is not only likely to result, but is
inevitable. Thus, we need not consider whether there are
any genuine issues of material fact as to Catholic’s
affirmative defense of laches.
In view thereof, Independent's motion for summary
judgment on its likelihood of confusion claim in the
cancellation proceeding is granted, and Catholic's cross-
motion for summary judgment dismissing Independent's
likelihood of confusion claim and sustaining the affirmative
defense of laches in the cancellation proceeding is denied.
Judgment is hereby entered against Catholic in the
cancellation proceeding, and the petition to cancel is
granted. Registration No. 2219467 will be cancelled in due
course.7 Because we have entered summary judgment
sustaining Independent's likelihood of confusion claim in
the cancellation proceeding, we need not decide Catholic's

7 Although these proceedings were consolidated, the cancellation
proceeding maintains its separate character. See TBMP Section
511 (2d ed. rev. 2004). Accordingly, notwithstanding that the
opposition proceeding remains pending, Catholic's time in which
to appeal the Board's decision in the cancellation proceeding
runs from the mailing date set forth in this order.

Opposition No. 91168839; Cancellation No. 92042562
21
motion for summary judgment seeking dismissal of
Independent's fraud and abandonment claims in the
cancellation proceeding.
Turning to Catholic's motion for summary judgment in
the above-captioned opposition proceeding, we note that
Catholic relies largely upon the registration which we have
ordered cancelled. In view thereof, Catholic's motion for
summary judgment in its favor in the opposition proceeding
is denied without prejudice. The motion may be renewed if
Catholic is successful in any appeal it may take from the
judgment granting Independent’s petition for cancellation,
or if Catholic wishes to amend its notice of opposition to
rely on any common law rights in the FORESTER LIFE mark.
In sum, Independent's motion for summary judgment on
its likelihood of confusion claim in the above-cancellation
proceeding is granted, and the petition for cancellation is
granted. Catholic's cross-motion for summary judgment in
its favor in both the cancellation and the opposition
proceedings is denied, and we decline to reach Catholic's
motion for summary judgment seeking dismissal of
Independent's claims of abandonment and fraud in the
cancellation proceeding.
In exercising our inherent right to control the
scheduling of cases on our docket we order that, in the
interest of judicial economy, the opposition proceeding
Opposition No. 91168839; Cancellation No. 92042562
22
should remain suspended until the status of Catholic's
involved registration is finally determined. Accordingly,
proceedings herein remain suspended pending the expiration
of Catholic's time to appeal the entry of summary judgment
in the cancellation proceeding and until final determination
of any appeal filed in connection therewith.