Convenant Insurance Co.

Trademark Trial and Appeal Board

Aug 7, 2000

No. 75301531 (T.T.A.B. Aug. 7, 2000)

Paper No. 10
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Convenant Insurance Company1
________
Serial No. 75/301,531
_______
Gene S. Winter of St. Onge Steward Johnston & Reens LLC
for applicant.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Christopher Wells, Managing Attorney).
_______
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Convenant Insurance Company filed an application to
register the mark shown below for “commercial and personal

1 Applicant was identified in the original application as
Convenant Insurance Company. The specimens of record show use of
the name Covenant Insurance Company. Applicant in its papers
filed in the Office has referred to itself first as Covenant
Insurance Company and more recently as The Covenant Group, Inc.
As pointed out by the Examining Attorney, there has been no
assignment made of record in the Office to this latter entity.
Furthermore, although not previously raised, there is no
indication in the record that applicant’s name was misspelled in
the original application. Accordingly, for our purposes the
applicant remains Convenant Insurance Company.
Ser No. 75/301,531
2
property and casualty insurance and reinsurance brokerage,
administration and indemnity services.”2
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the mark shown below, which is registered
for “worker’s compensation medical and disability case
management services.”3
Applicant and the Examining Attorney have filed

2 Serial No. 75/301,531, filed June 2, 1997, claiming a first use
date and first use in commerce date of April 1997.
3 Registration No. 2,002,964, issued September 24, 1996.
Disclaimers have been made of the terms EMPLOYER, EMPLOYEE,
PHYSICIAN, EARLY INTERVENTION, QUALITY CARE and RETURN TO WORK.
Ser No. 75/301,531
3
briefs,4 but no oral hearing was requested.
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods or services with
which the marks are being used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
Looking first to the respective marks, the Examining
Attorney maintains that the term TEAMWORKS is the dominant
feature in both applicant’s and registrant’s marks; that
the descriptive, disclaimed matter in registrant’s mark
adds little to the commercial impression of the mark; that
the design features of the marks are less significant and
in fact are very similar; and that the term ADVANTAGE in
registrant’s mark is less significant than the term
TEAMWORKS, since it directly refers to TEAMWORKS.
Applicant contends that the marks differ in sound,
appearance and overall connotation. Applicant argues that

4 As pointed out by applicant in its brief, the Examining
Attorney incorrectly identified the refusal as being under
Section 2(e)(1) in the final refusal, although arguing the issue
of likelihood of confusion. Applicant proceeded on the basis
that the refusal was under Section 2(d), as did the Examining
Attorney in her brief. Although the Examining Attorney should
have corrected her error, we find that applicant has continually
treated the refusal as one under Section 2(d) and thus has in no
way been deprived of a full opportunity to present its case.
Ser No. 75/301,531
4
the mere fact that the two marks share a word in common is
not determinative; that while TEAMWORKS is the only term in
its mark, TEAMWORKS is but a small portion of registrant’s
mark. Applicant points out that the words THE and
ADVANTAGE are of equal size and lettering as TEAMWORKS and
that there are also other phrases in registrant’s mark, all
of which applicant insists results in a different
commercial impression from applicant’s mark. Applicant
asserts that registrant’s mark is highly suggestive of its
services and accordingly must be treated as a weak mark for
purposes of determining consumers’ ability to distinguish
between the two marks.
While it is true that marks must be considered in
their entireties in determining likelihood of confusion, it
is also well established that there is nothing improper in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Although disclaimed matter
cannot be ignored, the fact remains that purchasers are
more likely to rely on the non-descriptive portions of the
mark as the indication of source. See Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
Ser No. 75/301,531
5
In the present case, we consider the disclaimed
phrases in registrant’s mark, i.e., EARLY INTERVENTION,
QUALITY CARE and RETURN TO WORK, to have minimal
significance as an indication of source. However, contrary
to applicant’s argument that the entire mark is highly
suggestive of registrant’s services, we see no reason to
conclude that the TEAMWORKS ADVANTAGE portion of
registrant’s mark is any less distinctive than the
TEAMWORKS portion of applicant’s mark. Applicant has made
no evidence of record of any third-party use of the term
TEAMWORKS in marks for similar services, that might support
its assertion that registrant’s mark as a whole is weak and
that purchasers would readily distinguish between the two
marks, despite the presence of the common word TEAMWORKS.
Instead, we agree with the Examining Attorney that the
overall commercial impressions created by the respective
marks are very similar. The dominant portion of
applicant’s mark is TEAMWORKS. The dominant portion of
registrant’s mark as a indication of source is THE
TEAMWORKS ADVANTAGE, the additional matter being
descriptive of the services. In the absence of any
evidence of the use of the term TEAMWORKS by others in the
field, we find it reasonable to assume that purchasers
might well view THE TEAMWORKS ADVANTAGE simply as an
Ser No. 75/301,531
6
embellishment of the TEAMWORKS mark or TEAMWORKS as a
shortened form of THE TEAMWORKS ADVANTAGE, both being used
by the same source. Furthermore, although design portions
of marks are normally assigned to a lesser status, the word
portion usually being relied upon in referring to the goods
or services, we believe that here the common use of arrow
designs in the two marks significantly heightens the
similarity of the general overall impressions created by
the marks.
As for the respective services, the Examining Attorney
maintains that the insurance services of applicant and
registrant are closely related. She has made third-party
registrations of record to support her contentions that
that a significant number of insurance companies offer both
worker’s compensation insurance, personal property
insurance and casualty insurance under the same mark and
that several companies focus exclusively on these areas.
She also relies upon these registrations to show that
administration and management of insurance is directly
related to underwriting and that consumers are accustomed
to the same sources providing both aspects of insurance
services. In addition, she has made of record a dictionary
definition of “administration” as “management” to support
Ser No. 75/301,531
7
her argument that applicant’s “administration” services
encompass registrant’s “management” services.
Applicant insists that there is no overlap in the
services; that its services relate to insurance and the
insuring process and no case management is involved.
Applicant further argues that the channels of trade are
distinct for the respective services, stating that its
insurance services are offered directly to consumers
whereas registrant’s services are directed to employers for
case management.
We find the third-party registrations made of record
by the Examining Attorney fully adequate to establish that
a number of insurance companies offer underwriting services
in the fields of both property and casualty insurance and
worker’s compensation under the same mark.5 Although these
registrations are admittedly not evidence of actual use of
the marks, they are sufficient to suggest that these
various types of insurance services may be offered by a
single entity. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467 (TTAB 1988). Similarly, we find the third-
party registrations adequate to show that the insurance

5 We refer to the specific examples pointed out by the Examining
Attorney in her brief.
Ser No. 75/301,531
8
services offered by these companies often cover a broad
spectrum, including, inter alia, underwriting,
administration and claims management and adjustment
services. Accordingly, we concur with the Examining
Attorney that the services of applicant, which include not
just brokerage, but also administration and indemnity
services, might well be presumed by potential purchasers to
emanate from the same source as registrant’s worker’s
compensation case management services, when offered under a
mark similar to registrant’s mark.
Applicant’s argument that the channels of trade differ
for the services of applicant and registrant is to no
avail. Applicant has placed no restrictions on the
channels of trade for its services in its application and
thus the channels of trade must be presumed to encompass
all the normal ones for services of this nature. See
Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d
1945 (Fed. Cir. 1992). We find no basis in the
identification of services for limiting the offering of
applicant’s insurance services to individual consumers,
rather than also to companies for their employees. In
fact, as pointed out by the Examining Attorney, the
specimens of record show that applicant’s services are
specifically marketed to employers so that these insurance
Ser No. 75/301,531
9
services may be offered to their employees as company
benefits.
Accordingly, in view of the similar commercial
impressions created by the respective marks and the related
nature of insurance services with which they are being
used, we find confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. L. Simms
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board

Ser No. 75/301,531
10