Capital Blue Cross

Trademark Trial and Appeal Board

Feb 12, 2010

No. 78869843 (T.T.A.B. Feb. 12, 2010)

Oral Hearing: Mailed:
December 3, 2009 February 12, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Capital Blue Cross
________

Serial No. 78869843
_______

Elliott C. Bankendorf of Husch Blackwell Sanders Welsh &
Katz, Ltd. for Capital Blue Cross.

Meghan Reinhart, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Capital Blue Cross seeks registration on the Principal
Register of the standard character mark AVALON for “issuing
group and individual health insurance policies and offering
as a licensed insurer such health insurance policies and
the administration thereof excluding acting as a broker or
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78869843
2
insurance agent” in International Class 36.1 Registration
has been refused under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the registered marks set forth below as to be
likely to cause confusion, mistake or deception.
Registration No. 2388231 for the mark
(“risk management”
disclaimed), for services identified as
“insurance brokerage services in the field of
surety bonds, marine cargo insurance, errors and
omissions insurance and other lines of insurance”
in International Class 36, issued September 19,
2000, Section 8 and 15 declarations accepted and
acknowledged, owned by Avalon Risk Management,
Inc.;

Registration No. 3271955 for the mark
(“consulting” and
“insurance/reinsurance claims management”
disclaimed), for services identified as
“insurance claims auditing services” in
International Class 35 and “insurance services,
namely, insurance consulting services; insurance
and reinsurance claims management” in
International Class 36, issued July 31, 2007,
owned by Avalon Consulting, LLC; and

Registration No. 3271956 for the standard
character mark AVALON CONSULTING (“consulting”
disclaimed), for services identified as
“insurance claims auditing services” in

1 Application Serial No. 78869843, filed April 26, 2006, alleging
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. §1051(b).

Serial No. 78869843
3
International Class 35 and “insurance services,
namely, insurance consulting services; insurance
and reinsurance claims management” in
International Class 36, issued July 31, 2007,
owned by Avalon Consulting, LLC.

The appeal is fully briefed. We reverse the refusal
to register.
Our determination of the issue 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). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With regard to the marks, overall we find applicant’s
mark AVALON to be similar to the marks in all three
registrations. It is not disputed that the word AVALON is
the dominant element in the marks in the cited
registrations. Indeed, other than the stylized A in one of
the cited marks, all other matter in the cited marks is
Serial No. 78869843
4
disclaimed. Disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ2d 749, 752 (“Regarding
descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion”);
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
Applicant focuses its argument on the scope of
protection to be given the cited marks, the differences in
the services and the sophistication of the purchasers. As
to the first issue, the scope of protection, this relates
to the du Pont factor of “the number and nature of similar
marks in use on similar goods” or the inherent weakness of
the mark in that it has taken on some meaning in that field
such that consumers rely on other matter to distinguish the
marks.
Applicant argues that the “trademark register is
crowded with other ‘avalon’ marks and as such, a consumer
is not likely to be confused between any two of the crowd.”
Br. p. 5. In support of this argument applicant submitted
Serial No. 78869843
5
evidence of several third-party registrations for a variety
of goods and services.2 The first problem with applicant’s
argument is that third-party registrations are not evidence
of use in the marketplace and, as such, are not probative
of the sixth du Pont factor, “the number and nature of
similar marks in use on similar goods.” AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269-70 (CCPA 1973). However, “they may be considered
to demonstrate the meaning of a word which comprises the
mark, or a portion thereof, to show that there is a well-
known and commonly understood meaning of that word and that
the mark has been chosen to convey that meaning.” Knight
Textile Corp. v. Jones Investment CO., 75 USPQ2d 1313 (TTAB
2005). This raises the second problem with applicant’s
argument. Of the Federal registrations (other than the
three cited registrations) only those belonging to one
third-party include insurance-related services and those
are limited to and associated with its real estate
services.3 Thus, the relevant registrations come from only

2 Applicant also submitted hit list summaries from an Internet
search engine. Search summaries are generally too truncated to
provide sufficient information about the use of a particular
term, and those of record in this case suffer from this
limitation. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB
2002). They thus are accorded limited probative value.

3 The third-party state registrations “are of absolutely no
probative value” on the question of likelihood of confusion.
Serial No. 78869843
6
three third parties and are not sufficient to establish
that the term AVALON is weak in the insurance field.
However, we note that these three coexist and each is for
very different types of insurance-related services.
We turn then to an analysis of the services. We
compare applicant’s services identified as “issuing group
and individual health insurance policies and offering as a
licensed insurer such health insurance policies and the
administration thereof excluding acting as a broker or
insurance agent” with those in each of the registrations.
As noted above, the services in Registration No.
2833281 are “insurance brokerage services in the field of
surety bonds, marine cargo insurance, errors and omissions
insurance and other lines of insurance.” We find the
services in the registration to be quite distinct from
applicant’s services. Most prominently they differ by
field of use in that applicant’s insurance services are
limited to the health care field and registrant’s services
are limited to surety bonds, marine cargo and errors and
omissions. We do not read the remainder of registrant’s
identification to include the health care field. This is

Allstate Insurance Co. v. Delibro, 6 USPQ2d 1220, 1223 (TTAB
1988). In any event, only two of those are listed in the
insurance field.

Serial No. 78869843
7
entirely out of the natural scope of this identification.
In addition, as applicant states “registrant is not
operating as the issuer of health insurance policies, but
rather as a brokerage. As such, the Registrant is not a
licensed insurer and cannot legally issue insurance
policies. Registrant, as an insurance broker, is an
insurance salesperson that searches the marketplace in the
interest of clients (not insurance companies). The
Registrant’s legal obligation is to the individual or group
who will ultimately be covered by the insurance and not to
the issuer of insurance.” Br. p. 7. See also May 29, 2007
Response Exh. K (excerpts from LOMA Textbook, Insurance
Company Operations 2d ed.; and www.ambest.com “Best’s
Insurance Resources Glossary of Insurance Terms” containing
definitions for “brokerage,” “policy,” and “licensed
insurer”).
The services in Registration Nos. 3271955 and 3271956
are “insurance claims auditing services” in International
Class 35 and “insurance services, namely, insurance
consulting services; insurance and reinsurance claims
management” in International Class 36. Applicant argues
that “[r]egistrant is not operating, and cannot legally
operate, as the issuer of health insurance policies, but
rather only as a consultant to sophisticated corporate
Serial No. 78869843
8
entities, specifically in the highly technical field of
underwriting and issuing insurance policies under stringent
state licensing programs. Without specific state licensure
and oversight the Registrant may not act as a licensed
insurer and cannot legally issue insurance policies. On
the other hand, Applicant is a licensed insurer. This
means that Applicant holds a license in one or more states
to actually underwrite specified policies in the lines of
insurance for which it qualifies.” Br. p. 7.
The examining attorney argues that there is an
“abundance of evidence demonstrating that ‘issuing group
and individual health insurance policies,’ ‘administration
of policies,’ ‘insurance brokerage services,’ ‘insurance
claims auditing services,’ ‘insurance consulting services,’
and ‘insurance and reinsurance claims management’ services
are closely related and often undertaken by the same
company.” Br. p. 14. The examining attorney submitted
several third-party use-based registrations in support of
this argument. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). The problem with the evidence is
that none of the third-party registrations exactly overlap
with applicant’s services and the services listed in each
respective registration. See, e.g., Reg. No. 3103817 for
the mark STONEBRIDGE CASUALTY INSURANCE, for “insurance
Serial No. 78869843
9
services, namely, brokerage, claims processing,
consultation, underwriting and administration of property
insurance, disability insurance, fidelity and surety
insurance, marine and transportation insurance, casualty
insurance, credit insurance, accident and health insurance,
motor vehicle insurance, aircraft insurance, workers’
compensation insurance, fire insurance, malpractice
insurance, earthquake insurance, liability insurance,
mortgage guaranty insurance, homeowners insurance, crop and
livestock insurance, personal injury insurance”; and Reg.
No. 3340023 for the mark for the mark THE POWER TO COMPETE,
for “cost management for the health benefit plans of
others; cost management for the health care benefit plans
of others; health care cost containment; health care cost
review; ...insurance claims auditing services; managing the
operations of insurance agencies and brokers on an
outsourcing basis.” In addition, many of these third-party
registrations are for wide-ranging services that include
banking and financial services along with various services
within the larger insurance field. See, e.g., Reg. No.
2970759 for the mark THE WEBSTER WAY for, inter alia,
“financial and insurance services, namely, banking
services; personal and commercial banking services;
checking account services, savings account services ...
Serial No. 78869843
10
providing working capital loans ... providing working
capital loans ... trust and estate planning ... insurance
agency, brokerage, underwriting and administration services
in the fields of life, accident, health, disability, long-
term care, management and professional liability
...investment management ... risk management.”
The examining attorney also points to excerpts from
the webpages of various health care benefit providers,
contending that they “show that a wide variety of insurance
products and services, including claims auditing, claims
management and issuing health insurance policies, are
provided by one source.” Br. p. 15. However, these
examples merely underscore the difference between insurance
services from a health benefits provider and the insurance
services listed in the registrations. For example, the
website for UnitedHealthcare includes the following
description of services:
We are a part of Unitedhealthcare, a subsidiary
of UnitedHealth Group Incorporated, an innovative
leader in the health and well-being industry,
serving more than 50 million Americans. To help
you attract and retain top-caliber employees, we
offer a variety of health care coverage options,
...

Office Action (January 29, 2009).
Serial No. 78869843
11
On the next web page it discusses its online services
provided as part of the overall health care coverage
services:
If you are a member, you can: ... update your
address ... check claim status... If you are a
physician, health care practitioner or facility,
you can: ...check claim status check member
eligibility.

Id.

The website for Aetna includes the following:
Aetna is one of the nation’s leaders in health
care, dental, pharmacy, group life, and
disability insurance, and employee benefits.
Dedicated to helping people achieve health and
financial security. Aetna puts information and
helpful resources to work for its members to help
them make better informed decisions about health
care. ... Our customer service and claim areas
represent the “face” of Aetna, serving as the
important first line of contact with our
customers. These professionals work directly
with our members, doctors and employer groups
(companies) to help them better understand our
products and services and assist with timely,
accurate payment of their claims, while providing
a human connection at those times when it is
needed most. ... Customer Service
Representatives, Claim Benefits Specialists and
Service Consultants work in our Customer Service
Centers located across the nation.

Id.
Similarly, the website for Kaiser Permanente includes
information about how to submit a claim to their claims
department. Id.
Serial No. 78869843
12
The claims “auditing” and “management” services on
these health insurance websites are merely ancillary to the
primary services of issuing health care insurance as
compared to, for example, the services provided by
registrant which involve managing claims directed to
another company in a variety of fields. Registrant’s
website reveals that the service it provides is to assist
clients:
... in effectively and efficiently managing and
resolving your claims. With more than forty
years of combined claim experience in the
property/casualty industry, the members of Avalon
Consulting have learned to turn what is
unexpected into what can be expected. We can
also help you by evaluating claim organization
structures, managing run-off claims and providing
insight into the financial exposures presented by
property/casualty claims.

Response Exh. B (March 20, 2008).
With regard to the “insurance consulting” in
Registration Nos. 3271955 and 3271956, the examining
attorney argues that “[r]egistrant’s services are
identified broadly and there is no limitation regarding the
consumers to whom it provides its services.” Br. p. 16.
In order to qualify as a service for registration purposes,
a service must be sufficiently separate from an applicant’s
principal activity. Trademark Manual of Examining
Procedure (TMEP) § 1301.04(a)(iii) (6th ed. 2009). It is
Serial No. 78869843
13
not clear what “insurance consulting” services a licensed
provider of health insurance would provide other than
explaining the services they offer or how to utilize their
services. Similarly, to the extent “insurance consulting”
would extend to the general public, that would be more in
the nature of an ancillary service in connection with an
insurance broker or agent. In view thereof, we find that
“insurance consulting” does not encompass applicant’s
identified services and the record does not support a
finding that the consuming public would associate a single
source with applicant’s services, an issuer and
administrator of a health benefits plan, and insurance
consulting services. As applicant states “simply because
Applicant and Registrants are engaged in the general field
of insurance is not sufficient, in itself, to demonstrate
that the respective services are related.” Br. p. 10. See
General Electric CO. v. Graham Magnetics Inc., 197 USPQ
690, 694 (TTAB 1977).
Because there are no limitations in the identification
of services, we must presume that the services will be
offered in all ordinary channels of trade and to all
classes of customers for those services. However, it is
not clear from this record that licensed providers of
health insurance, and insurance/reinsurance claims auditing
Serial No. 78869843
14
and management on the one hand, and insurance brokerage
services in the field of surety bonds, marine cargo
insurance and errors and omissions insurance, on the other
hand, travel in the same channels and are directed at the
same consumer, other than to note that everyone seeks
health insurance and within that group some individuals may
be engaged in seeking other types of insurance or
insurance-related services such as consulting or claims
auditing or management, either as a sophisticated purchaser
for a group plan or as an individual making a careful
purchase. In any event, even assuming common channels of
trade and overlap in purchasers, we find that these factors
do not outweigh the differences present in the services
themselves combined with the added degree of care, on the
part of individual consumers, and sophistication, on the
part of professional buyers, in the purchasing decision.
In conclusion, we find on this record that applicant’s
services are not sufficiently related to each of the
registrants’ services such that there is a likelihood of
confusion and the conditions of sale of the respective
services also serve to prevent customer confusion.
In making our determination here, we recognize that
examining attorneys are somewhat hampered by evidentiary
limitations. In re Pacer Technology, 338 F.3d 1348, 67
Serial No. 78869843
15
USPQ2d 1629, 1631 (Fed. Cir. 2003). Perhaps on a different
record developed in an inter partes case a different result
would be reached.
Decision: The refusals to register under Section
2(d) of the Trademark Act are reversed.