L.B.L. Insurance Services, Inc.

Trademark Trial and Appeal Board

Jan 29, 2013

No. 77875603 (T.T.A.B. Jan. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re L.B.L. Insurance Services, Inc.
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Serial No. 77875603
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Vern Schooley of Fulwider Patton LLP for L.B.L. Insurance Services, Inc.

Sara N. Benjamin, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
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Before Seeherman, Grendel, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
L.B.L. Insurance Services, Inc. (applicant) has appealed the examining
attorney’s refusal to register its application for the mark THE ESSENTIAL
C.A.R.E. PROCESS & design, as shown below,

for:
Serial No. 77875603

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consulting services in the field of human resources
development, namely, for the promotion of employee
retention, career growth, and increased productivity
for employees and employers, in Class 35; and
financial advice and consultancy services regarding
wealth management, pension plans, IRA plans, 401K
plans, 403(b) plans, asset allocations strategies and
account aggregation in Class 36.1
Registration has been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the
registered mark ESSENTIALCARE in standard character format for “health
insurance underwriting services” in Class 362 that, as used in connection with
applicant's identified services, it is likely to cause confusion or mistake or to
deceive.
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors
set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003).
We analyze the issue of likelihood of confusion separately for each class
of services in the application, beginning with the Class 36 services, which are
identified as “financial advice and consultancy services regarding wealth

1 Application Serial No. 77875603, filed on November 18, 2009, pursuant to Section
1(a) of the Trademark, asserting first use and first use in commerce on February 1,
2008.
2 Reg. No. 3080423, issued on April 11, 2006, Sections 8 & 15 affidavit accepted and
acknowledged.
Serial No. 77875603

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management, pension plans, IRA plans, 401K plans, 403(b) plans, asset
allocations strategies and account aggregation.”
To establish the relationship between applicant’s services and
registrant’s “health insurance underwriting services,” the examining attorney
submitted copies of approximately fifteen third-party registrations, each of
which includes the services that are identified in both the application and the
cited registration. See, for example,
Reg. No. 2906871 for the mark B BARRESI
FINANCIAL, INC. EXPERTISE WITH INTEGRITY for
“financial consultation services; financial brokerage
services in the fields of mutual funds, insurance,
annuities, bonds, and stocks; insurance services,
namely, insurance consultation; insurance brokerage
services in the fields of life insurance, disability
insurance, long term care insurance, health
insurance; insurance underwriting in the fields of life
insurance, disability insurance, long term care
insurance, health insurance; and insurance
consultation in the fields of employee health
insurance, life insurance, disability insurance, long
term care insurance, employee benefits and benefit
plans”;
Reg. No. 3149332 for the mark for TRUENORTH for,
inter alia, insurance services for businesses, namely,
administration of comprehensive property and
casualty insurance, risk management, underwriting in
the field of life, health, accident, and disability;
providing information advisory and consultation
services in the field of insurance and financial
management; financial planning and consulting,
namely, employee pension plan administration and
consultation services, employer-sponsored IRA plans
and qualified retirement plans consultation; fund
management services; investment consultation,
planning and management; estate planning and asset
management; employee benefit plan consultation and
administration; devising and implementing wealth
transfer strategies for others; and
Serial No. 77875603

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Reg. No. 3346808 for miscellaneous design for, inter
alia, credit and financial consultation; financial
analysis and consultation; financial consultation;
financial evaluation for insurance purposes; financial
management; financial planning; financial risk
management; insurance actuarial services; insurance
carrier services; insurance services, namely, writing
property and casualty insurance; and insurance
underwriting services for all types of insurance.
The examining attorney contends that health insurance underwriting
services are equivalent to health insurance services, and has submitted
evidence to show that health insurance services and financial
planning/retirement planning services are related.3 To support her position
that health insurance underwriting and health insurance services are
equivalent, she relies on the definition of underwriting from the “Encarta World
English Dictionary” (Encarta.msn.com) as “issue insurance: to insure
somebody or something by accepting liability for the designated losses, or to be
in the business of doing this.” Office Action dated April 27, 2011, page 70.
Applicant contends that this definition is incorrect and that insurance
underwriting services generally involve analyzing risk for insurance companies.
Response dated March 17, 2011. In support of its position, applicant
submitted webpages from the sites of MIB (www.mib.com) and Professional
Risk Management Services (www.prms.com), both of which offer underwriting
services to insurance companies. Request for Recon. dated October 27, 2011,
pages 174-175.

3 See webpages from a number of companies that offer all of these services. Request
for Recon. dated December 20, 2011, pages 17-20, 30-34, and 37-41.

Serial No. 77875603

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We take judicial notice of the definition of “underwriting” in the
Dictionary of Insurance Terms,4 which is the “process of examining, accepting,
or rejecting insurance risks, and classifying those selected, in order to charge
the proper premium for each.” The Dictionary of Insurance Terms further states
that “the purpose of underwriting is to spread the risk among a pool of
insureds in a manner that is equitable for the insureds and profitable for the
insurer.” This definition supports applicant’s assertions.
Based on the evidence, we cannot conclude that health insurance
services and insurance underwriting services are the same. In fact, the third-
party registrations made of record by the examining attorney are evidence that
they are different since most of the registrations include as separate services
insurance underwriting services and other insurance services.
In considering whether applicant’s identified Class 36 services and those
identified in the cited registration are related, we must consider whether and to
what extent there is any overlap in terms of the purchasers. The purchasers of
applicant’s services would include executive decision makers in corporations
seeking consultation regarding employee benefit plans. They may also come in
contact with health insurance underwriters in connection with obtaining health

4 Rubin, Harvey W., Dictionary of Insurance Terms, 4th ed. (Barron’s
Educational Series, Inc. 2000), online version.

The Board may take judicial notice of dictionary definitions, Univ. of Notre
Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries
that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 77875603

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insurance plans for their employees. However, such purchasers, as both the
examining attorney and the applicant agree, are sophisticated.5 As such, we
determine likelihood of confusion with respect to sophisticated purchasers.
The sophistication of purchasers is important and “often dispositive
because ‘[s]ophisticated purchasers may be expected to exercise greater care.’”
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388, 1392 (Fed. Cir. 1992), quoting Pignons S.A. de Mecanique de
Precision v. Polaroid Corp., 657 F.2d 482, 212 USPQ 246, 252 (1st Cir. 1981);
See also In re Box Solutions Corp., 79 USPQ2d 1953, 1957 (TTAB 2006).
With this in mind, we evaluate the similarity between the marks. The
marks at issue are:
and ESSENTIALCARE.

Both marks, of course, contain the phrase ESSENTIAL CARE, albeit in
applicant’s mark each letter in the word CARE is followed by a period, so that it
may also be viewed as individual letters or, as applicant contends, an acronym,
although there is no evidence that C.A.R.E. is a recognized acronym for a

5 We acknowledge that individual employees or the public at large may obtain
financial advice and consultancy services regarding wealth management, pension
plans, IRA plans, 401K plans, and the like, but there is no evidence that they would be
purchasers of health insurance underwriting services (as opposed to health insurance
services).
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particular phrase. Normally, elements such as the lion design and the word
PROCESS would not be considered sufficient to distinguish two marks.
However, in this case, applicant has submitted a number of third-party
registrations to show that the terms “ESSENTIAL” and “CARE” are highly
suggestive for health insurance underwriting services. Third-party
registrations can be used in a manner similar to dictionaries to show how
language is generally used. See In re J.M. Originals Inc., 6 USPQ2d 1393, (TTAB
1987). Further, the very meaning of the phrase “essential care,” (indispensable
attentive assistance or treatment),6 reflects the suggestive nature of the phrase
as used in connection with health insurance underwriting services. Such
phrase is also suggestive of applicant’s financial advice and consultancy
services.
Given the suggestive nature of the common element of the marks, and
considering the sophisticated nature of the purchasers, we find that the
relevant purchasers are not likely to assume that these marks indicate a single
source merely because they contain this term. See King Candy Co. v. Eunice
King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974) (confusion unlikely when
marks are of such non-arbitrary nature that the public easily distinguishes
slight differences in the marks under consideration).
Accordingly, after considering all of the evidence and the arguments on
the relevant du Pont factors, whether discussed or not, we find that there is no

6 We take judicial notice of the definitions of “essential” and “care” from the online
American Heritage Dictionary: “essential” - “basic or indispensable; necessary” and
“care” -“attentive assistance or treatment to those in need.”
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likelihood of confusion between applicant’s use of the mark THE ESSENTIAL
CARE PROCESS & design for financial advice and consultancy services
regarding wealth management, pension plans, IRA plans, 401K plans, 403(b)
plans, asset allocations strategies and account aggregation and the use of the
mark ESSENTIALCARE, in the cited registration, for health insurance
underwriting services.
We reach the same conclusion with respect to applicant’s Class 35
services. Applicant’s Class 35 services are identified as “consulting services in
the field of human resources development, namely, for the promotion of
employee retention, career growth, and increased productivity for employees
and employers.” Although the examining attorney has refused registration with
respect to the application in Class 35, she did not address these services in her
brief to explain how they are related to health insurance underwriting services.
In fact, the only evidence on this point is a single registration that includes
both “business consultation services in the field of human resources
development and management” and “health insurance underwriting.” This
single registration is insufficient to show that applicant’s and the registrant’s
identified services are related.
Because the Office has failed to show that the services are related, and in
view of our comments regarding the sophistication of the purchasers in terms
of being able to distinguish the marks, we find that the Office has not proven
that there is a likelihood of confusion between applicant’s use of its mark in
connection with the Class 35 services and the cited registration.
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Accordingly, we also reverse the refusal with respect to the Class 35
services.
Decision: The refusal to register the mark with respect to both the Class
35 and the Class 36 services is reversed.