John M Fickewirth Associates Insurance Services, Inc.

Trademark Trial and Appeal Board

Aug 14, 2018

No. 87026036 (T.T.A.B. Aug. 14, 2018)

Mailed: August 14, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re John M. Fickewirth Associates Insurance Services, Inc.
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Serial No. 87026036
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Jaye G. Heybl and David Bancroft of Koppel Patrick Heybl & Philpott,
for John M. Fickewirth Associates Insurance Services, Inc.
Howard Smiga, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Kuhlke, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
John M. Fickewirth Associates Insurance Services, Inc. (“Applicant”) seeks
registration on the Principal Register of the mark OPTIMUM BENEFITS PACKAGE
(in standard characters; BENEFITS PACKAGE disclaimed) for “insurance
administrative services, insurance brokerage services, insurance underwriting
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87026036
2
services in the field of life, health, accident, disability and longterm care insurance”
in International Class 36.1
The Trademark Examining Attorney 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 following two registered marks owned by the same
Registrant:
• OPTIMUM (in typeset format2) for “underwriting, brokerage and
management of all types of life insurance and reinsurance; and
actuarial consulting services” in International Class 36;3 and
• THE OPTIMUM (also in typeset format) for “developing and
writing insurance contracts” in International Class 36.4
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. The appeal is fully briefed. We affirm the
refusal to register. 5

1 Application Serial No. 87026036, filed on May 5, 2016, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming April 13,
1994 as both the date of first use and the date of first use in commerce.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” or
“typeset” drawings. A typed or typeset mark is the legal equivalent of a standard character
mark. See TRADEMARK MANUEL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October
2017).
3 Registration No. 2010333, issued on October 22, 1996; second renewal.
4 Registration No. 1473487, issued on January 19, 1988; second renewal.
5 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations
reference the docket and electronic file database for the involved application. All citations to
the TSDR database are to the downloadable .PDF version of the documents.
Serial No. 87026036
3
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. 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.”).
In this case, we have based our Section 2(d) likelihood of confusion findings and
decision on only one of the cited registrations, i.e., on Registration No. 2010333, which
is of the typeset mark OPTIMUM for the International Class 36 services identified in
the registration that include life insurance underwriting and brokerage. A finding of
likelihood of confusion between Applicant’s mark and this previously registered mark
suffices by itself to bar registration of Applicant’s mark under Section 2(d); we need
not reach likelihood of confusion as to the other cited registration. See In re Max
Capital Grp, Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010); In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1201-02 (TTAB 2009).
A. Similarity of the Services
We turn first to a comparison of the services identified in Applicant’s application
vis-à-vis the services identified in cited Registration No. 2010333, the second du Pont
Serial No. 87026036
4
factor. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comps. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co.
v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Registration must be refused if Applicant’s mark for any of its identified services
is likely to cause confusion with the Registrant’s mark for any of its identified
services. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). Applicant’s services are identified as “insurance
administrative services, insurance brokerage services, insurance underwriting
services in the field of life, health, accident, disability and longterm care insurance.”
The identification of services in cited Registration No. 2010333 includes insurance
brokerage and underwriting in the field of life insurance. Accordingly, insofar as
Applicant’s services and Registrant’s services both include life insurance
underwriting and brokerage, the services are identical in part.6
Thus, the second du Pont factor strongly favors a finding of likelihood of confusion.
B. Similarities in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because Applicant’s services and Registrant’s services are identical in

6 Applicant makes a conclusory argument, without any evidentiary support, that the parties’
respective services are dissimilar. See Applicant’s Appeal Brief, p. 2, 8 TTABVUE 7.
Applicant’s argument is unpersuasive, not only because it is not supported by any evidence,
but the identification of services in both Applicant’s application and in cited Registration No.
2010333 clearly identify the identical services, i.e., life insurance underwriting and
brokerage.
Serial No. 87026036
5
part, and there are no restrictions on those services in the respective identifications,
these identical in part services are “‘presumed to travel in the same channels of trade
to the same class of purchasers.”’7 In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62
USPQ2d at 1005) (finding that the Board is entitled to rely on this legal presumption
in determining likelihood of confusion); United Glob. Media Grp. Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v.
Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
In view of the foregoing, the third du Pont factor also weighs in favor of finding a
likelihood of confusion.
C. Similarity of the Marks
We finally address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.

7 As with its argument regarding the similarities of the services at issue, Applicant contends,
again without any evidentiary support, that the parties’ respective services are marketed to
different members of the public. See Applicant’s Appeal Brief, pp. 2-3, 8 TTABVUE 7-8.
Applicant’s contention is without merit for two reasons. First, Applicant failed to submit any
evidence to support its contention. Second, even if Applicant had submitted extrinsic evidence
demonstrating that the parties’ services travel through disparate trade channels or are
offered to different classes of purchasers, such evidence would not have been given any
consideration since the Board, in determining the similarities of trade channels and classes
of purchasers, is bound by the identifications in Applicant’s involved application and the cited
registration which, as noted above, have no limitations as to channels of trade or types of
purchasers. See In re Bercut-Vandervoot & Co., 229 USPQ 763, 764 (TTAB 1986) (extrinsic
evidence and argument suggesting trade-channel restrictions not specified in application
rejected).
Serial No. 87026036
6
2005) (quoting du Pont, 177 USPQ at 567). “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 [owners].” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because this factor is based on the marks in their entireties, our analysis cannot
be predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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.”).
Applicant’s mark is OPTIMUM BENEFITS PACKAGE. The cited mark is
OPTIMUM. The sole difference between the marks is the inclusion of the disclaimed
wording BENEFITS PACKAGE in Applicant’s mark.
Applicant contends that the Examining Attorney improperly focused on the
element which is identical to both marks (the term OPTIMUM) while discounting the
importance of the disclaimed wording BENEFITS PACKAGE in Applicant’s mark.8
In Applicant’s view, the addition of BENEFITS PACKAGE in its mark sufficiently

8 Applicant’s Appeal Brief, p. 4-5; 8 TTABVUE 9-10.
Serial No. 87026036
7
distinguishes the marks in sound, appearance and connotation so as to avoid any
confusion.9
Contrary to Applicant’s assertion, 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 Capital, 110 USPQ2d at 1161; Nat’l Data, 224 USPQ at 751.
Keeping this principle in mind, we observe that Applicant's and Registrant's marks
are comprised, either in whole or in part, of the term OPTIMUM. Moreover, the
entirety of the cited mark OPTIMUM is encompassed within Applicant’s mark; in
such cases, confusing similarity has often been found. See In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML MARK LEES);
Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105,
106 (CCPA 1975) (BENGAL and BENGAL LANCER and design deemed confusingly
similar); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(CCPA 1967) (THE LILLY similar to LILLI ANN); In re United States Shoe Corp.,
229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST CAREER
IMAGES). In addition, OPTIMUM is the first element in Applicant’s mark. “[I]t is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered” when making purchasing decisions.” Palm Bay, 73
USPQ2d at 1692; see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). When viewing Applicant’s mark, the term OPTIMUM is also

9 Id.
Serial No. 87026036
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likely to be accorded more weight by consumers because the remaining wording
BENEFITS PACKAGE is, at a minimum, descriptive of Applicant’s services, as
demonstrated by the evidence of record,10 and which has been appropriately
disclaimed. As such, BENEFITS PACKAGE is less likely to make an impact in the
minds of consumers. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or generic for a
party’s goods is typically less significant or less dominant when comparing marks);
see also Nat’l Data, 224 USPQ at 753.
While we have not overlooked the wording BENEFITS PACKAGE in Applicant’s
mark, we nonetheless conclude that Applicant’s mark and the cited OPTIMUM mark,
when considered in their entireties, are substantially similar. Therefore, the first du
Pont factor supports a conclusion that confusion is likely, particularly considering
that Applicant’s services are identical in part to those identified in cited Registration
No. 2010333. See Coach Servs., 101 USPQ2d at 1722 (“When trademarks would

10 The Examining Attorney required Applicant to disclaim the wording BENEFITS
PACKAGE on the ground that the wording is descriptive of Applicant’s identified services.
See August 16, 2016 Office Action, TSDR p. 5. In support of his requirement, the Examining
Attorney submitted a dictionary definition of “benefits package” which is defined as follows:
“An employee benefits package includes all the financial benefits & incentives provided by
an employer. Employers have to provide some type of employee benefits like worker
compensation, disability and unemployment…The other benefits given by a company are
medical insurance, accidental insurance, family member (dependents) insurance….” Id.,
TSDR pp. 11-14. The Examining Attorney also submitted internet evidence that
demonstrates that the phrase BENEFITS PACKAGE is a commonly used term relating to,
inter alia, benefits an employee may/would receive as an employee, including life insurance.
Id., TSDR pp. 15-33. Based on this evidence, we agree with the Examining Attorney that the
phrase BENEFITS PACKAGE is merely descriptive of a feature and/or characteristic of
Applicant’s identified services and that the disclaimer requirement was appropriate.
Serial No. 87026036
9
appear on substantially identical goods, ‘the degree of similarity necessary to support
a conclusion of likely confusion declines.’”) (internal citations omitted).
Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are substantially similar and that Applicant’s identified
services are identical in part to Registrant’s services and, as such, are presumed to
move in the same trade channels and would be offered to the same classes of
purchasers, we conclude that Applicant’s OPTIMUM BENEFITS PACKAGE mark,
as used in connection with the services identified in the application, so resembles the
cited mark OPTIMUM in Registration No. 2010333 as to be likely to cause confusion
or mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s OPTIMUM BENEFITS PACKAGE
mark under Section 2(d) of the Trademark Act is affirmed.