Insurance Whisperer Associates, LLC

Trademark Trial and Appeal Board

Sep 6, 2018

No. 87148238 (T.T.A.B. Sep. 6, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Insurance Whisperer Associates, LLC
_____

Serial No. 87148238
_____

Joshua A. Schaul of Sherman IP LLP,
for Insurance Whisperer Associates, LLC.
Betty Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Taylor, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Insurance Whisperer Associates, LLC (“Applicant”) seeks registration on the
Principal Register of the mark INSURANCE WHISPERER (in standard characters,
INSURANCE disclaimed) for “Insurance consulting in the field of life, long term care,
and disability insurance” in International Class 36.1

1 Application Serial No. 87148238 was filed on August 23, 2016, based upon Applicant’s
allegation of use under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming first
use anywhere and first use in commerce since at least as early as September 8, 2015.
Serial No. 87148238
- 2 -
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark in U.S. Registration No. 3603724,
HEALTHCARE WHISPERER (in standard characters, HEALTHCARE disclaimed)
for “Providing individuals with information, assistance, guidance and consulting with
regard to obtaining insurance coverage and compensation relating to medical and
health care services” in International Class 36; and “Providing individuals with
information, assistance, guidance and consulting with regard to obtaining medical
and health care services” in International Class 44.2
When the refusal was made final, Applicant appealed. For the reasons discussed
below, we affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney has objected to evidence consisting of a list and copies of
third-party registrations for applications and registrations that include the word
WHISPERER submitted for the first time as Exhibit 1 to Applicant’s brief. Inasmuch
as “[t]he record in the application should be complete prior to the filing of an appeal,”
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), we find the submission untimely. In
view of the foregoing, the Examining Attorney’s objection is sustained and this new
evidence, and related arguments, have not been considered in this decision.

2 Registered April 7, 2009; Section 8 and 15 Affidavit, accepted and acknowledged.
Serial No. 87148238
- 3 -
II. Likelihood of Confusion
Turning then to the merits, our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors
bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. Similarity/Dissimilarity of the Marks
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See Palm
Bay Impts., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison
of the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading
Serial No. 87148238
- 4 -
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905 (TTAB 2007)).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Aquitaine Wine USA, LLC,
126 USPQ2d 1181, 1184 (TTAB 2018); In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Here, the
average customer includes ordinary purchasers seeking information about various
types of insurance coverage.
As pointed out by Applicant, our analysis cannot be predicated on dissection of the
involved marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we are obliged to consider the
marks in their entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). However, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as our principal
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 87148238
- 5 -
Under this legal framework, we compare Applicant’s applied-for mark
INSURANCE WHISPERER with the cited mark HEALTHCARE WHISPERER. The
dominant and distinguishing portion of each mark is the word WHISPERER because
it is an arbitrary term for insurance consultation services relating to, among other
types, healthcare insurance. As regards the remaining portion of Applicant’s mark,
the word INSURANCE is descriptive of the type of consulting services provided by
Applicant and, similarly, the term HEALTHCARE is descriptive of one of the type of
insurance consultation services provided by the registrant; both terms have been
disclaimed in the respective marks.3 As such, these terms have little to no source-
indicating significance and are entitled to less weight in our comparison of the marks
in their entireties.
Regarding connotation and commercial impression, the dominant portion of both
marks is the identical term WHISPERER. Although, as just noted, the record
supports a finding that the word WHISPERER has no meaning in the insurance
consultation field, to the extent it would have any meaning it would be the same in
both marks. Indeed, consumers familiar with the insurance consulting services
provided under the registrant’s HEALTHCARE WHISPERER mark may mistakenly
believe that Applicant’s mark, INSURANCE WHISPERER, is a variant mark
identifying an expanded selection of insurance consulting services.

3 We add for clarity that it is not the fact that these terms have been disclaimed that render
them less source-signifying; rather, it is because they merely describe significant aspects of
the respective services, as they are identified in Applicant’s application and the cited
registration. See, e.g., National Data Corp., 224 USPQ at 751.
Serial No. 87148238
- 6 -
We are simply unpersuaded by Applicant’s argument that the terms INSURANCE
and HEALTHCARE serve to distinguish the marks sufficiently to make confusion
unlikely. While those terms may be defined differently, both Applicant’s and
Registrant’s services, as recited – albeit with slightly different language, include
insurance consulting services covering a variety of fields.4
While differences exist between the respective marks when spoken or viewed on
the basis of a side-by side comparison, we find that in their entireties, the marks are
not only substantially similar in appearance due to the shared term WHISPERER
but, in light thereof, they are similar in connotation and convey a substantially
similar commercial impression taking into account the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Binion, 93 USPQ2d at 1534. The factor of the similarity of the marks
thus favors a finding of likelihood of confusion.
B. The Number and Nature of Similar Marks Used on Similar Goods
We must consider evidence of “[t]he number and nature of similar marks in use
on similar goods.” du Pont, 177 USPQ at 567. In this regard, the Federal Circuit has
stated that evidence of the extensive registration and use of a term by others can be
“powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115

4 Applicant’s recitation states: “Insurance consulting” whereas the cited registration states:
“Providing individuals with … consulting with regard to obtaining insurance coverage.”
Serial No. 87148238
- 7 -
USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant made of record seven (7) International Class 36 registrations5 for marks
having a form of the term WHISPER- in connection with other matter for various
consulting services, arguing that they demonstrate the weakened status of
WHISPERER-formative marks, such that INSURANCE WHISPERER and
HEALTHCARE WHISPERER can coexist. The registrations include:
• THE MONEY WHISPERER (Reg. No. 3823106) for
“Financial counseling services, namely, helping
others build a better working relationship with their
money”;
• EARNINGSWHISPER (Reg. No. 2345679) for
“Providing on-line information in the field of
financial services, namely earnings forecasts with
respect to individual securities by means of a global
information network”;

• EARNINGS WHISPERS (Reg. No. 5117273) for
“Providing on-line information in the field of
financial services, namely earnings forecasts with
respect to individual securities by means of a global
information network”;
• PRICE WHISPERER (Reg. No. 4458351) for “Real
estate services, namely, providing consumers with

5 Although Applicant referenced seventeen (17) applications and registrations and included
a listing thereof from the Trademark Electronic Search System (TESS) database, it only
made the above noted registrations properly of record. A mere listing of third-party marks,
without any accompanying indication of the goods and/or services associated therewith, has
little, if any, probative value because there is no information by which we may assess how
many of these registrations, if any, identify goods or services related to the services at issue
herein. See TBMP § 1208.02 (2018), and the authorities cited therein. In addition,
applications, whether live or abandoned, are not evidence of anything except for the dates on
which they are filed. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016);
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003)
(applications are only probative to show that the application has been filed). The applications
certainly are not evidence of the weakness of WHISPERER. Thus, we accord the listing and
the third-party applications submitted by Applicant no probative value.
Serial No. 87148238
- 8 -
feedback in the nature of property value
information”;
• WHISPER REPORT (Reg. No. 4430976) for,
“Providing financial information via e-mail in the
fields of finances, stock quotations, financial market
commentaries, earning forecasts, earnings reports,
financial market analyses, and economic and
market forecasts”;
• THE NUMBERS WHISPERER (Reg. No. 4182351)
for “Individual, group, and online financial
consulting and advisory services for businesses in
the areas of financial performance, price selection,
profit maximization, revenue stream management
and development, and cash flow management”; and
• WHISPERING WATERS (Reg. No. 4149093) for,
inter alia, “federal insurance underwriting services.”
These third-party registrations do not persuade us that the cited mark is so weak
due to common usage of WHISPER-derivative marks that confusion is not likely
between it and Applicant’s mark. Six are for consultation services in unrelated fields,
five in finance and one in real estate. Since those services are unrelated to the
insurance consulting services at issue here, they are not probative in our analysis of
the strength to be accorded the term WHISPERER. That is, third-party registrations
covering different industries do not diminish the scope of protection to be afforded a
cited mark. To establish weakness, the identified goods and/or services should be in
the same or highly related fields. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other
types of goods where the proffering party had neither proven nor explained that they
were related to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d
1634, 1639 (TTAB 2009) (finding third-party registrations to be of limited probative
Serial No. 87148238
- 9 -
value because the goods identified in the registrations “appear to be in fields which
are far removed from [the goods at issue]”).
Although the mark in Registration No. 4149093, WHISPERING WATERS, covers
insurance-related services, the mark does not include the term WHISPERER and is
not as similar to the cited mark as is Applicant’s mark. Moreover, even if the mark
had included the term WHISPERER as a component thereof, a single third-party
registration does not evidence such a widespread and significant use the term
WHISPERER in the insurance industry that we can conclude that the cited mark is
so weak that the public would be able to distinguish the source of Applicant’s services
from those of Registrant by the differences in their respective marks. Cf., Jack
Wolfskin v. New Millennium 116 USPQ2d at 1136 n.2 (at least fourteen relevant
third-party uses or registrations of record); Juice Generation v. GS Enters. 115
USPQ2d at 1672 n.1 (at least twenty-six relevant third-party uses or registrations of
record); see also, In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996)
(“Broadway” is weak for restaurant services based on evidence that hundreds of
restaurants and eating establishments use Broadway as a trademark or trade name).
Accordingly, we find this du Pont factor, i.e., the number and nature of similar
marks in use in connection with similar services, neutral.
C. Relatedness of the Services/Channels of Trade
We next consider the du Pont factors addressing the similarity of the services, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. The services of Registrant and Applicant need not be identical or
Serial No. 87148238
- 10 -
competitive, or even be offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that the respective services are
related in some manner, and/or that the conditions and activities surrounding their
marketing such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. Coach Servs. v. Triumph
Learning 101 USPQ2d at 1723; Hilson Research, Inc. v. Soc’y for Human Res. Mgmt.,
27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not whether purchasers
would confuse the services, but rather whether there is a likelihood of confusion as to
the source of these services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In making our determination regarding the relatedness of the services, we must
look to the services as identified in the application and the cited registration. See
Stone Lion, 110 USPQ2d at 1162 (quoting Octocom Sys., Inc. v. Hous. Comps. Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co.,
97 USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s services are recited as “Insurance consulting in the field of life, long
term care, and disability insurance” and Registrant’s services are recited as
“Providing individuals with information, assistance, guidance and consulting with
regard to obtaining insurance coverage and compensation relating to medical and
health care services.” The Examining Attorney maintains that the services are
Serial No. 87148238
- 11 -
related because they are of a kind that may emanate from a single source under a
single mark.
In support of this position, the Examining Attorney has made of record web pages
from various websites showing use of the same mark for insurance consulting services
in fields identified in both Applicant’s application and the cited registration. She has
also made of record copies of used-based, third-party registrations for marks covering
insurance consultation services in the fields identified in both Applicant’s application
and the cited registration. Third-party registrations that individually cover different
services and that are based on use in commerce serve to suggest that the listed
services are of a type that may emanate from a single source. See Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, [they] may nonetheless
have some probative value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a single source”). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). A sampling of the
uses and registrations follows:
a. Internet excerpts
• Century Insurance Consultants, Ltd.
(http.centuryinsure.com/personalinsurance)6
consultation on individual health, long term care,
disability and life insurance;

6 Office Action dated March 22, 2017, TSDR 7. Complete URLs may be found in the cited
TSDR records.
Serial No. 87148238
- 12 -
• Elfstrum Consulting
(www.elfstrumconsulting.com)7, inter alia,
consultation on group health insurance, individual
health insurance, life insurance, short term
disability and long term care;
• Healthcare Consultants (www.hciamerica.com)8
consultation on health insurance and term life
insurance;
• Altruis Benefit Consulting
(www.altruisbenefit.com)9 consultation on
individual and family health and life insurance; and
• Health Benefits Insurance and Consultation
providing “services to aide you in selecting and
implementing health insurance, life & disability, or
supplemental insurance plans.”
b. Third party registrations10
Registration
No.
Mark Pertinent Services11
5071132 MMMM OPERATIONS Insurance consulting in the field of life and
health insurance
5039188 “YOUR TRUSTED TIME
SAVER”
Insurance consulting in the field of health, life
and long term care insurance
5006508 VERTICAL INSURANCE
WEALTH MANAGEMENT
Insurance consulting in the fields of life and
health insurance
5089961 DEFINE YOUR WEALTH Insurance consulting in the field of life,
health, long term care and disability income
insurance
5140975 BARRISTER WEALTH
MANAGEMENT
Insurance consulting in the fields of life,
health, disability and long-term care
insurance

7 Id. at 9-10.
8 Id. at 11-13.
9 Id. at 17-18.
10 Id. at 26-54
11 The registrations include additional services that are not at issue here.
Serial No. 87148238
- 13 -
We find this evidence sufficient to show that Applicant’s insurance consulting
services in the field of life, long term care, and disability insurance and Registrant’s
consulting with regard to obtaining insurance coverage and compensation relating to
medical and health care services are related, because they are services involving
insurance consultation that are often provided by the same source under the same
mark.
Applicant did not address this issue in its brief; however, during prosecution
Applicant argued that Registrant provides its services after consumers have
purchased insurance policies. To the extent that Applicant seeks to restrict the nature
of Registrant’s services, an applicant may not restrict the scope of the scope of the
goods covered in the cited registration by extrinsic argument or evidence. See, e.g., In
re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764-65 (TTAB 1986). Applicant also argued during prosecution
that it provides services in different industries. We reiterate that the services need
only be related in a manner that gives rise to a mistaken belief that they emanate
from a common source. Coach Servs. v. Triumph Learning 101 USPQ2d at 1723.
Because the same party often provides services of the type provided by both Applicant
and Registrant under the same mark, it is likely that the circumstances surrounding
the sale of both parties’ services will result in a mistaken belief that they share a
common source.
Furthermore, because there are no limitations as to channels of trade or classes
of purchasers in Applicant’s or Registrant’s recitations of services, we must presume
Serial No. 87148238
- 14 -
that Applicant’s and Registrant’s services move in all channels of trade usual for
these services, including online and in office settings and are purchased by the usual
classes of purchasers which, in this case, include ordinary consumers seeking
insurance consultation services. See In re Viterra, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Accordingly, the du Pont factors of the relatedness of the services, channels of
trade and classes of purchasers favor a finding of likelihood of confusion.
D. Sophistication of the Purchasers
Finally, Applicant contends that there is a high degree of consumer care in the
selecting of insurance plans such as those provided by Applicant, explaining that
customers for insurance plans are highly involved and knowledgeable given their
high cost. We are not persuaded by this argument for several reasons. First, the
record is devoid of any information regarding the cost of or level of care consumers
expend when selecting insurance consulting services. In addition, neither Applicant’s
nor Registrant’s identification limits the type of consumer, e.g., sophisticated or
ordinary. However, Registrant’s identification indicates that its services are targeted
to include “individuals” which, on its face, includes ordinary and sophisticated
individuals, and we base our decision on the least sophisticated potential purchasers
of the identified services. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (citing Stone Lion 110 USPQ2d at 1163).
In any event, even if the purchasers of insurance consulting services exercise some
degree of care in their purchasing decisions, even careful purchasers can be confused
Serial No. 87148238
- 15 -
as to source under circumstances where, as here, substantially similar marks are
used on related and complementary services. See In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers … are not infallible.”)). Accordingly, this
factor is neutral.
E. Conclusion
In view of the foregoing, we conclude that prospective purchasers familiar with
the registered mark HEALTHCARE WHISPERER for “providing individuals with
information, assistance, guidance and consulting with regard to obtaining insurance
coverage and compensation relating to medical and health care services” and
“providing individuals with information, assistance, guidance and consulting with
regard to obtaining medical and health care services” would be likely to believe, upon
encountering Applicant’s substantially similar mark INSURANCE WHISPERER for
“Insurance consulting in the field of life, long term care, and disability insurance,”
that such services emanate from, or are sponsored by or affiliated with, the same
source.
Decision: The refusal to register Applicant’s mark INSURANCE WHISPERER
under Section 2(d) of the Trademark Act is affirmed.