Venture Insurance Co.

Trademark Trial and Appeal Board

May 3, 2001

No. 75573049 (T.T.A.B. May. 3, 2001)

5/3/01
Paper No. 9
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Venture Insurance Company
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Serial No. 75/573,049
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Donald Cayen for Venture Insurance Company.
Cynthia Sloan, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Cissel, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On October 19, 1998, applicant filed the above-
identified application to register the mark “VENTURE” on
the Principal Register for “claims administrative services
and underwriting services solely in the field of property
and casualty insurance,” in Class 36. The application was
based on applicant’s claim of use of this mark in
interstate commerce in connection with these services since
February 27, 1991.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/573,049
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The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that
applicant’s mark, as used in connection with the services
set forth in the application, so resembles two registered
marks, both registered to the same entity, that confusion
is likely. The registered marks are “VENTURE,” for “life
insurance services, namely underwriting and administering
annuities,” in Class 36,1 and the mark shown below,
for “life insurance services, namely fixed and variable
annuities,” in Class 36.2
Applicant responded to the refusal to register with a
number of arguments, but no evidence was submitted in
support of any of them. The Examining Attorney was not
1 Reg. No. 1,502,489, issued on the Principal Register on August
30, 1988 to North American Security Life Insurance Co.; combined
affidavit under Sections 8 and 15 of the Act accepted and
received.
2 Reg. No. 1,617, 0 55, issued on the Principal Register on
October 9, 1990 to North American Security Life Insurance Co.;
the combined affidavit under Sections 8 and 15 of the Act
accepted and received.
Ser No. 75/573,049
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persuaded by applicant’s arguments, and the refusal to
register was made final in the second Office Action.
Attached to the final refusal were copies of seventeen
third-party trademark registrations submitted by the
Examining Attorney to establish that applicant’s property
and casualty insurance services are related to the life
insurance and annuity services set forth in the cited
registrations. The third-party registrations show that
entities have registered their respective marks for
underwriting, brokerage or agency services involving
property, casualty and life insurance. In several
instances, annuities are specified in the registrations as
features of the particular life insurance services.
Applicant timely filed a Notice of Appeal from the
final refusal to register, and both applicant and the
Examining Attorney filed briefs on appeal, but applicant
did not request an oral hearing before the Board.
Applicant attached a number of exhibits to its appeal
brief. The Examining Attorney properly objected to our
consideration of this evidence. Trademark Rule 2.142(d)
specifies the procedure by which additional evidence may be
allowed into the record after a Notice of Appeal has been
filed, but applicant neither requested nor received
permission from the Board to submit evidence after the
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record had closed. Accordingly, we have not considered the
evidence untimely submitted with applicant’s brief.
In the case of In re E. I. DuPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to
our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods or services as
set forth in the application and cited registrations,
respectively.
In the case at hand, the record before us shows that
the services recited in the application are closely related
to those specified in the cited registrations, and the mark
applicant seeks to register creates a commercial impression
similar to those engendered by the cited registered marks,
so use of applicant’s mark in connection with these related
services is likely to cause confusion.
The cited registered mark “VENTURE” is identical to
the mark applicant seeks to register. When the marks in
question are identical, the goods or services with which
they are used ordinarily do not have to be as closely
related in order to find confusion likely as would be the
case if there were differences between the marks. Amcor,
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Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).
In the instant case, however, the record establishes that
the services set forth in the application and this
registration are very closely related. As noted above, the
third-party registrations made of record by the Examining
Attorney show that insurance underwriters, agents and
brokers have registered their respective marks in
connection with life insurance, property insurance and
casualty insurance services, and that several of these
registrations specify annuities as well as administrative
services in connection with such insurance services. These
third-party registrations establish that the services set
forth in the application, administrative services and
underwriting services in the field of property and casualty
insurance, are closely related to the services recited in
the registration for the mark “VENTURE” as “life insurance
services, namely underwriting and administering annuities.”
See: Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
In re Mucky Duck Co., 6 USPQ2d 1467 (TTAB 1988). Plainly,
the use of the identical mark in connection with these
closely related services is likely to cause confusion.
The mark applicant seeks to register is also similar
to the second cited registered mark, “VENTURE PRA” and
design, and the services specified in the registration for
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“VENTURE PRA” and design, “life insurance services, namely
fixed and variable annuities,” are closely related to the
services specified in the application, which include
underwriting property and casualty insurance.
Applicant’s arguments that its mark is not likely to
cause confusion with this registered mark are not
persuasive. While the marks are not identical and must be
considered in their entireties, it is well settled that one
feature of a mark may be recognized as having more
significance in creating the commercial impression for that
mark, and greater weight may be given to that dominant
feature in determining whether confusion is likely. In re
National Data Corp., 224 USPQ 749 (Fed. Cir. 1985). In the
case at hand, the commercial impression created by the mark
applicant seeks to register, “VENTURE,” is similar to the
commercial impression engendered by the “VENTURE PRA” and
design mark because applicant’s mark is a significant part
of the dominant component of the cited registered mark.
Although the registered mark includes the design shown
above, the literal portion of the mark, “VENTURE PRA,” is
the dominant part of the mark, the part which would be
remembered and used when referring to the services when
ordering or recommending them. In re Apitito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). Contrary to applicant’s
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argument, this record does not establish that either
“VENTURE” or “PRA,” or the combination, “VENTURE PRA,” is
merely descriptive in connection with the services
identified in the cited registrations. A prospective
purchaser of insurance who is familiar with use of “VENTURE
PRA” in connection with life insurance services including
annuities, when faced with applicant’s offer of closely
related services under the mark “VENTURE,” is likely to
assume that the mark used by applicant indicates that
applicant’s insurance services emanate from the same source
as those rendered under the registered mark.
This record, as noted above, establishes that
consumers have a basis for expecting that the use of the
same or similar marks in connection with both life
insurance services involving annuities and property and
casualty insurance underwriting services is an indication
that all such services emanate from a single source. This
record does not, however, establish that the insurance
services set forth in the application and cited
registrations are purchased by anyone more “prudent” or
sophisticated than ordinary consumers exercising ordinary
care, nor does it provide any basis for adopting
applicant’s argument that the marks create different
commercial impressions when they are used in connection
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with the services at issue herein because “VENTURE” has a
different connotation in connection with the services set
forth in the registrations than it does in connection with
the services recited in the application.
Further, applicant’s argument that “[i]n evaluating
the similarity or dissimilarity of two marks, the common
portions of the marks are given less weight than the
remainder of the marks” (brief, p.4) is not an accurate
statement of the law. While this might be the case if the
common portions of the marks were merely descriptive in
connection with the goods or services at issue, in the case
at hand, where the record does not establish that either
“VENTURE” or “VENTURE PRA” has descriptive significance in
connection with these services, the word common to these
marks, “VENTURE,” has great significance. “VENTURE” is
applicant’s mark in its entirety, so if we are to consider
applicant’s mark at all, we must consider it to be
dominant. As noted above, this word is the same as one of
the cited registered marks in its entirety, and it is the
same as the dominant word in the other cited registered
mark. When these similar marks are used in connection with
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these closely related insurance services, confusion is
plainly likely.
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.
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