The Travelers Indemnity Companyv.Jose Ivan Vilches

Trademark Trial and Appeal Board

Mar 1, 2021

91239697 (T.T.A.B. Mar. 1, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Travelers Indemnity Company
v.
Jose Ivan Vilches
_____

Opposition No. 91239697
_____

David M. Kelly, Linda K. McLeod, and Jason M. Joyal of Kelly IP, LLP,
for The Travelers Indemnity Company.
Jose Ivan Vilches,
pro se.
_____

Before Bergsman, Heasley, and Lynch,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Jose Ivan Vilches (“Applicant”) seeks registration on the Principal Register of the
word and design mark for “auto body repair services” in
International Class 37.1

1 Application Serial No. 87611104 was filed on September 16, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. The Application has the following description: “The mark
consists of a black uppercase ‘R’, a black uppercase ‘C’, a red broken umbrella representing a
red uppercase ‘C’ an a red lowercase ‘l’, a black lowercase ‘a’, a black lowercase ‘I’, a black
Opposition No. 91239697
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The Travelers Indemnity Company (“Opposer”) has opposed registration of
Applicant’s mark on the grounds of likelihood of confusion and dilution. 15 U.S.C. §§
1052(d), 1125(c).2 Opposer claims to own 13 registrations for marks consisting of or
comprising an umbrella logo, used in connection with a variety of insurance services,
including underwriting and issuing auto insurance, property and casualty insurance,
and personal property insurance.3 Its registered marks include:

4

lowercase ‘m’ and a black lowercase ‘s’.” The colors black and red are claimed as a feature of
the mark.
2 Notice of opposition, 1 TTABVUE.
3 Notice of opposition ¶¶ 3, 7, ex. A, 1 TTABVUE 14-21, 26-124.
4 Reg. no. 3417049, issued April 29, 2008, renewed, for “Insurance underwriting services in
the fields of property and casualty, fire, allied lines, farmowners multiple peril, homeowners
multiple peril, commercial multiple peril, ocean marine, inland marine, earthquake, workers’
compensation, other liability, product liability, private passenger auto liability, commercial
auto liability, auto physical damage, fidelity, surety, burglary and theft, boiler and
machinery, and reinsurance; insurance claims services and administration; insurance claims
processing; insurance claims adjusting; insurance agency and brokerage services, namely,
policyholder services and services to agents and brokers; providing information in insurance
matters; risk management and risk management consultation” in Class 36. For the same
mark, Reg. no. 4085573, issued Jan. 17, 2012, for “Insurance underwriting services in the
fields of property and casualty, commercial lines, farm, auto commercial, boiler and
machinery, commercial multi peril, liability, inland marine, fidelity, surety, crime, workers
compensation, property, personal lines, personal auto, homeowners, boat/yacht, dwelling fire,
identity fraud reimbursement, kidnap and ransom, excess and surplus, high valued
homeowners, personal articles floater, wedding insurance, and reinsurance ; insurance
claims administration; insurance claims processing; insurance claims adjusting; insurance
agency services; providing information in the field of insurance; providing a website with
information and resources in the field of insurance; and insurance and insurance-related
Opposition No. 91239697
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5

services in the nature of loss prevention and risk control management for others” in Class
36. The registrations describe the mark as follows: “The mark consists of an upright, open
umbrella with handle turned to the left.” The color red is claimed as a feature of the mark.
5 Reg. no. 3494648, issued Sept. 2, 2008, renewed, for services including “Insurance
underwriting services in the fields of property and casualty, fire, allied lines, farmowners
multiple peril, homeowners multiple peril, commercial multiple peril, ocean marine, inland
marine, earthquake, workers’ compensation, other liability, product liability, private
passenger auto liability, commercial auto liability, auto physical damage, fidelity, surety,
burglary and theft, boiler and machinery, and reinsurance; claims adjustment in the field of
insurance, insurance claims processing and administration, risk control and loss prevention
consultation; risk control and loss prevention services, namely, risk management; insurance
claims and; insurance agency and brokerage services, namely, policyholder services and
services to agents and brokers; providing information in insurance matters” in Class 36. For
the same mark, Reg. no. 3991521, issued July 12, 2011, declarations of use and
incontestability accepted and acknowledged, for “Insurance underwriting services in the
fields of property and casualty, commercial lines, farm, auto commercial, boiler and
machinery, commercial multi peril, liability, inland marine, fidelity, surety, crime, workers
compensation, property, identity fraud reimbursement, kidnap and ransom, excess and
surplus, personal lines, personal auto, homeowners, high valued homeowners, dwelling fire,
boat/yacht, personal articles floater, wedding insurance, and reinsurance; insurance claims
administration; insurance claims processing; insurance claims adjusting; insurance agency
services; providing information in the field of insurance; providing a website with information
and resources in the field of insurance; and insurance and insurance-related services in the
nature of loss prevention and risk control management for others” in Class 36. The
registrations describe the mark as follows: “The mark consists of the word ‘Travelers’ in black
with a red umbrella at the end of the word.” The colors black and red are claimed as a feature
of the mark.
Opposition No. 91239697
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6
Opposer also claims common law rights in the logo for:
Insurance services; Insurance underwriting services; surety services;
insurance claims administration; insurance claims processing;
insurance claims adjusting; insurance claims reporting; insurance
claims referrals to auto repair shops; insurance agency services;
providing information in the field of insurance; providing a website with
information and resources in the field of insurance; insurance and
insurance-related services in the nature of loss prevention and risk
control management for others; educational services in the field of
insurance; providing software in the field of insurance; marketing
services.7

Applicant’s Answer generally denies the claims in the Notice of Opposition,
averring, in pertinent part, that: “All of Travelers’ design marks consists of a
‘UPRIGHT, OPEN UMBRELLA’, applicants’ is a ‘BROKEN UMBRELLA’.

6 Reg. no. 4554402, issued June 24, 2014, for “Downloadable software in the nature of a
mobile application providing users with the ability to collect, view, manage, store, and
transmit auto accident information including … and images, obtain auto accident guidance,
use mapping features to locate and contact vehicle and travel related services, and providing
policyholders with the ability to file automobile insurance claims,” in Class 9. The
registration describes the mark as follows: “The mark consists of an upright, open, red
umbrella with handle turned to the left against a blue background.” The colors red and blue
are claimed as a feature of the mark. Opposer’s other pleaded registrations are nos. 1161313,
3417048, 3494647, 3991520, 4085572, 4649396, 4649397, 4554401.
7 Notice of opposition, 1 TTABVUE 11.
Opposition No. 91239697
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”8
I. Background

The parties have a history. Applicant was once Opposer’s employee. According to
Opposer, “From July 2004 to January 2009, Mr. Vilches was a senior automobile
appraiser for Travelers whose job duties included inspecting and appraising damaged
automobiles of Travelers’ policyholders for which an insurance claim had been
submitted and providing a cost estimate to repair the vehicles.”9 After Opposer
terminated Applicant’s employment, Applicant filed a civil lawsuit for unpaid
overtime, and sought certification of a class action. The dispute led to arbitration
between the parties, after which Applicant filed another civil lawsuit, which was
dismissed in June 2014.10
Two months later, in August 2014, Applicant registered the domain name
TravelersLaborDispute.com, on which he displayed the “broken umbrella” logos:

and

8 Answer ¶ 1, 4 TTABVUE 2.
9 Declaration of Michael Bucci, Chief Intellectual Property Counsel for Opposer, ¶ 8, 22
TTABVUE 20. See also Applicant’s decl. ¶¶ 1-2, 40 TTABVUE 3, 42 TTABVUE 2.
10 Bucci decl. ¶ 9, 22 TTABVUE 20, 658 (order of dismissal).
Opposition No. 91239697
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11
That same month, he also registered the domain name TravelersClassAction.com,
on which he displayed the logo:
12
In a third website, RCClaims.com, registered in 2017, Applicant has displayed the
applied-for mark:
.13

According to Applicant, “[t]he broken umbrella on the RC Claims logo represents
an altered version of the logo created by applicant in August of 2014, as the result of
applicant’s personal and professional interactions with Travelers.”14 Applicant uses
the logo in conection with his allegation that Opposer Travelers improperly uses
automobile replacement parts that are not certified as required by Federal Law.15

11 Applicant’s decl. ¶ 5, 40 TTABVUE 3, 42 TTABVUE 3. Declaration of Jason Joyal,
Opposer’s counsel, ¶ 4 and ex. 3, Applicant’s May 5, 2018 email responding to Joyal
correspondence, 27 TTABVUE 3-5, 12-13, 19.
12 Joyal decl. and ex. 3, Applicant’s email responding to Joyal, May 5, 2018, 27 TTABVUE 5,
12-13, 19.
13 Applicant’s decl. ¶ 6, 40 TTABVUE 3, 42 TTABVUE 3.
14 Joyal decl. ex. 3, Applicant’s email responding to Joyal, May 5, 2018, 27 TTABVUE 19.
15 Applicant’s decl. ¶¶ 4, 6, 40 TTABVUE 3, 42 TTABVUE 3; Applicant’s notice of reliance no.
3, 40 TTABVUE 43.

Opposition No. 91239697
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In his present application, though, Applicant simply claims a bona fide intent to
use the applied-for mark in connection with “auto body repair services.”
II. Opposer’s Entitlement to a Statutory Cause of Action
“Any person who believes that he would be damaged by the registration of a mark
upon the principal register, including the registration of any mark which would be
likely to cause dilution by blurring or dilution by tarnishment under section 1125(c)
of this title, may, upon payment of the prescribed fee, file an opposition in the Patent
and Trademark Office, stating the grounds therefor….” 15 U.S.C. § 1063(a).
Standing to file an opposition under the statute is now termed entitlement to a
statutory cause of action. Major League Soccer, LLC v. F.C. Int’l Milano S.p.A., 2020
USPQ2d 11488, at *5 n. 18 (TTAB 2020). Despite the change in nomenclature, our
prior decisions and those of the Federal Circuit interpreting Sections 13 and 14
remain equally applicable. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020
USPQ2d 11277, at *4 (Fed. Cir. 2020). As the Court of Appeals for the Federal Circuit
has observed, there is “no meaningful, substantive difference between the analytical
frameworks” in the prior “standing” case law, under which a plaintiff must show a
real interest in the proceeding and a reasonable basis for its belief in damage, see
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014), and the current “entitlement” case law, under which a plaintiff
must show an interest falling within the zone of interests protected by statute and
damage proximately caused by registration. Corcamore v. SFM, 2020 USPQ2d 11277
at *4.
“A claim of likelihood of confusion that is not wholly without merit, including prior
use of a confusingly similar mark, may be sufficient ‘to establish a reasonable basis
Opposition No. 91239697
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for a belief that one is damaged.” DeVivo v. Ortiz, 2020 USPQ2d 10153, *2 (TTAB
2020) (internal punctuation omitted). Opposer’s entitlement to oppose registration of
Applicant’s mark is established by its pleaded registrations, which the record shows
to be valid and subsisting, and owned by Opposer.16 See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret.
Comm’s., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB
2016). It has also adduced testimony of its common-law use of its marks.17 Giersch v.
Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has
established his common-law rights in the mark …, and has thereby established his
standing to bring this proceeding.”). Once a plaintiff has shown entitlement to a
statutory cause of action on one ground, it has the right to assert any other ground.
Hole in One Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, * 3 (TTAB 2020).
Opposer has thus established its entitlement to oppose registration under the
applicable statutes.
III. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application. The record also includes:
A. Opposer’s Evidence

 Declaration of Michael Bucci, Chief Intellectual Property Counsel for Opposer,
with exhibits;18

16 Notice of opposition ex. A, 1 TTABVUE 26-124; Opposer’s notice of reliance no. 1, 28
TTABVUE.
17 See, e.g., declaration of John Morris, ¶¶ 7-16, 23 TTABVUE 3-8.
18 22 TTABVUE.
Opposition No. 91239697
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 Declaration of John Morris, Vice President, Advertising & Media for Opposer,
with exhibits;19
 Declaration of Jason Joyal, counsel for Opposer, with exhibits;20
 Notice of reliance no. 1, on status and title copies of Opposer’s 13 U.S.
trademark registrations;21
 Notice of reliance no. 2, on TESS/TSDR printouts of 15 third-party used-based
registrations for marks covering both insurance services and auto repair
services;22
 Notice of reliance no. 3, on unsolicited media attention toward Opposer and its
umbrella logo;23
 Notice of reliance no. 4, on Internet websites showing third parties that provide
both insurance services and auto repair and/or auto repair referral services24
 Notice of reliance no. 5, on Internet websites, including Applicant’s websites,
showing Applicant’s use of the “broken umbrella” logo;25
 Notice of reliance no. 6, on documents produced by Applicant.26

B. Applicant’s Evidence
 Applicant’s declaration, with exhibits;27
 Notice of reliance no. 1, on National Highway Traffic Safety Administration
(NHTSA) requirement publications;28
 Notice of reliance no. 2, on Certified Auto Parts Association (CAPA) documents
from CAPACertified.org, offered to show “Traveler’s use of auto replacement
parts that are not certified as required by Federal Law”;29
 Notice of reliance no. 3, on Internet web pages from the CAPA website,
CAPAcertified.org;30
 Notice of reliance no. 4, on one of Opposer’s television commercials;31

19 23-26 TTABVUE.
20 27 TTABVUE.
21 28 TTABVUE.
22 29 TTABVUE.
23 30 TTABVUE.
24 31 TTABVUE.
25 32 TTABVUE.
26 33-34 TTABVUE.
27 40 TTABVUE 2-18, 42 TTABVUE.
28 40 TTABVUE 19-27.
29 40 TTABVUE 28-42, 43 TTABVUE.
30 40 TTABVUE 43-57, 44 TTABVUE.
31 40 TTABVUE 58-61, 45 TTABVUE.
Opposition No. 91239697
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 Notice of reliance no. 5, on screenshots of Applicant’s website
TravelersLaborDispute.com, “relevant to Applicant’s creation of the ‘broken
umbrella”;32
 NHTSA requirement publications;33
 CAPA publications.34

IV. Objection to Evidence

Opposer objects to Applicant’s declaration (paragraphs 3-4 and exhibits 1-4) and
Applicant’s notices of reliance 1-3, as well as the exhibits they contain, on the ground
that they are irrelevant to any issue in this opposition proceeding. “Applicant’s
testimony and documents regarding ‘bumper’ standards and NHTSA publications
and similar topics and documents have no probative value on the narrow issue of
entitlement to registration before the Board,” Opposer states (citing Fed. R. Evid.
402).35
We find Applicant’s evidence relevant to the issues in this proceeding. At a
minimum, it bears on Applicant’s intended connotation of his applied-for mark,
representing Opposer’s “broken promise” to motorists, and Applicant’s argument that
he adopted the mark in good faith.36 “Suffice it to say, ‘we simply accord the evidence
whatever probative value it deserves, if any at all … Ultimately, the Board is capable
of weighing the relevance and strength or weakness of the objected-to testimony and
evidence in this specific case, including any inherent limitations, and this precludes
the need to strike the testimony and evidence.’” Ricardo Media Inc. v. Inventive

32 40 TTABVUE 62-68, 41 TTABVUE, 46 TTABVUE.
33 47-51 TTABVUE.
34 52-54 TTABVUE.
35 61 TTABVUE 3-4.
36 See Applicant’s brief, 62 TTABVUE 4-5.
Opposition No. 91239697
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Software, LLC, 2019 USPQ2d 311355, *3 (TTAB 2019) (quoting Hunt Control Sys.
Inc. v. Koninkijke Philips Elecs. N.V., 98 USPQ2d 1558, 1564 (TTAB 2011)). The
objection is therefore overruled.
V. Likelihood of Confusion

“The Lanham Act provides national protection of trademarks in 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.” Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985). Consistent with these
purposes, Section 2(d) of the Lanham Act prohibits registration of a mark that so
resembles a mark previously used in the United States by another and not abandoned
as to be likely, when used on or in connection with the goods or services of the
applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d).
A. Priority

To prevail on the ground of likelihood of confusion under Section 2(d) of the
Lanham Act, based on a previously used mark, it is Opposer’s burden to prove both
priority of use and likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf, 55 USPQ2d at 1848. An opposer must prove that it has
proprietary rights in the term it relies upon to demonstrate likelihood of confusion as
to source. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981). It may establish its prior proprietary rights in a trademark
through ownership of a registration, through actual use, or through use analogous to
trademark use. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed.
Cir. 1996), vacating Pactel Teletrac v. T.A.B. Sys., 32 USPQ2d 1668 (TTAB 1994).
Opposition No. 91239697
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Here, Opposer has established its ownership of 13 registrations of marks
consisting of or containing the umbrella logo.37 King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (Where a plaintiff has
properly made a registration of record, and there is no pending counterclaim to cancel
the registration, priority is not an issue with respect to the goods or services identified
in the registration). And it has—through the testimonial declaration of John Morris,
Opposer’s Vice President of Advertising and Media, supported by exhibits—
established its use of the umbrella logo mark in commerce in connection with
insurance services for decades, commencing at least as early as 1960, long prior to
Applicant’s constructive use date of September 16, 2018.38 See Executive Coach
Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1180, 1184 (TTAB 2017)
(the testimony of a single witness may be adequate to establish use before applicant’s
constructive use date). Opposer has proven priority.
B. The DuPont Factors
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts of record. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In assessing likelihood
of confusion, we consider each DuPont factor for which there is evidence and
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed.
Cir. 2019). “Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” Zheng Cai v. Diamond

37 Notice of opposition ex. A, 1 TTABVUE 26-124; Opposer’s notice of reliance no. 1, 28
TTABVUE.
38 See, e.g., declaration of John Morris, ¶¶ 12-16, 23 TTABVUE 3-8.
Opposition No. 91239697
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Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). Varying
weights may be assigned to each DuPont factor depending on the evidence presented
in a particular case. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). “In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media v. Inventive Software,
2019 USPQ2d 311355 at *5.
1. Fame

Under the fifth DuPont factor, we consider the fame or strength of Opposer’s
marks in order to evaluate the scope of protection to which they are entitled. The
fame of a mark is not “an all-or-nothing measure” in the context of likelihood of
confusion. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir. 2017). Rather, it “varies along a
spectrum from very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations
omitted).
In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength, based on marketplace
recognition. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686
Opposition No. 91239697
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(Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength.”). J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. Dec. 2020 update) (“The
first enquiry focuses on the inherent potential of the term at the time of its first use.
The second evaluates the actual customer recognition value of the mark at the time
registration is sought or at the time the mark is asserted in litigation to prevent
another’s use.”).
In determining the conceptual strength of Opposer’s mark, “we evaluate its
intrinsic nature, that is, where it lies along the generic-descriptive-suggestive-
arbitrary (or fanciful) continuum of words.” In re Davia, 110 USPQ2d 1810, 1815
(TTAB 2014). Inasmuch as the marks are registered on the Principal Register, we
must presume that they are at least suggestive. In re Fiesta Palms, 85 USPQ2d 1360,
1363 (TTAB 2007) (citing In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997)). The elements composing Opposer’s marks reveal their
suggestive nature.
An “umbrella” is “something that covers or protects.”39 We thus find the umbrella
logo, , suggestive of Opposer’s insurance services, which cover or protect
its insureds. In re Texas With Love, LLC, 2020 USPQ2d 11290, 3 (TTAB 2020) (a
design is the legal equivalent of the word that describes it, and must be treated as
such). Opposer’s early advertisements made the suggestion clear:

39 AHDictionary.com.

Opposition No. 91239697
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40
We take judicial notice that the word TRAVELER is defined as “one that travels:
such as one that goes on a trip or journey.”41 This definition accords with the origin
of the Travelers Insurance Company:
42

40 Morris decl. ¶ 38, 23 TTABVUE 31.
41 www.merriam-webster.com/dictionary/traveler. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format or regular
fixed editions. Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and Syndicat
Interprofessionnel du Gruyère, 2020 USPQ2d 10892, * 17 n. 115 (TTAB 2020).
42 Exhibit 7 to Morris decl., Travelers SEC filing, 24 TTABVUE 184.
Opposition No. 91239697
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Even though Opposer has expanded its lines of insurance, it still covers travelers,
including insureds who travel by automobile. So Opposer’s umbrella logo marks—
with or without the wording—are conceptually suggestive of its relevant services,
covering the insurance needs of those who travel by automobile.
The commercial strength of a mark rests on the extent to which “a significant
portion of the relevant consuming public . . . recognizes the mark as a source
indicator.” Joseph Phelps Vineyards v. Fairmont Holdings, 122 USPQ2d at 1734
(citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). “Strength may be measured
indirectly by the volume of sales and advertising expenditures in connection with the
services sold under the mark, and other factors such as length of time of use of the
mark; widespread critical assessments; notice by independent sources of the services
identified by the marks; and the general reputation of the services.” Tao Licensing,
LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017) (citing Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir.
2002) (recognizing indirect evidence as appropriate proof of strength)).
Opposer proves the strength of its umbrella logo marks by all these means. Its
umbrella logo has been in continuous use for insurance services, including auto
insurance, since 1960.43 These services are sold in all 50 states.44 Since 2011, it has
issued more than four million unique personal auto insurance policies under its
logo.45 Since 2010, Opposer has earned revenues of over $25 billion a year from goods

43 Morris decl. ¶¶ 12-13, 23 TTABVUE 4-5.
44 Id. at ¶ 9, 23 TTABVUE 4.
45 Id. at ¶ 42, 23 TTABVUE 39.
Opposition No. 91239697
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and services advertised, offered, and sold under its umbrella logo.46 Between 2008
and 2017, it spent over $90 million a year on advertising, marketing and promotion
under its umbrella logo.47 This advertising includes commercials, which were
broadcast 106,759 times in the U.S. from 2011 through 2018, and viewed more than
22 billion times during that time period.48 The commercials also feature the umbrella
logo, as these stills show:

To complement its commercials, Opposer places its logo at the top of every page of
its Travelers.com website, which received more than 15 million unique visitors
between 2014 and 2019:
49

46 Id. at ¶19, 23 TTABVUE 11.
47 Id. at ¶24, 23 TTABVUE 15.
48 Id. at ¶27, 23 TTABVUE 17.
49 Id. at ¶31, 23 TTABVUE 20-21.
Opposition No. 91239697
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Opposer places its logo on its social media pages—such as Facebook and Twitter—
which have received hundreds of thousands of view in the same time period.50 It
places banner or display ads bearing the logo on third-party websites, including
cnn.com, bloomberg.com, expedia.com, foxsports.com, and nytimes.com, as well as the
popular social media platforms LinkedIn, Facebook, Twitter, YouTube, and Pinterest,
generating more than 900 million impressions between 2016 and 2018.51 And it
displays its umbrella logo in email marketing to customers and prospective customers
in the U.S.; it sent more than 7.5 million such email marketing messages bearing the
Travelers Logo between 2013-2018.52
Opposer has also pursued more traditional print advertising, placing
advertisements in publications such as Forbes, Golf Digest, and Fortune, on
billboards in heavily-trafficked railroad station platforms, and on flyers, brochures
and sell sheets promulgated to its independent agents and brokers, exclusive agents
and brokers, and direct marketing, and/or salaried employees throughout the
country.53
Opposer’s umbrella logo has, in consequence, garnered unsolicited media
attention in publications such as:
 The New York Times: “As corporate logos go, the red Travelers umbrella ranks
with icons of instant recognition like Prudential’s rock or Disney’s mouse ears.
‘It’s a beautiful device,’ said Tom De Vito, a retired ad man. ‘The minute you
see the red umbrella, you say Travelers.’”;

50 Id. at ¶33, 23 TTABVUE 21, 23-24.
51 Id. at ¶37, 23 TTABVUE 28-29.
52 Id. at ¶35, 37, 23 TTABVUE 25, 28.
53 Id. at ¶¶ 9, 38-40, 23 TTABVUE 4, 31, 34, 36.
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 The Washington Post: “…Travelers Group Inc., a financial conglomerate best
known for its red umbrella logo.”;

 Adweek: “Travelers, whose iconic red umbrella logo appears in much of its
advertising….”54

In view of this evidence, which Applicant does not controvert, we find Opposer’s
marks conceptually suggestive—and thus inherently distinctive—and commercially
strong or famous for insurance services. Its marks “thus enjoy a wide latitude of legal
protection.” Bose v. QSC Audio, 63 USPQ2d at 1305 (quoting Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). Opposer’s strong or famous
marks “cast[] a long shadow which competitors must avoid.” Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
The fifth DuPont factor thus weighs heavily in favor of a likelihood of confusion.
2. Similarity of Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Opposer’s and Applicant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir.
2018). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110

54 David Gonzalez, “Criticism Never Rains But It Pours,” The New York Times (May 24,
1997)); Allan Sloan, “Buffett’s Decision About Salomon Proves Everyone Makes Mistakes,”
The Washington Post (September 30, 1997); Steve McClellan, “100 Mil. Travelers Biz Goes to
MediaCom,” Adweek (July 16, 2010)); Morris decl. ¶21, 23 TTABVUE 13-14.

Opposition No. 91239697
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USPQ2d at 1812).
Because Opposer’s marks are commercially strong or famous, the degree of
similarity between the parties’ marks needed to support a conclusion of likely
confusion declines. Bose v. QSC Audio, 63 USPQ2d at 1305, 1309; UMG Recordings,
Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1885 (TTAB 2011).
Applicant argues that the umbrella logo in his applied-for mark represents his
personal opinion. That is, while Opposer’s “open umbrella” offers protection, the
“broken umbrella” in his mark represents failure, or a broken promise.55 The
commercial impression is completely different, he argues, just as an unbroken egg
mark differs from a broken egg mark:
.56
Furthermore, Applicant argues, Opposer’s claim that his logo is likely to cause
dilution by tarnishment of Opposer’s logo is inconsistent with its claim that the marks
are highly similar in commercial impression.57
We agree with Opposer, however, that the relevant consumers—ordinary
motorists—are likely to perceive the parties’ marks as more similar than dissimilar.
See Speedbar, Inc. v. JEC Dev., Inc., 76 USPQ2d 1034, 1040 (TTAB 2005) (finding
purchasers of auto repair services are “ordinary consumers who are not necessarily

55 Applicant’s brief, 62 TTABVUE 4-5.
56 Id. at 4.
57 Id.
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sophisticated.”) Consumers encountering the marks would immediately perceive
their similar, eye-catching red umbrellas:
.
Although one umbrella is open and one is broken, “we must look to the likely
consumer perception of the mark in connection with the identified [services], rather
than applicant’s intended connotation.” UMG Recordings v. Mattel, 100 USPQ2d at
1886. In the context of auto body repair services, motorists could just as easily
perceive the broken umbrella as symbolizing a damaged automobile in need of repair.
The broken umbrella also forms the recognizable letter C, part of the word “CLAIMS,”
connoting insurance claims for auto repairs. Cf. TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1213.05(g)(i) (Oct. 2018) (mark with distinctive design
replacing a letter in descriptive or generic wording must still be disclaimed, if word
is still recognizable). And the black san-serif lettering in Applicant’s mark emulates
the lettering in Opposer’s word and design mark. So in appearance, connotation, and
commercial impression, Applicant’s mark yields the impression that it is a variation
on Opposer’s marks, used in connection with auto body repair services covered by
Opposer’s insurance. See Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (Opposer’s use of variations on the
dominant portion of its mark “would increase the likelihood that consumers would
misconstrue the source of insurance under the mark ….”).
Applicant’s “broken egg” analogy is unavailing. As Opposer correctly notes,
“Applicant cites no application, registration, or decision concerning or discussing the
Opposition No. 91239697
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alleged logos and .”58 There is no indication that either logo is
famous, or that they are used on or in connection with related goods or services.
Opposer draws a closer analogy to a nonprecedential decision, PRL USA Holdings,
Inc. v. Thread Pit, Inc., Cancellation no. 92047436 (TTAB 2012), in which the Board
found confusing similarity between the famous Polo Player mark
and a falling Polo Player mark, , both for clothing.59
Comparing the marks, the Board found that “Given the fame of petitioner’s mark, the
points of similarities in appearance, connotation and commercial impression
outweigh the dissimilarities.” Id. at *13.
Here, as in the Polo Player case, Applicant’s alteration of Opposer’s famous mark
does not dispel the marks’ confusing similarity. Ordinary motorists encountering the
parties’ marks would normally retain a general rather than a specific impression of
the marks. See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed.
Cir. 2014). Given the fame of Opposer’s umbrella logo, they are likely to remember it,
associate it with Opposer, and regard the parties’ marks as more similar than

58 Opposer’s reply brief, 63 TTABVUE 10.
59 Opposer’s brief, 60 TTABVUE 42-43; Opposer’s reply brief, 63 TTABVUE 10. “Board
decisions which are not designated as precedent are not binding on the Board, but may be
cited and considered for whatever persuasive value they may hold.” In re Soc’y of Health &
Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018), quoted in In re Alabama
Tourism Dep’t, 2020 USPQ2d 10485, at *6 n. 25 (TTAB 2020).
Opposition No. 91239697
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dissimilar. See Bose v. QSC Audio, 63 USPQ2d at 1305. Those “purchasers who do
notice the difference in the marks will not necessarily conclude that there are
different sources for the [services], but will see the marks as variations of each other,
pointing to a single source.” In re Hitachi High-Technologies Corp., 109 USPQ2d
1769, 1774 (TTAB 2014).
Applicant’s argument that tarnishment is incompatible with confusing similarity
also misses the mark. In Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB
1988) the Board found the applicant’s design mark displaying a defecating dog
confusingly similar to Greyhound’s famous design mark
even though the dogs were engaged in clearly different activities. The Board found
likelihood of confusion under Section 2(d) even though, under the law applicable at
the time, the applicant’s mark was deemed scandalous and disparaging under Section
2(a), as well. Id. A confusingly similar mark may tarnish a famous mark.
Because the parties’ marks are similar in appearance, connotation, and
commercial impression, the first DuPont factor weighs in favor of a likelihood of
confusion.
3. Relatedness of Services
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014).
Applicant’s identified services, again, are “auto body repair services” in
International Class 37. Applicant argues that while “Travelers [sic] brief goes to great
Opposition No. 91239697
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lengths to ‘infer’ that they are engaged in auto repairs, the fact is that Travelers does
not have a license to operate an auto repair facility, nor does it want to have one.”60
“Travelers’ registrations comprise classes 9, 35, 36, 41 and 42,” he insists, while
“Applicant’s registration is under class 37.”61
We agree with Opposer, however, that the parties’ identified services are related
and complementary. “[L]ikelihood of confusion can be found ‘if the respective [goods
and services] are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.’” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). The International Classification
is solely for the convenience of the PTO, and “is wholly irrelevant to the issue of
registrability under section 1052(d), which makes no reference to classification.” In
re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting
Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)
also quoted in Ricardo Media v. Inventive Software, 219 USPQ2d 311355 at *11 n.
16).
“In making our determination regarding the relatedness of the … services, we
must look to the … services as identified in Applicant’s application and the cited
registration. See Stone Lion Capital …, 110 USPQ2d at 1162 … (quoting Octocom
Sys., Inc. v. Hous. Comput. Servs. 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

60 Applicant’s brief, 62 TTABVUE 5.
61 Id. 62 TTABVUE 3.
Opposition No. 91239697
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mark must be decided on the basis of the identification of goods [or services] set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods [or services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are directed.’))….” In re
Information Builders Inc., 2020 USPQ2d 10444, *2 (TTAB 2020).
And where, as here, the identification of services is broad, we presume that it
encompasses all services of the type identified. In re Country Oven, 2019 USPQ2d
443903, *4 (TTAB 2019); Southwestern Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d
1007, 1025 (TTAB 2015). As Opposer notes, Applicant’s “auto body repair services”
encompass repairs made in connection with insurance claims, including claims made
by Travelers’ insureds.62 Opposer’s cited registrations cover inter alia “insurance
underwriting services in the fields of . . . private passenger auto liability, commercial
auto liability, auto physical damage,”63 “insurance underwriting services in the fields
of . . . auto commercial . . . [and] personal auto,”64 and “insurance claims processing
and administration.”65
Under its umbrella logo marks, Opposer has not only covered insurance claims for
auto body repairs; it has referred consumers to auto body repair facilities, and has
even joined with partner auto body repair shops, which display the umbrella logo on
their facilities, their signage, and their advertising.66

62 Opposer’s brief, 60 TTABVUE 43; Opposer’s reply brief, 63 TTABVUE 12.
63 Reg. nos. 3417048, 3417049, 3494647, and 3494648.
64 Reg. nos. 3991520, 3991521, 4085572, 4085573.
65 Reg. nos. 3417048, 4085573, 3494648.
66 Opposer’s brief, 60 TTABVUE 44; Opposer’s reply brief, 63 TTABVUE 6; Morris decl. ¶¶
13-17, 23 TTABVUE 5-11.
Opposition No. 91239697
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See, for example an excerpt from Opposer’s “Claim Center” page on its website at
www.Travelers.com:
67
And examples of affiliated auto body shops and their signage:
68
To further underscore the related and complementary nature of the parties’
services, Opposer adduces over a dozen use-based third-party registrations covering
both auto insurance services and auto repair services under the same mark.69 For
example:

67 Morris decl. ¶ 16, 23 TTABVUE 9 ex. 2, 24 TTABVUE.
68 Morris decl. ¶ 16, 23 TTABVUE 9 ex. 2, 24 TTABVUE 27-29.
69 29 TTABVUE.
Opposition No. 91239697
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Registration
No.
Mark Pertinent Services
5170891

Vehicle insurance services, namely, issuance of vehicle
GAP insurance. Cl. 36

Vehicle repair and maintenance services. Cl. 37
4853808
WALSER
Insurance services, namely, providing extended
warranty contracts on automobiles and issuing of
automobile insurance. Cl. 36

Vehicle repair and maintenance; auto body repair
services. Cl. 37

4899636
AUTOCARD 10
Insurance administration in the field of auto insurance.
Cl. 36

Automobile repair and maintenance. Cl. 37
3833066
ALLSTATE DEALER
SERVICES
Insurance underwriting services in the field of auto
protection. Cl. 36

Automotive maintenance and repair. Cl. 37
4897094 CAR EZ Insurance services, namely, underwriting, issuing and
administration of automobile insurance.
Developing and maintaining a network of pre-approved
preferred provider auto body repair shops.

These registrations suggest that the parties’ services may emanate from the same
source. DeVivo v. Ortiz, 2020 USPQ2d 10153 at *13. As further evidence, Opposer
introduced printouts from 25 websites showing that the same entity—such as Geico,
Farmers, and Progressive--commonly provides auto insurance, auto repair, or auto
repair referral services.70 See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells
the goods and services of both parties, if presented, is relevant to the relatedness
analysis....”).
Applicant does not controvert this evidence. Based on the evidence, we find that
the parties’ respective services are related, such that they could give rise to the

70 31 TTABVUE.
Opposition No. 91239697
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mistaken belief that they emanate from the same source, if offered under similar
marks. See Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722. The second
DuPont factor thus weighs in favor of likelihood of confusion.
4. Bad faith adoption
The thirteenth and final DuPont factor concerns “[a]ny other established fact
probative of the effect of use.” DuPont, 177 USPQ at 567. This factor accommodates
the need for flexibility in assessing each unique set of facts. In re Country Oven, Inc.,
2019 USPQ2d 443903 at *15.
Opposer contends that Applicant, a former employee, has sued Opposer twice, has
publicized the confidential details of those lawsuits, has criticized it on his website
while prominently using the logo , an admittedly altered version of
Opposer’s umbrella logo, and has now applied to register a mark that alters that
version, retaining and changing, to a certain extent, the “broken umbrella”:
. Opposer concludes that “Applicant unquestionably adopted his mark
in bad faith, knowing of Travelers’ prior rights and intending for consumers to
associate his logo with Travelers.”71 Applicant responds that he did not adopt the
“broken umbrella” mark in bad faith, but as an expression of his personal opinion. He
adds that “Applicant’s state of mind during the creation of the ‘broken umbrella’ has
no bearing on his entitlement to registration.”72

71 Opposer’s brief, 60 TTABVUE 46.
72 Applicant’s brief, 62 TTABVUE 4.
Opposition No. 91239697
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Applicant is partly right, in that his intent is not dispositive. Proof of intent to
trade on another’s good will can provide persuasive evidence of likelihood of
confusion. Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 853 F.2d 888, 7
USPQ2d 1628, 1630 (Fed. Cir. 1988); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1442
(TTAB 2012). But good faith adoption does not avoid a likelihood of confusion. See J
& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891
(Fed. Cir. 1991) quoted in Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511,
1516 (TTAB 2009). This DuPont factor “is highly fact specific and it is under very
specific circumstances that this factor may matter.” In re Country Oven, 2019
USPQ2d 443903 at *18.
We find the evidence falls short of showing bad faith. The evidence does not
indicate Applicant’s intent to trade on Opposer’s goodwill; it indicates his intent to
critique Opposer’s policies for estimating auto body repair costs and selecting
replacement parts. “[A]n inference of ‘bad faith’ requires something more than mere
knowledge of a prior similar mark.” Sweats Fashions, Inc. v. Pannill Knitting Co.,
Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987).
Absent a showing of bad faith, Applicant is correct that his state of mind has no
bearing on likelihood of confusion. As noted, “we must look to the likely consumer
perception of the mark in connection with the identified [services], rather than
applicant’s intended connotation.” UMG Recordings v. Mattel, 100 USPQ2d at 1886.
For these reasons, the thirteenth DuPont factor is neutral.
5. Conclusion
We have considered all of the arguments and evidence of record and all relevant
DuPont factors. Based on the fame of Opposer’s marks, the similarity of the parties’
Opposition No. 91239697
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marks, and the relatedness of their services, we find that there is a likelihood of
confusion under Section 2(d). 15 U.S.C. § 1052(d). In view of our decision finding a
likelihood of confusion, we need not reach the issue of dilution. See Venture Out Props.
LLC. v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1894 (TTAB 2007).
Decision: The opposition to registration of the mark in Application Serial No.
87611104 is sustained on the ground of likelihood of confusion under Section 2(d),
and registration to Applicant is refused.