General Electric Capital Insurance Co.

Trademark Trial and Appeal Board

Aug 26, 1998

No. 74560083 (T.T.A.B. Aug. 26, 1998)

Paper No. 19
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB AUG 26, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re General Electric Capital Insurance Company
________
Serial No. 74/560,083
_______
Faye Mattson of Christensen O’Connor Jonhson & Kindness,
PLLC, for General Electric Capital Insurance Company.
Darlene Bullock, Trademark Examining Attorney, Law Office
101 (Chris Wells, Managing Attorney).
_______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 11, 1994, applicant filed the above-
referenced application to register the mark “SOLUTION PLUS”
on the Principal Register for the service of “underwriting
annuities,” in Class 36. The application was based on
applicant’s claim that it had used the mark in connection
with these services in interstate commerce since May 2,
1994.
Ser No. 74/560,083
2
Registration was refused under Section 2(d) of the
Lanham Act on the ground that applicant’s mark, as used in
connection with underwriting annuities, so resembles the
marks in eight registrations on the Principal Register that
confusion is likely. The registered marks are as follows:
“THE SOLUTION FAMILY,”1 “SOLUTION VI,”2 “SOLUTION VII,”3
“SOLUTION FIVE,”4 “SOLUTION FOUR,”5 “THE CHARITABLE
SOLUTION,”6 “THE INVESTMENT SOLUTION,”7 and “THE SOLUTION.”8
All the cited registrations were owned by the same entity,
Hartford Life Insurance Company Corporation. Four of the
cited registrations were subsequently cancelled under the
provisions of Section 8 of the Act, but the registrations
for “THE SOLUTION,” “THE SOLUTION FAMILY,” “SOLUTION VI,”
and “THE CHARITABLE SOLUTION” remain in full force and

1 Reg. No. 1,643,006, issued on April 30, 1991, claiming use
since 1987. Combined affidavit filed under Sections 8 and 15.
2 Reg. No. 1,643,003, issued on April 30, 1991, claiming use
since May 8, 1989. Combined affidavit filed under Sections 8 and
15.
3 Reg. No. 1,642,289, issued on April 23, 1991, claiming use
since June 16, 1989. Cancelled under Section 8 on October 28,
1997.
4 Reg. No. 1,642,288, issued on April 23, 1991, claiming use
since July 1, 1986. Cancelled under Section 8 on October 28,
1997.
5 Reg. No. 1,642,287, issued on April 23, 1991, claiming use
since July 1, 1986. Cancelled under Section 8 on October 28,
1997.
6 Reg. No. 1,651,671, issued on July 23, 1991, claiming use since
December 4, 1989. Combined affidavit filed under Sections 8 and
15. The term “CHARITABLE” is disclaimed.
7 Reg. No, 1,604,037, issued on June 26, 1990, claiming use since
September 18, 1989. The term “INVESTMENT” is disclaimed.
Cancelled under Secion 8 on December 30, 1996.
8 Reg. No. 1,296,804, issued on September 18, 1984, claiming use
since April of 1981; combined affidavit filed under Sections 8
and 15.
Ser No. 74/560,083
3
effect. All list the services rendered thereunder as “life
insurance underwriting services.” The cancelled
registration for the mark “THE INVESTMENT SOLUTION” listed
the services of the registrant under that mark as “life
insurance and annuity underwriting services.”
When the refusal to register was made final, applicant
filed a Notice of Appeal. Both applicant and the Examining
Attorney filed briefs, but applicant did not request an oral
hearing.
Accordingly, we have resolved this appeal on the
written record and arguments. Based on careful
consideration of these materials, we find that the refusal
to register is proper in this case. Confusion is likely
because applicant’s mark, as used in connection with the
services set forth in the application, is quite similar to
several of the cited registered marks, and the services with
which these marks are used are closely related.
Turning first to the latter issue, we note that the
record in this application clearly establishes the close
relationship between underwriting annuities and underwriting
life insurance. As we noted above, one of the cited
registrations, No. 1,604,037, listed both services in the
same registration. The registrant is an insurance company,
and it underwrites not just insurance, but also annuities.
Moreover, applicant’s specimens, which are promotional
Ser No. 74/560,083
4
brochures for its own services, invite prospective customers
to contact their insurance representatives in order to find
out more about applicant’s service of underwriting
annuities. Underwriting annuities and underwriting life
insurance are closely related financial services sold to the
same people by the same people for related purposes. When
similar marks are used in connection with these activities,
confusion is likely.
Several of the marks cited as bars to registration are
similar to applicant’s mark. We need not find confusion
likely with respect to all of the cited registered marks.
It is a sufficient basis for affirming the refusal to
register if confusion is likely with respect to any of them.
See American Paging Inc. v. American Mobilphone Inc., 13
USPQ2d 2036, 2039(TTAB 1989), aff’d 17 USPQ2d 1726 (Fed.
Cir. 1990). We find confusion particularly likely between
applicant’s “SOLUTION PLUS” mark and “THE SOLUTION,” “THE
SOLUTION FAMILY,” and “SOLUTION VI.”
We note for the record that the original theory of the
Examining Attorney that the cited registrations constitute a
family of marks to which applicant’s mark would be assumed
to belong is not supported by this record. As applicant
points out, we cannot consider the different marks in the
cited registrations to be a family without evidence that
they are used and promoted as such by the registrant. In
Ser No. 74/560,083
5
the instant case, we have no proof whatsoever that this is
so.
The mark of the applicant and the marks in the cited
registrations are similar because of the prominence of the
common word “SOLUTION.” We acknowledge that this term has a
somewhat suggestive connotation in connection with the
services of underwriting life insurance and annuities, in
the sense that it suggests that the services are the answer
to the problems of the prospective purchaser of the
services, but the suggestion raised by the word is the same
in both applicant’s mark and the cited registered marks, so
applicant’s argument that the suggestive nature of the word
makes confusion less likely is not persuasive.
The word “SOLUTION” is the dominant component in
applicant’s mark, as well as in “THE SOLUTION,” “THE
SOLUTION FAMILY,” and “SOLUTION VI.” The other elements
with which the word is combined are not as significant as
“SOLUTION” is in determining the commercial impressions of
each of these marks.
A primary thrust of applicant’s argument in favor of
registration concerns a number of third-party registrations
of marks which include the word “SOLUTION” which are
registered for insurance and financial services. Applicant
contends that these registrations demonstrate that the field
is crowded with marks which include this word, such that the
Ser No. 74/560,083
6
cited registered marks are weak and entitled to only a
narrow scope of protection. Applicant argues that this does
not extend to the barring of applicant’s mark.
While the third-party registrations have been
considered, in that they help establish and confirm the
meaning or connotation of the word, they are not persuasive
proof that confusion is unlikely. In the absence of
evidence of use, they are not entitled to much weight on the
issue of likelihood of confusion. In re Hub Distributing,
Inc., 218 USPQ 284 (TTAB 1983). The registrations
themselves are not evidence of use of the marks therein, so
we cannot conclude from them that people in the consuming
public have become so familiar with marks containing
“SOLUTION” for insurance and financial services that they
look to other elements in such marks in order to distinguish
among them. Moreover, as the Examining Attorney points out,
even if applicant were to have established that the cited
marks were widely used and were in fact weak, even weak
marks are entitled to protection against registration of
similar marks for closely related services. In re National
Data Corp., 222 USPQ 515 (TTAB 1984), aff’d 224 USPQ 749
(Fed. Cir. 1985). The existence of confusingly similar
marks on the register does not mandate registration of
another mark likely to cause confusion. In re National
Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984).
Ser No. 74/560,083
7
The mark applicant has applied to register, “SOLUTION
PLUS,” is similar enough in sound, appearance and
connotation to the registered marks “THE SOLUTION,” “THE
SOLUTION FAMILY,” and “SOLUTION VI” that the commercial
impressions these marks create are all similar. When
applicant’s mark is used in connection with services as
closely related to underwriting life insurance as
underwriting annuities is, confusion is clearly likely.
Accordingly, the refusal to register under Section 2(d) of
the Act is affirmed.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 74/560,083
8