Atkinson & Co., Inc.

Trademark Trial and Appeal Board

Dec 27, 2000

No. 75518824 (T.T.A.B. Dec. 27, 2000)

12/27/
Diane
Atkins
M. Cat
Office
Before
Judges
Opinio
A
regist
Intern
servic
regist
U.S.C.
1 Seria
1994 as
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.Paper No. 10
GFR
00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atkinson & Company, Inc.
________
Serial No. 75/518,824
_______
R. Meyers of Eckert Seamans Cherin & Mellott, LLC for
on & Company, Inc.
herine Faint, Trademark Examining Attorney, Law
103 (Michael Szoke, Managing Attorney).
_______
Simms, Walters and Rogers, Administrative Trademark
.
n by Rogers, Administrative Trademark Judge:
tkinson & Company, Inc. has filed an application to
er BENEFIT PARTNERS as a service mark in
ational Class 35 for "employee benefits consulting
es."1 The Trademark Examining Attorney refused
ration under Section 2(d) of the Trademark Act, 15
§1052(d), on the ground that applicant's mark, when
l No. 75/518,824, filed July 9, 1998, alleging January 4,
a date of first use and first use in commerce.
Ser. No. 75/518,824
2
used in connection with the identified services, will be
likely to cause confusion or mistake or to deceive, in view
of the prior registration of YOUR BENEFITS PARTNER for
"insurance agency services, namely the administration of
insurance programs for insured groups and individuals; and
insurance brokerage services as agent of insurance
providers and through independent general agents" in
International Class 36.2
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the similarities of the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
2 Registration No. 1,994,627, issued August 20, 1996, listing
November 14, 1994 as date of first use and first use in commerce.
Ser. No. 75/518,824
3
We begin with the services and note that our analysis
of the similarity or relatedness of the services must be
based on the identifications in the involved application
and registration. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987). Accordingly,
applicant's argument that its services clearly involve
cost-cutting or rate reductions for purchasers of the
services, while the services of the registrant do not, is
inapposite.
Applicant argues that its identification of services
is broader than that in the cited registration. We agree,
and find that applicant's identified services would include
some of the more narrowly identified services of
registrant. Specifically, applicant's specimens
demonstrate that the range of services it offers includes
administration of insurance programs for businesses. Such
a service is also encompassed within registrant's
"…administration of insurance programs for insured
groups…."
In addition, the Examining Attorney has made of record
numerous registrations, based on use in commerce of the
Ser. No. 75/518,824
4
marks shown therein, demonstrating that other entities have
registered their marks for both employee benefits services
and insurance services similar to those of the applicant
and registrant.3 Such third-party registrations serve to
suggest that the involved services are of a type that may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Thus, we find unpersuasive applicant's argument that
the services are dissimilar because applicant offers a
collection of services that is broader than the services
offered by registrant. Instead, we find the services
overlapping, in part, and otherwise related.
Turning to the marks, we begin by noting that
applicant has included a disclaimer of "Benefit" and the
cited registration includes a disclaimer of "Benefits." In
addition, we note that applicant has made of record copies
of third-party registrations for the marks PARTNERS IN
BUSINESS, PARTNERS IN TRUST, PARTNERS MEDICARE CHOICE and
design, PARTNERS PLUS, WORKCOMP PARTNERS, CAREPARTNERS and
HEALTHPARTNERS, all of which were registered by different
entities for various insurance and/or benefits programs in
3 In fact, some of the third-party registrations made of record
by applicant, to show the weakness of the term "Partners," also
demonstrate the relatedness of the involved services.
Ser. No. 75/518,824
5
classes 35 or 36. These registrations are not evidence of
commercial use of the marks shown therein, or of the state
of the marketplace for the services identified in the
registrations. Olde Tyme Foods Inc. v. Roundy's Inc., 961
F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). At most,
the registrations are probative that "Partners" is a term
that has "appealed to others as a trademark element" in the
insurance and benefits field, and that marks incorporating
the term may not be particularly distinctive in these
fields. See Bost Bakery, Inc. v. Roland Industries, Inc.,
216 USPQ 799, 801 n.6 (TTAB 1982). Nonetheless, even if we
consider the mark in the cited registration to be a weak
mark and entitled to only a narrow scope of protection, it
is well-settled that "[e]ven though a mark may be 'weak' in
the sense of being a common word in common use as a
trademark, it is entitled to be protected sufficiently to
prevent confusion as to source from arising." Matsushita
Electric Industrial Co., Ltd. v. National Steel
Construction Co., 170 USPQ 98, 99 (CCPA 1971).
To distinguish the marks, applicant relies, in part,
on the fact that different terms are pluralized in each
mark. Applicant also relies on the presence of YOUR in
registrant's mark. The differences between the respective
marks' plural and singular terms are not significant.
Ser. No. 75/518,824
6
Likewise, the presence of YOUR in registrant's mark is not
particularly significant. The marks look and sound very
similar. Also, the connotations of the marks are similar.
The registered mark, YOUR BENEFITS PARTNER, yields the
connotation of a firm or entity which would be the partner
of the purchaser of the services, so as to suggest the
nature of the relationship between the provider and
purchaser of registrant's services. Applicant's mark may
be viewed similarly. In fact, applicant's specimens
suggest the same relationship between applicant and
purchasers of applicant's services: "As a partner, you
will participate in all of the important benefit decisions
affecting your company."
Finally, applicant's argument that there will be no
likelihood of confusion because the registered mark is a
"tag line" that would be recognized as such, due to
registrant's use of the tag line with its mark CONSOLIDATED
GROUP, is irrelevant to our analysis. The purported "tag
line" is a separately registered mark and our consideration
of the question of likelihood of confusion is limited to
comparison of the registered mark and applicant's mark,
without consideration of what may or may not be used in
conjunction with the registered mark in the marketplace.
Ser. No. 75/518,824
7
In sum, notwithstanding any weakness attributable to
the registered mark, applicant's mark is very similar
thereto--more so than any of the marks in third-party
registrations on which applicant relies--and because the
respective services are overlapping in part and otherwise
closely related, we conclude that there is a likelihood of
confusion, mistake or deception.
Decision: The refusal of registration is affirmed.