First Niagara Insurance Brokers, Inc.v.First Niagara Financial Group, Inc.

Trademark Trial and Appeal Board

Jun 6, 2007

No. 91122450 (T.T.A.B. Jun. 6, 2007)

Mailed: June 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

First Niagara Insurance Brokers, Inc.
v.
First Niagara Financial Group, Inc.
_______

Opposition Nos. 91122072, 91122224, 91122193, 91122450,
91122712, 911502371

ON REMAND
From
Court of Appeals for the Federal Circuit
_______

George Gottlieb and Barbara Loewenthal of Gottlieb,
Rackman & Reisman for First Niagara Insurance Brokers,
Inc.

Paul I. Perlman and David L. Principe of Hodgson Rush
for Niagara Bancorp.
_______

Before Sams, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

First Niagara Insurance Brokers, Inc. filed its
oppositions, based on priority and likelihood of

1 These six oppositions were consolidated by the Board’s order of
June 12, 2002.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
2
confusion, to the applications of First Niagara
Financial Group, Inc. listed infra. On October 21,
2005, the Board issued its decision (77 USPQ2d 1334)
dismissing the oppositions and concluding that opposer
had not established use of its pleaded marks on
insurance brokerage services rendered in a type of
commerce regulable by Congress and that, therefore,
opposer could not establish its priority and could not
prevail on its claim of likelihood of confusion.
Opposer sought review of the Board’s decision
before the Court of Appeals for the Federal Circuit
(Case No. 06-1202). On January 9, 2007, the Court
issued a decision (476 F.3d 867, 81 USPQ2d 1375)
finding that “[t]he record unquestionably reveals more
than ample use of [opposer’s] marks in the United
States to satisfy the use requirements of Section
2(d)”2 (id. at 1378) and reversing and remanding the
Board’s decision “for further proceedings consistent
with this opinion” (id.).
Applicant’s Motion for Additional Briefing and Argument
Following the Court’s decision, applicant filed
with the Board its motion for permission for additional

2 The Court concluded that the Board incorrectly assumed that
opposer needed to establish use of its marks in connection with
services rendered in commerce lawfully regulated by Congress;
rather, “a foreign opposer can present its opposition on the
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
3
briefing and oral argument regarding likelihood of
confusion, and opposer filed its opposition to the
motion.3 Applicant acknowledges that the parties
previously briefed the issues of priority and
likelihood of confusion and contends that, at oral
argument, the Board’s questioning “focused almost
exclusively on the first issue, whether [opposer] had
established use of its mark in commerce”; that the
Board did not address the issue of likelihood of
confusion in its decision; and that the court “did not
disturb any of the factual findings contained in the
Board’s decision” (motion brief at 2-3). Thus,
applicant seeks further briefing “to discuss how the
Board’s previous factual findings … affect the
application of the du Pont factors” (id. at 4) and
requests further oral argument to allow the Board to
question the parties on the issue of likelihood of
confusion.
Applicant’s motion is denied. We agree with
opposer that there is no requirement in the Federal
Rules, Board Rules or precedent for additional briefing
or oral argument when the Federal Circuit reverses and
remands a decision of the Board. Further, both

merits by showing only use of its mark in the United States”
(supra at 1378).
3 Applicant also filed a reply brief, which we have considered.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
4
parties’ briefs on the case included discussion of the
issue of likelihood of confusion and both parties had
an opportunity to address the issue of likelihood of
confusion at the oral argument on the case. Similarly,
there is also no requirement in rules or precedent for
briefing by the parties on the Board’s factual findings
from its earlier decision prior to the Board’s
consideration of the issues on remand from the Court.
The Board, in its earlier decision, already permitted
the parties to exceed the briefing page limits and we
do not find additional briefing or argument to be
necessary.
Priority and Likelihood of Confusion Analysis
We now proceed to a determination of the issue of
priority and likelihood of confusion on the merits,
based on the opinion of the Court remanding this case
to the Board.
As stated in our earlier decision, the
consolidated oppositions pertain to the following
applications:
Application No. 75890902
Opposition No. 91122072
Mark: FIRST NIAGARA
Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance
services, namely, insurance brokerage,
insurance agencies, insurance
administration and insurance
consultation, in the fields of life,
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
5
property and casualty, accident, health
and other insurance; credit insurance
services; financial services, namely,
financial and investment consulting,
management and advisory services;
investment and securities brokerage
services; providing information on
investment and securities performance;
annuities services; charitable fund
raising services
IC 037: leasing of construction equipment
and building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST

Application No. 75891547
Opposition No. 91122224
Mark: FIRST NIAGARA FINANCIAL GROUP
Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance
services, namely, insurance brokerage,
insurance agencies, insurance
administration and insurance
consultation, in the fields of life,
property and casualty, accident, health
and other insurance; credit insurance
services; financial services, namely,
financial and investment consulting,
management and advisory services;
investment and securities brokerage
services; providing information on
investment and securities performance;
annuities services; charitable fund
raising services
IC 037: leasing of construction equipment
and building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST and FINANCIAL GROUP

Application No. 75890903
Opposition No. 91122193
Mark:
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
6

Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance services,
namely, insurance brokerage, insurance
agencies, insurance administration and
insurance consultation, in the fields of
life, property and casualty, accident, health
and other insurance; credit insurance
services; financial services, namely,
financial and investment consulting,
management and advisory services; investment
and securities brokerage services; providing
information on investment and securities
performance; annuities services; charitable
fund raising services
IC 037: leasing of construction equipment and
building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST

Application No. 76004229
Opposition No. 91122450
Mark: FIRST NIAGARA ONLINE
Services:
IC 036: banking services, namely,
providing electronic banking services to
customers via a global computer network
Filing Date: March 20, 2000
Basis: 1b
Disclaimer: ONLINE

Application No. 76029614
Opposition No. 91122712
Mark: FIRST NIAGARA BANK'S CUSTOMER CONNECTION
LINE
Services:
IC 036: retail banking services
Filing Date: April 18, 2000
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
7
Basis: 1b
Disclaimer: BANK’S and LINE

Application No. 76005479
Opposition No. 91150237
Mark: FIRST NIAGARA E-CD
Services:
IC 036: banking services, namely, providing
electronic banking services to customers via
a global computer network
Filing Date: March 20, 2000
Basis: 1b
Disclaimer: E-CD

The oppositions are based, as noted in the Board’s
earlier decision, on opposer’s claim of likelihood of
confusion with its previously used marks FIRST NIAGARA
and FIRST NIAGARA INSURANCE BROKERS, in standard
character format, and FIRST NIAGARA INSURANCE BROKERS
INC., in the design format shown below (“FIRST NIAGARA
marks”), for “insurance brokerage services and other
financial services.”

Applicant, in each of its answers, denied the
salient allegations of the claim and, in Opposition No.
91122072 only, pertaining to the standard character
mark FIRST NIAGARA, applicant admitted that “to the
extent that opposer uses FIRST NIAGARA as a trademark,
FIRST NIAGARA is identical to” the mark FIRST NIAGARA
that applicant seeks to register. Applicant’s
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
8
affirmative defense regarding opposer’s use of its
marks in commerce is now moot and has been given no
further consideration in view of the Court’s
determination that such use in not necessary to support
a claim of likelihood of confusion under Section 2(d)
of the Trademark Act.
Findings of Fact
The findings of fact in the Board’s decision of
October 21, 2005, were not disturbed by the Court’s
decision and are incorporated by reference herein. We
also make the following additional findings of fact:
• Applicant chose its mark FIRST NIAGARA for banking
and financial services in December 1999 to replace
Lockport Savings Bank and Niagara Bancorp, and
first used it as a mark on January 7, 2000.
(Applicant’s Answers to Opposer’s Interrogatories
No. 4(a).)
• We take judicial notice of the commonly-known
facts that Niagara Falls is a famous waterfall
located on the U.S.-Canadian border; that the
towns of Niagara Falls and Niagara-on-the-lake are
located near Niagara Falls in Ontario, Canada; and
that the U.S. town of Niagara Falls, New York, is
located near Niagara Falls and directly opposite
the town of Niagara Falls, Ontario. (See
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
9
RoadMaster Standard Road Atlas, Barnes & Noble
Publishing Inc. & MapQuest.com, 2005.)
Priority
The Court, in its opinion, stated that “[t]he
record unquestionably reveals more than ample use of
[opposer’s] marks in the United States to satisfy the
use requirements of Section 2(d).” (81 USPQ2d 1375,
1378.) The Board has found that “[o]pposer adopted its
present name in 1984 and has used it continuously from
that date as a mark in connection with its insurance
services” (77 USPQ2d 1334, 1336); and that “[I]n
January 1999, applicant was acquired by Lockport
Savings Bank; [and] in November 2002, applicant changed
its name from Warren Hoffman Associates, Inc., to First
Niagara Risk Management, Inc., for which it obtained
approval from the New York Department of Insurance” and
it “is licensed … to offer insurance brokerage services
in New York” (id. at 1339). The earliest filing date
among applicant’s applications is January 1, 2000, for
the mark FIRST NIAGARA for insurance services, banking
and various financial services, and various leasing
services. Thus, this is the earliest date upon which
applicant can rely.
Regarding priority, in order to prevail opposer
must show not only that it has used its marks on its
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
10
services first but also that its marks are distinctive.
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990); and Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981).
The NIAGARA portion of opposer’s marks is, at
least, highly suggestive of the location of its
business. However, there is no evidence in the record
that the phrase FIRST NIAGARA is merely descriptive or
primarily geographically descriptive in connection with
opposer’s insurance services; and the record contains
letters from clients showing their clear association of
the pleaded marks with the source of opposer’s
insurance services. Additionally, applicant does not
argue that opposer’s marks are not inherently
distinctive. Therefore, whether inherent or acquired,
opposer has established the distinctiveness of its
marks in connection with its services.
The same evidence clearly establishes opposer’s
priority of use of each of its pleaded marks in
connection with its insurance services since long prior
to the earliest filing date of the opposed intent-to-
use applications.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
11
Likelihood of Confusion
Our determination of likelihood of confusion
under Section 2(d) must be 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. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 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). See also In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The Marks
We turn, first, to the marks of the parties,
noting that opposer has three marks and applicant has
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
12
six marks involved herein. Opposer’s three marks are
FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS INC.,
and . Applicant’s six marks are FIRST
NIAGARA (disclaimer of FIRST4), FIRST NIAGARA FINANCIAL
GROUP (disclaimer of FIRST and FINANCIAL GROUP), FIRST
NIAGARA ONLINE (disclaimer of ONLINE), FIRST NIAGARA
BANK’S CUSTOMER CONNECTION LINE (disclaimer of BANK’S
and LINE), FIRST NIAGARA E-CD (disclaimer of E-CD), and
(disclaimer of FIRST). As discussed
below, we find that the dominant portion of each of the
parties’ marks is FIRST NIAGARA.
In determining the commercial impressions of the
marks, it is significant that each of the parties’
marks begins with the term FIRST NIAGARA. Palm Bay
Imports, Inc. v. Veuve Clicquot, supra at 1692 (“To be
sure, CLICQUOT is an important term in the mark, but
VEUVE nevertheless remains a ‘prominent feature’ as the
first word in the mark and the first word to appear on
the label. Not only is VEUVE prominent in the
commercial impression created by VCP's marks, it also

4 While three of the applications include a disclaimer of FIRST,
the other three applications do not include a disclaimer of FIRST.
We note that there is no other indication in the record that this
term is merely descriptive in connection with the identified
services and we decline to draw such a conclusion.

Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
13
constitutes “the dominant feature” in the commercial
impression created by Palm Bay's mark.”). See also
Presto Products v. Nice-Pak Products, 9 USPQ2d 1895,
1897 (TTAB 1998)(The fact that two marks share the same
first word is generally “a matter of some importance
since it is often the first part of a mark which is
most likely to be impressed upon the mind of a
purchaser and remembered.”).
It is also significant that, except for one of
applicant’s marks, the additional wording in each of
applicant’s marks is merely descriptive and has been
disclaimed. See In re Code Consultants Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (“Applicant's disclaimed wording
… while not ignored in the analysis, is highly
descriptive of applicant's services and therefore less
significant in creating the mark's commercial
impression.”). With regard to the undisclaimed
CUSTOMER CONNECTION portion of applicant’s mark FIRST
NIAGARA BANK’S CUSTOMER CONNECTION LINE, the term
CUSTOMER CONNECTION is part of the larger phrase
CUSTOMER CONNECTION LINE and, as such, it is likely to
be perceived as suggesting an important feature of the
identified “retail banking services,” i.e., customer
service, and, thus it is less significant than the
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
14
initial term FIRST NIAGARA in creating the commercial
impression of the mark.
The additional wording in opposer’s marks is also
merely descriptive, if not generic and, as such, it is
less likely to be relied upon by prospective purchasers
to distinguish the sources of the goods and services.
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 USPQ 749, 752 (Fed. Cir.
1985) (“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.’”). The phrase INSURANCE
BROKERS INC. in opposer’s mark FIRST NIAGARA INSURANCE
BROKERS INC. identifies opposer as a business entity
(INC.) and names the exact nature of opposer’s business
(INSURANCE BROKERS).
Applicant’s design mark consists of the words
FIRST NIAGARA in a nondistinctive script with a smaller
design, in an oval, that is likely to be perceived as
suggesting the waterfall at Niagara Falls, and
essentially reinforces the connotation of the word
NIAGARA in the mark. Design elements such as those
appearing in applicant's mark are generally less
important than the word portion of the mark in creating
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
15
an impression. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987), and cases cited therein.
A similar analysis applies to opposer’s design
mark consisting of the words FIRST NIAGARA INSURANCE
BROKERS INC. in non-distinctive script with a design in
an oval that also is likely to be perceived as
suggesting the same waterfall, i.e., Niagara Falls.
Again, the design is likely to be perceived as
reinforcing the connotation of the word NIAGARA in the
mark. While the word INSURANCE is the same size and
font as FIRST NIAGARA, it appears below FIRST NIAGARA,
which is together on one line, and INSURANCE is a
generic term in connection with the insurance services
rendered. FIRST NIAGARA remains the dominant portion
of this mark as well.
Comparing the parties’ marks, applicant accurately
concedes that the mark FIRST NIAGARA in its Application
Serial No. 75890902 is identical to opposer’s FIRST
NIAGARA mark. We also find that applicant’s mark FIRST
NIAGARA is substantially similar to opposer’s marks
FIRST NIAGARA INSURANCE BROKERS INC., both as a word
mark and in its design format, in view of the dominance
of FIRST NIAGARA in opposer’s marks. See CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) “([M]inor design features do not necessarily
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
16
obviate likelihood of confusion arising from
consideration of the marks in their entireties.
Moreover, in a composite mark comprising a design and
words, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it
is affixed”).
We reach the same conclusion with regard to
applicant’s additional five marks. We find that the
dominant portion, FIRST NIAGARA, of opposer’s marks is
identical to the dominant portion, FIRST NIAGARA, of
applicant’s marks; that the overall commercial
impressions of the marks are substantially similar; and
that, as discussed above, the additional wording and/or
design element in each party’s marks does not mitigate
this similarity. Moreover, under actual marketing
conditions, the public does not necessarily have the
opportunity to make side-by-side comparisons between
marks and, thus, minor differences between marks will
not be discerned or remembered. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
We find that, with respect to each of the opposed
applications, the factor of the similarities of the
marks weighs strongly in opposer’s favor. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993).
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
17
The Services
1. Application Serial Nos. 75890902, 75891547,
75890903 (“the insurance and leasing services
applications”).
First, we consider the three applications
containing numerous services in International Class 36
and various leasing services in other International
Classes. The record establishes that both parties
render insurance brokerage, agency, administration and
consultation services across a full range of personal
and commercial insurance products. We find that the
parties’ insurance-related services are identical.
Having found identity with one of applicant’s services
recited in International Class 36 in the insurance and
leasing services applications, it is not necessary to
consider the relationship, if any, of opposer’s
services to the other services identified in
International Class 36 in these applications. Thus,
this factor weighs strongly in opposer’s favor with
respect to the identified services in International
Class 36 in these three applications.
The identifications of services in these same
three applications also include the leasing of office
equipment in International Class 35, the leasing of
construction equipment and building machinery in
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
18
International Class 37, and the leasing of motor
vehicles in International Class 39. There is no
evidence in the record that opposer renders such
services or that the insurance services opposer does
render are sufficiently related to these identified
leasing services that confusion as to source would be
likely if these services of the respective parties were
identified by similar marks. In fact, there is no
evidence at all with respect to any relationship
between insurance services and the identified leasing
services. Thus, this factor weighs in applicant’s
favor for the identified services in International
Classes 35, 37 and 39 in these three applications.
2. Application Serial Nos. 76029614, 76004229 and
76005479 (“the banking services
applications”).
Next, we consider the services in the remaining
three applications, which include only banking services
in International Class 36. Application Serial No.
76029614 identifies services in International Class 36
that are broadly worded and, thus, pertain to all
“retail banking services.” Application Serial Nos.
76004229 and 76005479 identify services in
International Class 36 that are broadly worded and,
thus, pertain to all “… electronic banking services to
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
19
customers via a global computer network.” To the
extent that opposer renders “other financial services”
as pleaded, the record indicates that such services are
essentially aspects of its insurance services, such as
the sale of annuities contracts.
Regarding the banking services applications,
opposer contends that “it is well established that
‘banking services’ are related to insurance services,”
(brief, p. 37), citing In re United California Brokers,
Inc., 222 USPQ 361 (TTAB 1984) and John Hancock Mutual
Life Insurance Co. v. John Hancock Mortgage of Ill.,
219 USPQ 91 (N.D. Ill. 1982). Neither case is directly
analogous to the cases herein, nor do these cited cases
establish a per se rule that banking services are
related to insurance services. Rather, we must
consider the specific banking services recited in each
of the banking services applications and the services
in connection with which opposer has shown use of its
marks.
In the United California Brokers case cited by
opposer, the Board affirmed a Section 2(d) refusal,
finding a relationship between applicant’s services,
identified as “brokerage services in the field of real
estate, insurance, agricultural commodities, stocks and
bonds, mortgages and loans and other personal property”
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
20
and the registrant’s “banking services.” The Board
noted that “while bank services do differ in many
respects from those provided by applicant, we find the
common involvement of banks and of applicant's type of
brokerage enterprise with mortgages and loans to be a
sufficient area of overlap to permit characterization
of the services of applicant and registrant as so
related that use of identical or highly similar marks
in connection therewith would be likely to generate
confusion.” (222 USPQ 361 at 362.) Opposer has not
established an analogous “common involvement” between
its insurance services and the banking services
identified in the three applications herein.
In the John Hancock case cited by opposer, the
court found defendant’s intent to trade on plaintiff’s
well known mark to be most significant, stating that
“in conjunction with its insurance business plaintiff
has made first mortgages throughout this country since
at least 1953, … [with] its most prominent mortgage
venture here [being] the John Hancock building in
Chicago” (219 USPQ 91 at 92); and that “the evidence
suggests that the name was adopted [by defendant]
deliberately to obtain some advantage from the goodwill
plaintiff had created, and that any future competitive
use will occur in the context of plaintiff's
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
21
substantial mortgage activities in Illinois” (id. at
93). Opposer has established neither the renown of its
mark comparable to the John Hancock mark in the cited
case, nor an intent of applicant to trade on any
goodwill that opposer may have developed in its marks
in connection with insurance services in the United
States.
Opposer also argues that “it is irrelevant that,
in addition to providing insurance services,
[applicant] lists additional financial services in some
of its applications … [because] so long as the junior
user’s description of goods or services overlaps with
the senior user’s goods or services as it does here,
the goods’ similarity will weigh in favor of finding
likelihood of confusion” (id.), citing Jay-Zee, Inc. v.
Hartfield-Zodys, Inc., 207 USPQ 269, 272 (TTAB 1980).
Opposer’s attempt to apply this principle to the
leasing services in the insurance and leasing services
applications, or to the banking services applications
is misplaced. The principle enunciated in the Jay-Zee
case is inapplicable either to the leasing services,
which are in different International Classes and which
are treated as being legally separate applications,
from the insurance services in the insurance and
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
22
leasing services applications, or to the services
identified in the banking services applications.
The Jay-Zee case was a cancellation proceeding
wherein petitioner established use of its mark in
connection with various clothing items, including sport
shirts for young and teenaged boys; and the goods
identified in respondent’s registration were “men’s and
boys’ sport shirts.” The Board found that there was a
likelihood of confusion due to the similarities between
the marks and the overlapping nature of “boys sport
shirts,” in respondent’s registration, and “young and
teenaged boys” sport shirts manufactured by petitioner;
and that it was irrelevant that respondent’s goods
included, in the same class, “men’s” sport shirts
(which petitioner did not manufacture). In the case
before us, opposer must prove a relationship between
its insurance services and applicant’s identified
leasing services in the insurance and banking services
applications and applicant’s identified banking
services in the banking services applications, which do
not include insurance services in the recitations.
Regarding the banking services in these three
applications, we find insufficient evidence in the
record to establish a connection between opposer’s
insurance services and either applicant’s retail
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
23
banking services or its “… electronic banking services
to customers via a global computer network.” Opposer’s
testimony that it sells annuity contracts as part of
its insurance business was vague, with no details as to
the number of such contracts, the percentage of its
business devoted to such sales, or whether or to what
extent sales of annuity contracts would be related in
any manner to applicant’s identified banking services.
Nor does the fact that applicant seeks to register its
mark for both insurance and banking services require,
without more evidence, a conclusion that the services
are related such that confusion would be likely. Thus,
this factor weighs in applicant’s favor for the
identified banking services in International Class 36
in these three applications.
Actual Confusion
Opposer asserts that the record contains
significant evidence of actual confusion with respect
to the source of the parties’ insurance services,
noting that from July 2000 to July 2002 opposer
received 2600 emails intended for applicant; and that
this actual confusion weighs strongly in its favor.
Applicant admitted that it was aware that its
clients, believing that opposer was applicant, had
mistakeningly sent emails to opposer. (Opposer’s
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
24
notice of reliance on applicant’s response to opposer’s
request for admissions, no. 81.) However, applicant
contends that the misdirected emails are explained by
the similarities in the parties email addresses rather
than any confusion as to the source of the parties’
insurance services, i.e., opposer’s domain name and
address is “firstniagara.com” and applicant’s domain
name and address is “first-niagara.com.”
While concurrent use of confusingly similar marks
over a period of time in the same geographic area
without any evidence of actual confusion may weigh
against a holding of likelihood of confusion, see, G.
H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292,
16 USPQ2d 1635 (Fed. Cir. 1990), "[a] showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion." In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 1317, 65
U.S.P.Q.2d 1201, 1205 (Fed. Cir. 2003). See also 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 23:13 at 23-35.
Facts characterized as evidencing actual confusion
must be viewed in the context of the entire factual
record. In some cases the proposed instances of actual
confusion may be de minimis, vague, or represent
confusion due to some factor other than any
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
25
similarities in the marks. See, e.g., Nautilus Group
Inc. v. ICON Health and Fitness Inc., 372 F3d 1330, 71
USPQ2d 1173, 1179-1180 (Fed. Cir. 2004)[number of
misdirected phone calls too small and too many
ambiguities as to cause of confusion, i.e., similarity
of marks versus similarity of products, to establish
actual confusion]; and Lang v. Retirement Living
Publishing Co., 949 F. 2d 576, 21 U.S.P.Q.2d 1041, 1046
(2d Cir. 1991), [actual confusion demonstrated in
record, i.e., 400 misdirected phone calls, was not
material in view of the factual circumstances; and no
evidence that this confusion could inflict commercial
injury in the form of either a diversion of sales,
damage to goodwill, or loss of control over
reputation].
In the cases before us, in view of the fact that
both parties are relatively small local businesses, the
number of misdirected emails is significant. However,
this problem occurred during a two-year period
commencing shortly after opposer implemented its new
email system using the “firstniagara.com” domain name
(Exh. 55 to Michael Maves Testimony), and it is clear
that the parties have substantially similar domain
names and addresses. There is only one keystroke
difference in these addresses, so at least some of the
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
26
errors are likely to be attributable to typing error.
A review of the sample emails (Exh. 56 to Michael Maves
Testimony) shows that all were addressed to specific
individuals within applicant’s company and the text of
the emails referenced, for example, follow-ups to
meetings that occurred between the email sender and
applicant or inquiries about job openings advertised by
applicant. None were individuals or businesses in
search of insurance policies.
Both parties acknowledge that no policies were
actually written as a result of any confusion that has
occurred. Moreover, opposer is not licensed to render
insurance services in New York State or any of the
United States, nor is applicant licensed to render
insurance services in Canada. Thus, although the
parties offer the identical insurance services, the
geographic scope of those services is not overlapping,
and the opportunity for more than even initial interest
confusion is extremely limited.5 This lack of
commercial injury or opportunity for such is not
dispositive per se, but it is a significant factor in
this particular highly regulated industry.

5 We note that such an opportunity is not entirely absent because
opposer, upon being mistakenly contacted by applicant’s potential
client, could refer this client to a New York licensed insurance
broker other than applicant for an insurance policy on persons or
property with a nexus in New York state, or vice versa with
respect to applicant.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
27
Thus, while we find that the actual confusion
shown in the record weighs in opposer’s favor, the
mitigating facts involved, as discussed herein, render
this factor of limited probative value.
Intent
Opposer would have us conclude that the
similarities in the marks and the geographic proximity
of the parties’ businesses to each other establish
applicant’s intent to trade on opposer’s good will.
However, as noted above, there is no evidence
indicating that applicant had such an intent, nor will
we draw this conclusion from the mere facts of both
businesses using marks strongly suggestive of their
respective geographic locations, especially where
neither party is legally authorized to do business in
the other’s territory.
Trade Channels and Classes of Purchasers
With respect to the parties’ insurance services,
we must presume that the services of opposer and
applicant are rendered in all of the normal channels of
trade to all of the usual purchasers for such services.
See Canadian Imperial Bank v. Wells Fargo, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). That is, we must
presume that the insurance services of opposer and
applicant are rendered through the same channels of
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
28
trade to the same classes of purchasers. This factor
favors opposer.
There is no evidence regarding the specific
channels of trade for applicant’s leasing and banking
services. Therefore, we draw no conclusions in this
regard.
With respect to all of the services involved,
there is no indication in the record that the relevant
public is more limited than the general public and
businesses of all types, i.e., those persons and
businesses looking for insurance, leasing and/or
banking services. Thus, the classes of purchasers
encompass persons and businesses of all levels of
sophistication. This factor weighs in favor of a
finding of likelihood of confusion. However, these
types of services are likely to be utilized with some
degree of care in view of the relative expense of
insurance, the items to be leased and banking and the
need to understand, for example, the type of insurance
or banking product one will purchase. The care with
which insurance, leasing and banking services are
likely to be purchased mitigates against likelihood of
confusion.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
29
Conclusion
Balancing the relevant du Pont factors discussed
herein, we conclude that the du Pont factors of the
similarities or dissimilarities of the respective marks
and services are most compelling. We conclude that, in
view of the substantial similarities in the commercial
impressions of opposer’s and applicant’s FIRST NIAGARA
marks, their contemporaneous use on the identical
insurance services involved in the three insurance and
leasing services applications, with the same trade
channels and classes of purchasers, is likely to cause
confusion as to the source or sponsorship of such
insurance services.
We also conclude that, despite the substantial
similarities in the commercial impressions of the
parties’ marks, opposer has not established that its
insurance services are sufficiently related to
applicant’s recited leasing and/or banking services
that confusion as to source or affiliation is likely.
Decision: Opposition Nos. 91122072, 91122224 and
91122193 to, respectively, Application Nos. 75890902,
75891547 and 75890903 (“the insurance and leasing
services applications”) are each sustained as to the
services in International Class 36, but dismissed as to
the services in International Classes 35, 37 and 39.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
30
Opposition Nos. 91122450, 91122712 and 91150237
to, respectively, Application Nos. 76004229, 76029614
and 76005479 (“the banking services applications”) are
dismissed.