Grange Insurance Assn.

Trademark Trial and Appeal Board

Aug 26, 2003

No. 76279718 (T.T.A.B. Aug. 26, 2003)

Mailed: 8/26/2003
Paper No. 9
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Grange Insurance Association
________
Serial No. 76/279,718
_______
Claire Foley of Christensen O’Connor Johnson Kindness,
PLLC, for Grange Insurance Association.
Eugenia K. Martin, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Cissel, Seeherman and Rogers, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 3, 2001, applicant, a corporation organized
and existing under the laws of the state of Washington,
filed the above-identified application to register the mark
GRANGE INSURANCE GROUP on the Principal Register for
“insurance underwriting services, in International Class
36.” Applicant claimed use of the mark in commerce in
connection with these services since 1978.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/279,718
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act based on four registered
service marks, all of which are now owned by Grange Mutual
Casualty Company, an Ohio corporation. The cited
registered marks are shown below:
is registered on the Principal Register for “life insurance
underwriting services”;1
is registered for “insurance underwriting services in the
field of property, casualty, life, accident and health”;2
1 Reg. No. 1,636,326, issued on February 26, 1991. Originally
owned by Grange Life Insurance Company, but assigned to Grange
Mutual Casualty Company. The registration includes a disclaimer
of “LIFE INSURANCE” apart from the mark as shown. Affidavits
under Sections 8 and 15 accepted and acknowledged; renewed on
June 12, 2001.
2 Reg. No. 1,663,622, issued on November 5, 1991. The
registration includes a disclaimer of “INSURANCE” apart from the
marks shown. Affidavits under Sections 8 and 15 accepted and
acknowledged.
Ser No. 76/279,718
3
is registered for “life insurance underwriting services”;3
and
is registered for “insurance underwriting services, namely,
property, casualty, life, accident, and health insurance
underwriting services.”4
In addition to refusing registration based on the
likelihood of confusion with these four registered marks,
the Examining Attorney addressed several informalities,
including the indefinite nature of the recitation of
3 Reg. No. 1,604,932, issued on July 3, 1990. Originally owned
by Grange Life Insurance Company, but assigned to Grange Mutual
Casualty Company. The registration includes a disclaimer of
“LIFE INSURANCE” apart from the mark as shown. Affidavits under
Sections 8 and 15 accepted and acknowledged; renewed on Nov. 16,
2000.
4 Reg. No. 1,535,724, issued on April 18, 1989. The registration
contains a disclaimer of “INSURANCE” apart from the mark as
shown. Affidavits under Sections 8 and 15 accepted and
acknowledged.
Ser No. 76/279,718
4
services in the application, as filed, and the requirement
for applicant to disclaim the term “insurance group” apart
from the mark as shown.
Applicant responded to the first Office Action by
amending the recitation of services to read as follows:
“property and casualty insurance underwriting services.”
Applicant also disclaimed the term “insurance group” apart
from the mark as shown.
In addition, applicant argued that the refusal to
register under Section 2(d) of the Act was not well taken.
Applicant based its argument on the contention that the
mark it seeks to register is not similar to any of the four
cited registered marks because the disclaimed word
“INSURANCE” in these marks does not indicate source, and
therefore cannot be the basis for any confusion, and
applicant has the right to use the term “Grange” by virtue
of a license from The National Grange of the Order of
Patrons of Husbandry (NATIONAL GRANGE). Applicant
submitted a dictionary definition of “Grange” as “an
association of farmers founded in the United States in
1867.”5 Applicant stated that its “roots stem from” this
organization.
5 The American Heritage College Dictionary, Third Edition, p.
592.
Ser No. 76/279,718
5
A copy of the license agreement was submitted. It is
dated August 1, 2001, less than a month after the filing
date of the application to register the mark. In the
agreement, for the sum of one dollar, The National Grange
of the Order of Patrons of Husbandry grants applicant the
non-exclusive, non-transferable right to use in perpetuity
the “name” “Grange,” which applicant acknowledges is a
registered trademark of the licensor.
The Examining Attorney accepted the amendment to the
recitation of services and the disclaimer, but continued
and made final the refusal to register based on likelihood
of confusion. She contended that the marks are similar
because each is dominated by the word “GRANGE,” and the
services with which the marks are used are the same. She
did not respond to applicant’s argument based on its
license agreement with National Grange.
Applicant timely filed a Notice of Appeal, which was
followed by applicant’s appeal brief. The Examining
Attorney then filed her brief on appeal, but applicant
neither filed a reply brief nor requested an oral hearing
before the Board.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E.I. du
Ser No. 76/279,718
6
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, pronunciation, meaning and
commercial impression and the similarity of the goods or
services.
“When marks would appear on virtually identical goods
or services, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ 6098, 1700 (Fed. Cir. 1982).
In that the cited registrations and the application are all
for insurance underwriting services, and Registration No.
1,535,724 encompasses the property and casualty insurance
underwriting services identified in applicant’s
application, the degree of similarity between the marks
necessary to support the conclusion of likely confusion is
less than would be the case if the services were not the
same.
The marks in the application and the cited
registrations easily meet this level of similarity because
each is dominated by the same word, “GRANGE.” It is well
settled that although we must consider the marks in their
entireties, it is nonetheless reasonable to consider
whether some components of the marks have more source-
Ser No. 76/279,718
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identifying significance than others. Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976);
In re El Torito Restaurants Inc., 90 USPQ2d 2002 (TTAB
1988). Descriptive, disclaimed matter is typically less
significant than other components of marks which combine
descriptive terminology with other elements. Similarly,
design features generally are accorded less significance
than the literal elements with which they are combined
because the word portion is more likely to be recalled and
used in calling for or recommending the goods or services.
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
The likely recollection of the average purchaser of the
respective goods is what must be considered in resolving
the issue of likelihood of confusion. Spoons Restaurants,
Inc. v. Morrison, Inc., 23 USPQ 71735 (TTAB 1991); and In
re Steury Corp., 189 USPQ 353 (TTAB 1975). Such a person
may not possess perfect recollection, nor will he or she
necessarily be confronted by both marks simultaneously so
that a side-by-side comparison can be conducted. See: In
re Continental Graphics Corp., 52 USPQ 1374 (TTAB 1999).
Application of these principles to the facts presented
by the instant application leads us to agree with the
Examining Attorney that confusion is likely in this case.
The dominant element in applicant’s mark and in each of the
Ser No. 76/279,718
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cited registered marks is the word “GRANGE.” The
descriptive terms with which “GRANGE” is combined,
“INSURANCE GROUP” and “LIFE INSURANCE,” as well as the
suggestive slogan, “YOUR PARTNER IN PROTECTION,” and the
flag design which appears in each of the registered marks,
have less source-identifying significance than the word
“GRANGE,” which appears in much larger print and has no
demonstrated descriptive or suggestive connotation.
The registered marks and applicant’s mark create
similar commercial impressions because each is dominated by
the same word, “GRANGE.” When these similar marks are used
in connection with the same services, confusion is plainly
likely.
Applicant’s arguments that confusion is not likely
because of its license agreement with National Grange and
because no incidents of actual confusion between its mark
and the marks of the registrant have not come to its
attention are not persuasive of a different result in this
case.
It is well settled that actual confusion does not need
to have taken place in order for us reasonably to conclude
that confusion is likely. Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990). Moreover, in the instant case, we have no evidence
Ser No. 76/279,718
9
as to the nature or extent of the uses of the marks in
question by either applicant or the owner of the cited
registrations, so we do not know whether there has even
been any real opportunity for such confusion to have
arisen. Applicant’s argument that the use of its mark has
not resulted in confusion with the registered marks plainly
does not mandate a finding that confusion is not likely.
The argument predicated on the license to use “the
name” “Grange” is not well taken either. As noted above,
applicant’s claims that its “roots” “stem from” the
National Grange were never fully explained, nor were
applicant’s arguments that it has used the word since 1932
and that it owns registrations for marks which include the
term substantiated with any evidence. Applicant did not
claim ownership of any registrations for related marks in
the application, nor did applicant amend the application to
do so. Of even more significance, however, is the fact
that applicant did not explain (nor did the Examining
Attorney question) what relationship, if any, the National
Grange has with the owner of the cited registrations. On
its face, the license to use “Grange” is not an agreement
with the owner of the cited registrations, so it does not
appear to have any bearing on the issue before us, whether
confusion is likely with the marks shown in the cited
Ser No. 76/279,718
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registrations, which are not even mentioned in the license.
Applicant has not shown that the National Grange (and,
derivatively, applicant) has superior rights in GRANGE for
insurance underwriting services. Moreover, even if
applicant could demonstrate such rights, we must still
accord the registrations the benefits of Section 7(b) of
the Trademark Act, namely, that “a certificate of
registration of a mark upon the principal registrer
provided by this Act shall be prima facie evidence of the
validity of the registered mark and of the registration of
the mark, of the registrant’s ownership of the mark, and of
the registrant’s exclusive right to use the registered mark
in commerce on or in connection with the goods or services
specified in the certificate, subject to any conditions or
limitations stated in the certificate.”
DECISION: The refusal to register under Section 2(d)
of the Act is affirmed.