Excelnet (Guernsey) Ltd.

Trademark Trial and Appeal Board

Feb 14, 2001

No. 75048668 (T.T.A.B. Feb. 14, 2001)

2/14/01
Paper No. 27
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Excelnet(Guernsey) Limited
________
Serial No. 75/048,668
_______
Jane F. Collen of Collen Law Associates P.C. for Excelnet
(Guernsey) Limited.
Brendan Regan, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Walters and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
In this appeal, Excelnet (Guernsey) Limited
(applicant) seeks to register the mark EXCELNET and design
for services it now identifies as “insurance brokerage
services excluding mortgage brokerage services provided
exclusively to mortgage lending institutions.”1 While this
1 Application Serial No. 75/048,668 filed January 25, 1996, based
on a bona fide intention to use the mark in commerce and a claim
of priority based on a foreign application. Subsequently,
applicant submitted United Kingdom Registration No. 2,029,841.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/048,668
2
new identification was submitted with applicant’s appeal
brief, the examining attorney has discussed the new
identification of services and has not objected to it.
Therefore, the Board will consider this identification of
services in determining whether there is a likelihood of
confusion.
The examining attorney has refused to register
applicant’s mark because of a prior registration for the
mark EXCEL for “insurance administration, consultation and
mortgage underwriting services provided exclusively to
mortgage lending institutions”2 under Section 2(d) of the
Trademark Act.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs. An
oral hearing was not requested.
After carefully considering the record, the examining
attorney’s refusal to register applicant’s mark EXCELNET,
because it is likely to cause confusion with U.S.
Registration No. 1,775,462, is affirmed.3
2 Registration No. 1,775,462, dated June 8, 1993. Section 8
affidavit filed November 5, 1998.
3 Prior to filing its appeal brief, the applicant had amended its
identification of services to read “insurance brokerage.” See
Amendment to Trademark Application and Request for
Reconsideration dated February 22, 1999. The examining attorney
subsequently accepted this identification of services. See
Office Action dated July 7, 1999. Obviously, this identification
Ser No. 75/048,668
3
Our primary reviewing court’s predecessor, the Court
of Custom and Patent Appeals, has set out a non-exclusive
list of thirteen factors that should be considered in
determining whether there is a likelihood of confusion. In
re E.I. du Pont De Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973). These factors include the
similarity or dissimilarity in the marks and the goods, the
channels of trade, buying conditions, fame of the mark, use
of similar marks on similar goods, actual confusion,
concurrent use, the variety of goods on which the mark is
used, and the presence of a consent agreement. Id.
Likelihood of confusion is decided upon the facts of
each case. In re Dixie Restaurants, 105 F.3d 1405, 1406,
41 USPQ 1531, 1533 (Fed. Cir. 1997); In re Shell Oil Co.,
992 F.2d 1204, 1206, 26 USPQ 1687, 1688 (Fed. Cir. 1992).
The various factors may play more or less weighty roles in
any particular determination of likelihood of confusion.
Shell Oil, 992 F.2d at 1206, 26 USPQ2d 1688; du Pont, 476
F.2d at 1361, 177 USPQ at 567.
In this case, applicant argues that it “demonstrated
that the Applicant’s mark and the cited mark are different
in all these factors [sound, appearance, meaning and
of services, which is broader than the services identified in
applicant’s appeal brief, would not make confusion less likely.
Ser No. 75/048,668
4
commercial impression] and that no confusion would be
likely.” Applicant’s Appeal Brief, p. 2. Its arguments
are that its mark is visually different from the registered
mark with eight letters instead of registrant’s five, it is
pronounced differently, and that its mark has technology-
oriented overtones.
Obviously, marks do not have to be identical to be
confusingly similar. Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816-17
(Fed. Cir. 1987) (Marks not identical but strikingly
similar). Here, applicant has simply taken registrant’s
entire mark and added the term “net” at the end and a
design. It is well settled that marks must be viewed in
their entireties, Shell Oil, 992 F.2d at 1206, 26 USPQ2d
1688, and that the addition of a term to a registered mark
may obviate the likelihood of confusion. In re Electrolyte
Laboratories, 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir.
1990). However, registrant’s and applicant’s mark are
similar in appearance, sound, meaning, and commercial
impression despite the addition of the term “net” and the
design in applicant’s mark.
First, the registrant’s entire mark has been
incorporated into applicant’s mark. It is the dominant
part of applicant’s mark. In a similar case, the Federal
Ser No. 75/048,668
5
Circuit held that the addition of the words “The” and
“Cafe” and a design to registrant’s DELTA mark still
resulted in a likelihood of confusion. Dixie Restaurants,
41 USPQ2d at 1534 (more weight given to common dominant
word DELTA). See also Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977)(CALIFORNIA CONCEPT and design likely to be confused
with CONCEPT for hair care products).
Also, applicant points out that its mark is in special
form. While applicant’s mark is in special form, the
registrant’s mark is in typed form. An argument concerning
different type styles is not viable when, as in this case,
the registration is in typed form and not limited to any
special form. Squirtco v. Tomy Corp., 697 F.2d 1038, 1041,
216 USPQ 937, 939 (Fed. Cir. 1983).
Second, applicant’s argument that the marks create
different commercial impressions is difficult to accept.
Certainly, it is improper to dissect a mark and marks must
be considered in their entireties. Shell Oil, 992 F.2d at
1206, 26 USPQ2d at 1688. However, more or less weight may
be given to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed.
Cir. 1985). In this case, the term EXCEL would likely be
considered the dominant feature. The addition of the
Ser No. 75/048,668
6
ending NET only reinforces the connection with the
registration. As applicant itself argues, its mark has
technology-related overtones that would suggest that the
services under the EXCELNET mark are an updated version of
registrant’s services. In addition, the small design
element in applicant’s mark does not eliminate the
confusion, which would otherwise be likely. Giant Foods,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983)(Differences between GIANT
HAMBURGERS and design and GIANT and GIANT FOODS and designs
not sufficient to overcome the likelihood of confusion);
Dixie Restaurants, 41 USPQ2d at 1534 (Design element of
ordinary geometric shape does not offer sufficient
distinctiveness to create a different commercial
impression). The simple design element in applicant’s mark
almost blends into the stylized letters and it does not
create a different commercial impression.
Third, applicant argues that its mark has a different
meaning because its mark has “very strong technology-
related overtones, ones which are immediately perceptible
to the average consumer of these products and services.”
Applicant’s Amendment dated December 30, 1999, p. 3. Even
if applicant’s argument is accepted, the “technology-
related overtones” that applicant refers to would simply be
Ser No. 75/048,668
7
a reference to the fact that “net” is often a short form of
the word “Internet.” Data Concepts Inc. Digital Consulting
Inc., 150 F.3d 620, 47 USPQ2d 1672, 1675 n.1 (6th Cir. 1998)
(“[T]he practice of “surfing the Net” gives rise to the
prospect that Data Concepts’ use of Digital Consulting’s
registered mark as its Internet domain name would cause
confusion”); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227,
40 USPQ2d 1412, 1414 (N.D. Ill. 1996), approved, 41 USPQ2d
1223 (N.D. Ill. 1996) (“An estimated 30 million people
worldwide use the Internet with 100 million predicted to be
on the “net” in a matter of years”. See also Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1699 (Fed. Cir. 1992) (CENTURY 21 for real
estate brokerage services also the source of CENTURYNET for
leasing time to a computer data base for mortgage loan
information). Adding the term “net” to the registered mark
EXCEL would likely create the impression that the services
provided under the registered mark are now performed in a
more high technology manner such as on the Internet. If
that were true, potential customers would simply believe
that applicant’s services are a more modern version of the
registrant’s services that are performed in a high
technology format.
Ser No. 75/048,668
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Fourth, the sound of the two marks is similar. While
there is an obvious additional syllable at the end of
applicant’s mark, it does use the entire registered mark
with just a “net” added at the end. While applicant counts
letters and reaches a different conclusion, its calculus
cannot obscure the fact that the EXCELNET is the registered
mark EXCEL with NET at the end. Dixie Restaurant, 41
USPQ2d at 1533 (THE DELTA CAFE similar in sound to DELTA).
Finally, the only other issue is whether the services
are sufficiently related. Applicant seeks to register its
mark for services that it now identifies as “insurance
brokerage services, excluding mortgage underwriting
services provided exclusively to mortgage lending
institutions.” The services in the cited registration are
“insurance administration, consultation and mortgage
underwriting services provided exclusively to mortgage
lending institutions.” Applicant’s insurance brokerage
services and registrant’s insurance administration services
are closely related. As the examining attorney points out,
it would be unusual for an insurance broker not to also
provide insurance administration services. Examining
Attorney’s Appeal Brief at 8. In addition, the examining
attorney relies on the Century 21 case. There, real estate
broker services and insurance brokerage services were
Ser No. 75/048,668
9
provided by the same entity and the marks used on the
parties’ insurance services were found to be confusingly
similar. Century 21, 23 USPQ2d at 1699.
Applicant has sought to eliminate the likelihood of
confusion by limiting its services so that they do not
include mortgage underwriting services provided exclusively
to mortgage lending institutions. This identification of
services does not eliminate the likelihood of confusion
because applicant’s services could still be provided to
mortgage lending institutions so long as it did not offer
the services exclusively to mortgage lending institutions.
For example, applicant’s brokerage services could include
insurance such as life, health, and casualty insurance for
businesses. These services would be offered across the
board to all types of businesses including mortgage lending
institutions. When the same employees responsible for
obtaining insurance administration services at mortgage
lending institutions encountered applicant’s mark for other
business insurance, confusion would be likely. “Even if
the overlap between applicant’s and registrant’s services
is small, it is not de minimis in relation to registrant’s
customers because all its customers are potential customers
of Applicant.” Shell Oil, 26 USPQ2d at 1690.
Ser No. 75/048,668
10
Even if applicant’s services are never offered to
mortgage lending institutions, confusion would still be
likely. Employees of mortgage lending institutions who are
familiar with registrant’s EXCEL insurance administration
services would use the services of an insurance broker or
agent to obtain their own personal insurance for their
home, life or health. When they encountered the mark
EXCELNET in connection with insurance brokerage services,
they would likely believe that the source of the insurance
brokerage services was the same as the EXCEL insurance
administration services. The Federal Circuit has held that
distributorship services in the field of automotive parts
were related to service station oil change and lubrication
services even though the distributorship services involved
purchasing automotive parts from manufacturers and then
distributing them to retailers. Shell Oil, 26 USPQ2d at
1689-90. Similarly, purchasers of insurance administration
services for mortgage lending institutions would likely be
confused when they encountered a very similar mark for
insurance brokerage services for their personal needs.
Even sophisticated purchasers can be confused by very
similar marks. Octocom Systems Inc. v. Houston Computer
Services, 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
Ser No. 75/048,668
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Decision: The refusal to register is affirmed.