General Electric Capital Assurance Co.

Trademark Trial and Appeal Board

Sep 11, 1998

No. 74553068 (T.T.A.B. Sep. 11, 1998)

Paper No. 20
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 11, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re General Electric Capital Assurance Company
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Serial No. 74/553,068
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Faye L. Mattson and James R. Uhlir of Christensen, O’Connor,
Johnson & Kindness for applicant.
Darlene Bullock, Trademark Examining Attorney, Law Office 101
(Chris Wells, Managing Attorney).
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Before Simms, Cissel, and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
An application has been filed by General Electric Capital
Assurance Company to register the mark SOLUTION for
underwriting annuities.1
Registration has been finally refused under Section 2(d)
of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with its

1 Application Serial No. 74/553,068, filed July 25, 1994 claiming
first use and first use in commerce at least as early as May 2,
1994.
Ser. No. 74/553,068
2
services, so resembles the marks in four registrations, all
issued to Hartford Life Insurance Company, as to be likely to
cause confusion, or to cause mistake, or to deceive.2 The
four registered marks are THE SOLUTION for life insurance
underwriting services;3 THE CHARITABLE SOLUTION (CHARITABLE
disclaimed) for underwriting life insurance;4 SOLUTIONVI, as
shown below,
for life insurance underwriting services;5 and THE
SOLUTIONFAMILY, as shown below,
for life insurance underwriting services.6 Applicant has
appealed. Both applicant and the Examining Attorney have

2 The Examining Attorney also cited four additional registrations
issued to Hartford Life Insurance Company, but they have since been
canceled under the provisions of Section 8 of the Act, 15 U.S.C.
§1058. The four canceled registrations are Registration No.
1,604,037, issued June 26, 1990 for the mark THE INVESTMENT SOLUTION
(INVESTMENT disclaimed) for life insurance and annuity underwriting
services; Registration No. 1,642,287, issued April 23, 1991 for the
mark SOLUTIONFOUR for life insurance underwriting services;
Registration No. 1,642,288, issued April 23, 1991 for the mark
SOLUTIONFIVE for life insurance underwriting services; and
Registration No. 1,642,289, issued April 23, 1991 for the mark
SOLUTIONVII for life insurance underwriting services.
3 Registration No. 1,296,804, issued September 18, 1984; affidavit
Sec. 8 accepted; affidavit Sec. 15 received.
4 Registration No. 1,651,671, issued July 23, 1991; affidavit Sec. 8
accepted; affidavit Sec. 15 received.
5 Registration No. 1,643,003, issued April 30, 1991; affidavit Sec.
8 accepted; affidavit Sec. 15 received.
6 Registration No. 1,643,006, issued April 30, 1991; affidavit Sec.
8 accepted; affidavit Sec. 15 received.
Ser. No. 74/553,068
3
briefed the issues before us.7 Applicant did not request an
oral hearing.
This appeal is very similar in many respects to the
appeal in S.N. 74/560,083, decided on August 26, 1998, wherein
the Board affirmed the refusal to register applicant’s mark
“SOLUTION PLUS” for “underwriting annuities” based on the
likelihood of confusion with, inter alia, the marks in the
same registrations listed above. Our opinion in that appeal
is incorporated herein by reference, and a copy of it is
attached for convenience. The same reasoning and the same
responses to the same arguments made by applicant apply to the
instant appeal.
Confusion is likely in the case at hand for the reasons
it was in that case, namely, because the services set forth in
the cited registrations are closely related and the marks
create similar commercial impressions. Confusion is even more
likely in the instant case because the mark in this
application is only the one word, “SOLUTION,” instead of the
two word term, “SOLUTION PLUS,” as it was there. Applicant’s

7 With its reply brief, applicant filed a proposed amendment to its
identification of services and a request for remand to the Examining
Attorney for consideration of the proposed amendment. Applicant
sought thereby to amend its identification to read underwriting
annuities, namely, single premium deferred annuities and single
premium income annuities. The Board, in an action mailed March 27,
1997, denied the request for remand, essentially because the
proposed amendment would be futile. We add that our decision on the
issue of likelihood of confusion presented herein would be the same
even if we considered applicant’s identification of services to be
amended as requested.
Ser. No. 74/553,068
4
mark “SOLUTION” is even less distinguishable from the
registered mark “THE SOLUTION” than “SOLUTION PLUS” is.
Decision: The refusal to register based on Section 2(d)
of the Lanham Act is affirmed.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademark Judges
Trademark Trial & Appeal Board