First American Fastrac Systems, Inc. and First American Corp.v.Empire Fire and Marine Ins. Co.

Trademark Trial and Appeal Board

Sep 5, 2001

OPP (T.T.A.B. Sep. 5, 2001)

9/5/01 Paper No. 32
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

First American Fastrac Systems, Inc.
(by name change from Fastrac Systems, Inc.) and
First American Corp. (joined as party plaintiff)
v.
Empire Fire and Marine Insurance Co.
_____

Opposition Nos. 110,976 and 111,126
to application Serial Nos. 75/332,798 and 75/332,799
both filed on July 7, 1997
_____

Gerald S. Schur of Welsh & Katz, Ltd. for First American
Fastrac Systems, Inc. and First American Corp.

Robert D. Hovey of Hovey, Williams, Timmons & Collins for
Empire Fire and Marine Insurance Co.
______

Before Chapman, Walters, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

Empire Fire and Marine Insurance Co. (applicant) has
filed two trademark applications to register the mark
FASTRACK in typed form and in stylized form for services
identified as “insurance claims processing via a 24-hour
insurance claim and accident reporting hotline” in
International Class 36. Application Serial No.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 110,976 and 111,126
2
75/332,798 is for the mark FASTRACK in typed form;
application Serial No. 75/332,799 is for the mark
FASTRACK in stylized form1.

On June 30, 1998, and July 7, 1998, Fastrac Systems,
Inc. (opposer) filed notices of opposition to the
registration of the two applications discussed above.
Opposer based its opposition, inter alia, on its
ownership of Registration No. 1,604,117 for the mark
FASTRAC (typed form) for services identified as “computer
services, namely, providing access time to a computer
database in the field of insurance information to
mortgage lenders” in International Class 42.2
On March 26, 1999, the Board granted the parties’ joint
motion to consolidate the two oppositions.

1 Both applications were filed on July 7, 1997, and alleged
dates of first use and first use in commerce of July 1, 1997.
An amended drawing showing the mark as solid black was
ultimately accepted in the ‘799 application.
2 The registration issued June 26, 1990, and the filing date of
the underlying application was March 10, 1989. An affidavit
under Sections 8 and 15 has been accepted and acknowledged,
respectively; renewed.
Opposition Nos. 110,976 and 111,126
3
The Record
The record consists of the files of the involved
applications; the trial testimony deposition, with
accompanying exhibits, of Mark Speizer, former chairman
and chief executive officer of Fastrac Systems, Inc.; a
status and title copy of opposer’s Reg. No. 1,604,117;
opposer’s documents concerning various agreements it has
with its customers; Certificates of Amendment of Articles
of Incorporation for Fastrac Systems, Inc. and National
Insurance Group; a copy of Vehicle Leasing Today
magazine; a Securities and Exchange Commission 10-K
filing for National Insurance Group; a 1999 annual report
for First American Financial Corporation; copies of cases
and legal articles and papers related to various
oppositions at the Board involving opposer; and
applicant’s submission of over 150 U.S. trademark
registrations containing the term “fast track” or some
variation of it.
Both parties have filed briefs, but no oral hearing
was requested.
Priority
Priority is not an issue to the extent that the
opposition is based on opposer’s ownership of a
registration for the mark FASTRAC. See King Candy Co. v.
Opposition Nos. 110,976 and 111,126
4
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). To the extent that opposer relies on its common
law trademark rights or its trade name usage of the term
FASTRAC for various insurance-related services, it has
established that it has used the term prior to the filing
date of the opposed applications.
The original notices of opposition in this case were
filed by Fastrac Systems, Inc., which was a wholly-owned
subsidiary of National Information Group. Opposer’s Ex.
4, p. F000139; Opposer’s Ex. 28, p. F0003350. On June
15, 1998, National Insurance Group had changed its name
to National Information Group. Opposer’s Ex. 31.
National Information Group merged with First American
Financial Corporation. Opposer’s Ex. 29, p. F0003446.
On May 9, 2000, Fastrac Systems, Inc. amended its
Articles of Incorporation to indicate that its name is
First American Fastrac Systems, Inc. Opposer’s Ex. 30.
On October 18, 2000, First American Corporation
(formerly First American Financial Corporation) moved to
amend the notice of opposition to conform to the evidence
under Fed. R. Civ. P. 15(b) and indicate that First
American is the owner of the registration. The motion
was unopposed, and the Board granted the motion in an
order dated February 13, 2001.
Opposition Nos. 110,976 and 111,126
5
“[A]n opposer is not limited in an opposition to
relying solely on those marks for which it has
registrations. An opposer can rely upon other forms of
its marks or indeed other marks for which it lacks
registrations, provided opposer is the prior user.”
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 (TTAB
1998). In this case, opposer has alleged that it is
using its mark on services beyond those described in its
registration and also that it is using the term FASTRAC
as a trade name. Opposer argued that its “prior use, by
a related company of a term as a trade name or corporate
name is a proper ground itself for opposition and is
sufficient to preclude registration of a singular term
for related goods or services.” Br., p. 7. Opposer is
correct that the use of a term not as a technical
trademark, such as use as a trade name or corporate name,
can be a proper ground for opposition to the registration
of a similar term. Jim Dandy Co. v. Martha White Foods,
Inc., 458 F.2d 1397, 173 USPQ 673, 675 (CCPA 1972);
Cyber-Tronics, Inc. v. Johnson Service Co., 156 USPQ 583
(TTAB 1967). In order to prevail on its use of a common
law trademark or a trade name, the common law mark or
trade name must be pled or tried by consent of the
parties. Fossil, Inc., 49 USPQ2d at 1454.
Opposition Nos. 110,976 and 111,126
6
While not a model of clarity, opposer’s original and
amended notices of opposition put applicant on notice
that opposer was relying on more than its simple
ownership of a trademark registration as its bases for
opposing the registration of the involved applications.
Opposer is now and has for many years, through
itself and its predecessors, been engaged in
intrastate and interstate commerce in connection
with the provision of insurance information
services, including vehicle insurance tracking, data
management, and claims processing analysis. Notice
of Opposition, ¶ 1; See also Amended Notice of
Opposition, ¶ 1 (same language).

Some of Opposer’s services are included in the
description of the services in United States Service
Mark Registration No. 1,604,117. Notice of
Opposition, ¶ 2; See also Amended Notice of
Opposition, ¶ 2 (same language).

Opposer also provides and has provided additional
services in the insurance field and provides
insurance information to customers in other fields,
for example, to mortgage lenders, including vehicle
manufacturers and lenders, including insurance
claims analysis and information. Opposer’s services
are marketed with the services of other members of
the [National Information]
Group, which includes automobile physical damage
coverage. Notice of Opposition, ¶ 2; See also
Amended Notice of Opposition, ¶ 2 (same language).

Opposer’s evidence shows that it was using the term
“Fastrac” as part of its name at least as early as 1992
and its use was not limited to mortgage lenders.
Opposer’s Ex. 1; Speizer testimony dep., p. 11 (Mark A.
Speizer & Co. changed its name to Fastrac Systems, Inc.,
in 1992); Opposer’s Ex. 3, p. F00060; Speizer testimony
Opposition Nos. 110,976 and 111,126
7
dep., pp. 13-14 (“Fastrac … was also in the business of
tracking whether insurance was in place on automobiles,
trucks, boats, and other personal property which had been
used as collateral to secure loans”).
Opposer’s evidence establishes priority of its use
of its common law mark and trade name prior to the filing
date of the applications in this opposition.
Likelihood of Confusion
To determine whether there is a likelihood of
confusion in this case, we rely on the factors set out by
our primary reviewing court’s predecessor, the Court of
Customs and Patent Appeals, in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect
of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
We first look at whether the marks of applicant and
opposer are similar in their entireties as to appearance,
sound, connotation and commercial impression.
Applicant’s marks are for the same term FASTRACK in typed
Opposition Nos. 110,976 and 111,126
8
and stylized form. Opposer’s mark is for the mark
FASTRAC in typed form. The typed drawings are identical
except that applicant spells its mark with the letter “k”
at the end. “Applicant concedes that there is little
difference in sound or meaning between FASTRAC and
FASTRACK.” Applicant’s Br., p. 7. Indeed, it is
difficult to conceive of even a little difference
between the two marks as far as sound and meaning are
concerned. As to appearance, the two marks have very
similar appearances, and it is highly likely that
consumers may not even notice the difference between the
two marks because the only difference is a letter that
does not change the pronunciation or meaning of the word.
The two marks’ commercial impressions are virtually
identical and we can perceive of no meaningful
differences between the marks that would help avoid a
likelihood of confusion.3
Next, we look at the similarity or dissimilarity of
the services as described in the applications and the
registration as well as the opposer’s use of the mark on

3 Differences in type styles between opposer’s mark and
applicant’s stylized mark are not significant here
because the opposer’s registered mark is in typed form
and, thus, not limited to any special form. Squirtco v.
Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed.
Cir. 1983); Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000).
Opposition Nos. 110,976 and 111,126
9
services outside the identification of services in its
registration. Regarding applicant’s services, we must
view them as they are described in the applications to
determine if there is a likelihood of confusion with
opposer’s mark as used on its services. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). Applicant argues
that merely because both parties are in the insurance
field, it does not mean that there is automatically a
likelihood of confusion when similar marks are involved.
Furthermore, applicant maintains that even if both
services use software programs to process data, it does
not necessarily follow that use of similar marks leads to
a conclusion that confusion is likely. We agree with the
applicant regarding the general proposition that merely
because similar marks are used in the insurance field and
the services involve software, there is no per se rule
that confusion is likely.
If this case were limited to a comparison of the
services in the applications with those in opposer’s
registration, there would be some doubt as to whether
there is a likelihood of confusion.4 Applicant’s services

4 Of course, if we had any doubts, we must resolve these doubts
about confusion against the newcomer. Kenner Parker Toys v.
Opposition Nos. 110,976 and 111,126
10
concern a 24-hour claim and accident reporting hotline
while opposer’s registration is for computer services of
providing access time to a computer database in the field
of insurance information to mortgage lenders. Even with
these services, there is a relationship between the two
services because applicant’s hotline service can be
marketed to mortgage lenders who need to make claims on
property in which their
institution has a security interest. These situations
could occur when the borrower allowed its insurance to
lapse and the lender acquired insurance for the
collateral (“forced-place insurance”). Speizer testimony
dep., p. 43. In such a case, the lenders would be
prospective purchasers of both the computer database
services of opposer and a hotline

Rose Art Industries, 963 F.2d 350, 355, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992).
Opposition Nos. 110,976 and 111,126
11
service similar to applicant’s to make claims under its
insurance policy. We note that the identifications of
services in the applications are not limited to hotline
services for any particular type of property.
However, in addition to its services identified in
its registration, opposer has also submitted evidence
that it is the source of additional insurance services
under the trademark or trade name FASTRAC. Opposer has
been using its mark on services beyond those offered to
mortgage lenders. “From real estate mortgages to car,
boat, farm equipment, and miscellaneous collateral loans
and leases, FASTRAC’s multiple tracking capability lets
you track your whole portfolio.” Opposer’s Ex. 5,
F000014.
In addition, the record indicates that there was a
subsidiary of opposer named “Fastrac Systems, Inc.,
Insurance Agent & Broker.” Speizer testimony dep., p.
17. See also Opposer’s Ex. 1. In its 1996 Annual
report, Fastrac Systems, Inc. Insurance Agent & Broker
was identified as a subsidiary of National Insurance
Group. Opposer’s Ex. 2, p. F00040. In its 1997 Annual
Report, National Insurance Group apparently changed the
name of this subsidiary. Opposer’s Ex. 4, p. F000139
(“Pinnacle Management Solutions Insurance Services, a
Opposition Nos. 110,976 and 111,126
12
California Corporation (‘PMSIS’), formerly named Fastrac
Systems, Inc., Insurance Agent & Broker”). National
Insurance Group eventually changed its name to National
Information Group (Opposer’s Ex. 31), and it was
subsequently merged with First American Financial Corp.
(Opposer’s Ex. 29, p. F0003446).
The evidence establishes that throughout this period
opposer has used the term “FASTRAC” in relation to
various insurance services. Over a period of many years,
Fastrac Systems, Inc. Insurance Agent and Broker was
licensed to provide various insurance services in many
states. See, e.g., Opposer’s Ex. 19, pp. F00204
(“Fastrac Systems, Inc. Ins Agent and Broker” licensed by
the State of Alaska for providing property, casualty,
surety, and marine insurance, effective April 28, 1998),
F000206 (“Fastrac Systems, Inc. Insurance Agt & Brkrs”
licensed by the State of Arizona, effective April 30,
1998); and F000206 (“Fastrac Systems, Inc. Ins Agt &
Brkrs” licensed by the State of Arizona, effective April
30, 1992). Also, information available on opposer’s
website describes Fastrac Systems, Inc. as “a provider of
technology-based automobile tracking services.”
Opposer’s Ex. 14, p. F001771.
Opposition Nos. 110,976 and 111,126
13
Finally, we note that Fastrac Systems, Inc.
Insurance Agent and Broker has served as an agent for
applicant in various states. Speizer testimony dep., pp.
53-56. See specifically Speizer testimony dep. at pages
55-56.
Q. You’ve pointed out on several of these that
Fastrac Systems, Inc., Insurance Agent & Broker
was a licensee or appointee of Empire Fire and
Marine Insurance Co. Do you have an idea of how
many states those licenses or appointments were
present in?

A. Well, at various times, but at one time it was
something like 45 or 46 states.

See also Opposer’s Ex. 19, pp. F000271 and F000296.

Fastrac Systems, Inc., Insurance Agent and Broker
had an agency relationship with applicant, explained by
Mr. Speizer, as follows:
Whenever the borrower’s insurance would lapse,
Fastrac would place the insurance – excuse me – it
would get information; it would put it into its
computer; it would send out letters to the borrowers
saying the insurance had lapsed; it would receive
telephone calls from the borrowers and agents in
response to those letters.

It would either receive a reinstatement or a new
insurance policy replacing the one that lapsed, or
in the event that did not occur, then it would go
ahead and put in place what we’ll call “forced
placed insurance,” which covered the item used as
collateral for the loan.

And it handled the money transactions between the
financial institutions and the insurance company
where the premium went. That would be both getting
the money from the institution, paying the insurance
company, and then if the policy was ultimately
Opposition Nos. 110,976 and 111,126
14
cancelled because the borrower finally submitted
insurance, then it would go ahead and return the
money to the proper payer.

Speizer testimony dep., pp. 17-18.

Later, opposer’s witness further described the
services its subsidiary performed as a licensee or
appointee of applicant:
We filed the programs with the various states, got
the programs accepted to meet the criteria of each
individual department, produced the forms,
ultimately marketed the product to financial
institutions to be used in –- along with our
tracking and outsourcing services, issued the
policies, cancelled the policies, kept track of
premiums received, premiums to be returned, and also
received the claims, made claim assignments, and
helped settle out claims and pay claims.

Speizer testimony dep., pp. 56-57.
Opposer’s witness also testified that in the course
of these responsibilities, Fastrac would have been
contacted by the insured of these policies. Speizer
testimony dep., p. 57. Thus, while opposer’s services
are targeted to financial institutions and other
commercial entities, the record shows that opposer or its
subsidiaries using the term FASTRAC would have had
contact with purchasers or users who would also be
prospective purchasers or users of applicant’s services.
The overlap in prospective purchasers would not be de
Opposition Nos. 110,976 and 111,126
15
minimis. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993).
In order to support a determination that the goods
or services are related, it is not necessary that
respective goods or services be identical or even
competitive. If the goods or services are marketed in
such a way that would lead customers to a mistaken belief
that they originate from or are in some way associated
with the same producer or that there is some association
or connection between the producers of the respective
goods, the goods are related. Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Here, opposer has established that its services are
not limited to the services set out in its registration,
i.e. to mortgage lenders. It is clear that opposer has
used the term FASTRAC as a trademark or as part of its
trade name on diverse insurance services, including
acting as applicant’s agent or appointee in many states.
The purchasers and users for both parties’ services
overlap and the services themselves are sufficiently
related that, if identified by substantially similar
marks, confusion as to source or sponsorship is likely.
Opposition Nos. 110,976 and 111,126
16
In addition to its argument regarding the
differences in services, applicant argues that there is
no likelihood of confusion because the mark is weak as
demonstrated by its submission of over 150 registrations
it has made of record by a notice of reliance. We are
not persuaded by this evidence that there is no
likelihood of confusion.
Much of the undisputed record evidence relates to
third party registrations, which admittedly are
given little weight but which nevertheless are
relevant when evaluating likelihood of confusion.
As to strength of a mark, however, registration
evidence may not be given any weight.

Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) (emphasis in
original).
Nearly all of these registrations are irrelevant.
The fact that the Office has registered such marks as
FAST TRAX SUNDAE for ice cream, FASTRAC for plastic
safety glasses, or FASTRAK for air transportation
services hardly establishes that there is no likelihood
of confusion in this case.
Applicant specifically points to six of these
registrations on pages 5-6 of its brief as apparently the
most relevant ones. Even here, these few registrations
are easily distinguished on their face. Vehicle
Opposition Nos. 110,976 and 111,126
17
repossession services, educational seminars, software for
inventory management or banking regulation compliance,
and mortgage processing all seem to be sufficiently
distinct from applicant’s and opposer’s services.
Furthermore, applicant has presented no evidence that
these marks have actually been used and the presence of
these third-party registrations in the record does not
support the registration of other marks when the marks in
this case are virtually identical and the services are
related. Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618, 1622 (TTAB 1989) (“Third-party
registrations are of little weight in determining
likelihood of confusion. They are not evidence of use of
the marks shown therein and they are not proof that
consumers are
familiar with them so as to be accustomed to the
existence of similar marks in the market place”)5.

5 To the extent that applicant alleges that the term FASTRAC is
merely descriptive, we note that opposer’s registration is over
five years old and thus, even if a cancellation proceeding were
filed, the registration could not be attacked on the ground of
descriptiveness. 15 U.S.C. § 1064(3). Second, even if we were
only addressing the issue regarding opposer’s common law rights,
we do not find that opposer’s witness has admitted that the term
is descriptive. See Applicant’s Br., p. 9; Speizer testimony
dep., pp. 71. Finally, applicant has not pointed to any other
evidence in the record that would support a finding that the
term is merely descriptive.
Opposition Nos. 110,976 and 111,126
18
The purchasers of opposer’s services identified by
its common law FASTRAC mark are not limited to financial
institutions. Applicant’s Br., p. 15. Even though the
people who actually purchase opposer’s services
identified in its registration would likely be
sophisticated purchasers of such services, opposer has
established that it also uses its mark in connection with
claim processing, which would be similar to applicant’s
services.
Because applicant and opposer are both involved in
processing claims and interacting with the public, we
cannot discern significant differences in the channels of
trade or the prospective purchasers, which, if present,
would be factors indicating that confusion is unlikely.
Finally, we address applicant’s other arguments that
confusion is unlikely. Applicant argues that the lack of
actual confusion over a three year period should be
“persuasive of the conclusion that there is no likelihood
of confusion.” Applicant’s Br., p. 17. The absence of
actual confusion does not mean that there is no
likelihood of confusion. Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed.
Cir. 1983); J & J
Opposition Nos. 110,976 and 111,126
19
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991). This factor is
particularly less important in this case where applicant
has not submitted any evidence regarding the nature and
the extent of the use of its mark. Applicant also
contends that opposer’s evidence of fame has not
established that opposer’s mark has achieved widespread
recognition and renown. While we agree with applicant’s
point, we note that fame is not required to find
confusion in this case.
Likelihood of confusion is decided upon the facts of
each case. Dixie Restaurants, 105 F.3d 1405, 1406, 41
USPQ2d 1531, 1533 (Fed. Cir. 1997); Shell Oil, 992 F.2d
at 1206, 26 USPQ at 1688. 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, the marks of the parties are virtually
identical. The services of both parties are in the field
of insurance. Opposer has served as applicant’s agent
and provided claims processing services under the trade
name for its subsidiary Fastrac Services Inc. Insurance
Agent and Broker. Opposer has established that it uses
Opposition Nos. 110,976 and 111,126
20
its mark FASTRAC outside the mortgage lender field, e.g.
it is also used for car and boat leasing. Applicant’s
identification of services encompasses processing
insurance claims via a 24-hour insurance claim and
accident reporting hotline for automobile claims. The
record supports a conclusion that the services are
related.
While we have considered the lack of actual
confusion, the third-party party registrations, and the
differences in the marks and the services, we find these
factors are outweighed by the similarities of the marks
and services.
Decision: The oppositions are sustained and
registration to applicant of the marks in each of its two
applications is refused.