Life Partners, Inc.

Trademark Trial and Appeal Board

Feb 12, 2008

No. 78891211 (T.T.A.B. Feb. 12, 2008)

Mailed: 2/12/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Life Partners, Inc.
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Serial No. 78891211
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Justin R. Blount for Life Partners, Inc.

Vivian Micznik First, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Grendel and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Life Partners, Inc. filed an application to register
the mark THE ARCHITECT OF LIFE SETTLEMENTS for “viatical
settlement services.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the

1 Application Serial No. 78891211, filed May 24, 2006, alleging
first use anywhere and first use in commerce on May 17, 2006.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78891211
2
previously registered mark THE ARCHITECT for “life
insurance underwriting services”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Applicant contends that the marks are different, with
its mark’s conveying the impression of a designer or
planner (“THE ARCHITECT”) of a specific type of transaction
(“OF LIFE SETTLEMENTS”), whereas the registered mark is
vague and ambiguous. Applicant asserts that the only
commonality between the two marks is the word “ARCHITECT,”
and that this word is “relatively common and indistinct”
and, thus, is an insufficient basis upon which to conclude
that the marks are similar. In this connection, applicant
submitted a dictionary definition of the term “architect.”
As to the services, although applicant concedes that “the

2 Registration No. 1453525, issued August 18, 1987; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
3 Applicant submitted, for the first time with its reply brief,
numerous exhibits. These exhibits are third-party registrations
and applicant’s parent company’s filing with the Securities and
Exchange Commission. As often stated, the record in the
application should be complete prior to the filing of an appeal.
See Trademark Rule 2.142(d). The exhibits attached to
applicant’s reply brief were not made of record during
examination. Accordingly, their submission with the reply brief
is manifestly untimely, and we have not considered this evidence
in reaching our decision. See In re U.S. Cargo Inc., 49 USPQ2d
1702, 1703 n.2 (TTAB 1998) [third-party registrations submitted
with reply brief not considered]; and TBMP §1203.02(e) (2d ed.
rev. 2004).
Ser No. 78891211
3
industries of the Applicant and the prior registrant are in
some sense related as they both involve life insurance
policies” (Brief, p. 4), applicant goes on to argue that it
and registrant are not in competing industries, and that
they render distinct types of services to different markets
and clientele. Further, the registered mark, applicant
argues, is suggestive and, thus, entitled to a limited
scope of protection. Applicant also states that the
registered mark is “not very well known or is not often
used by the prior registrant.” (Brief, p. 5). Lastly,
applicant claims that the services involve a sophisticated
purchase by a discriminating clientele.
The examining attorney maintains that the marks are
similar in that applicant has adopted the entirety of
registrant’s mark and merely added subordinate matter to
it. The services, the examining attorney contends, are
related, both being rendered in the life insurance field.
Further, the examining attorney is not persuaded that the
services necessarily involve a sophisticated purchasing
decision. To show the relatedness of the services, the
examining attorney submitted excerpts of third-party
websites, and copies of third-party registrations.4

4 The examining attorney submitted, for the first time with her
appeal brief, a dictionary definition of the term “viatical
Ser No. 78891211
4
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). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
At the outset, we take judicial notice of the
definition of “viatical settlement”:
A written contractual agreement under
which the policyholder of a life
insurance contract covering the life of
a terminally ill person assigns,
transfers ownership or otherwise
irrevocably designates all control and

settlement” retrieved from an on-line dictionary. At this late
juncture the Board will not take judicial notice of definitions
found in on-line dictionaries that do not exist in print or have
regular fixed editions; however, it will consider them if made of
record during the prosecution of the application. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006); In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); and TBMP §1208.04 (2d
ed. rev. 2004). Accordingly, this definition has not been
considered. As indicated below, however, we have taken judicial
notice of a definition found in a dictionary available in a
printed format.
Ser No. 78891211
5
rights in the contract to another
person or entity (viatical settlement
company) in exchange for the advance
payment of a percentage (usually 60
percent to 80 percent) of the eventual
death benefit. Under these
arrangements, a portion of the proceeds
is paid to the insured or policyholder
prior to the actual death of the
insured person. The settlement company
then receives the death benefit when
the insured person dies. These
settlements are considered taxable
income by the government.
(Insurance Dictionary (2002))

Life settlements apparently are a fairly recent
variation or outgrowth of viatical settlements. A life
settlement is the sale of a life insurance policy to a
third party, where the insured individual is elderly, but
does not have a known life-threatening or terminal illness
or condition. In these cases the policy owner also
receives cash for the policy. (See www.quatloos.com).
With respect to the services, it is not necessary that
the respective services be competitive, or even that they
move in 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 the marketing of
the services are 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
Ser No. 78891211
6
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
Applicant’s “viatical settlement services” and
registrant’s “life insurance underwriting services” both
involve life insurance; both types of services are rendered
in the life insurance field; and the services may be
rendered to the same classes of purchasers. The Internet
evidence also indicates that life insurance agents may be
involved in both types of services. In addition, the
examining attorney introduced third-party registrations to
establish the relatedness of the services. Three of the
use-based registrations show that each registrant adopted a
single mark for both life insurance underwriting and
viatical settlement services. Third-party registrations
that individually cover different items and that are based
on use in commerce serve to suggest that the listed goods
and/or services are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
In view of the above, we find the services are
sufficiently related that, if rendered under similar marks,
consumers would be likely to be confused.
Ser No. 78891211
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Insofar as the marks are concerned, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result.
The marks involved herein, THE ARCHITECT and THE
ARCHITECT OF LIFE SETTLEMENTS are similar in sound,
appearance, meaning and overall commercial impression.
Both begin with the identical term, and applicant has
merely added a highly suggestive or, more likely, a merely
descriptive/generic term to its mark.5
The addition of “OF LIFE SETTLEMENTS” in applicant’s
mark does not serve to sufficiently distinguish it from

5 Given the evidence of record, we are surprised that the
examining attorney did not require a disclaimer of the term “life
settlements.” Applicant itself states that its mark includes a
“phrase with a clear meaning” (Brief, p. 3), and that its
services involve “life settlements.” (Brief, p. 4). Applicant
uses the term in a descriptive or generic manner in its
promotional materials, consistent with the meaning of “life
settlement” as shown, for example, at www.quatloos.com.
Ser No. 78891211
8
registrant’s mark. The general rule is that a subsequent
user may not appropriate the entire mark of another and
avoid a likelihood of confusion by adding descriptive or
subordinate matter thereto. Thus, “if the dominant portion
of both marks is the same, the confusion may be likely
notwithstanding peripheral differences.” TMEP §1207.01
(b)(iii) (5th ed. 2007). See, e.g., Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002) [HEWLETT PACKARD and PACKARD TECHNOLOGIES]; In
re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988)
[MACHO and MACHO COMBOS]; In re Equitable Bancorporation,
229 USPQ 709 (TTAB 1986) [RESPONSE and RESPONSE CARD]; and
In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) [CONFIRM
and CONFIRMCELLS]. The present case is no exception.
In comparing the marks, we have not ignored the
subordinate “OF LIFE SETTLEMENTS” portion of applicant’s
mark. Indeed, we have considered applicant’s mark THE
ARCHITECT OF LIFE SETTLEMENTS in its entirety, and find
that this mark is substantially similar to registrant’s
mark THE ARCHITECT in sound, appearance, meaning and
commercial impression.
As pointed out by applicant, we recognize the somewhat
suggestive nature of the term “architect” as it means “a
person who designs and guides a plan or undertaking.”
Ser No. 78891211
9
Merriam-Webster’s Collegiate Dictionary (11th ed. 1998).
The meaning of the term must be considered in the context
of the respective services and, in each mark, the term
conveys the same idea, that is, the entity designs and
guides a plan for you, whether the plan involves life
insurance underwriting or viatical settlement services. A
relevant consumer familiar with registrant’s life insurance
underwriting services rendered under the mark THE ARCHITECT
is likely to believe that applicant’s mark THE ARCHITECT OF
LIFE SETTLEMENTS is a brand extension or an additional line
of services offered by registrant.
We also are not persuaded by applicant’s argument that
purchasers are sophisticated. We accept that, due to the
nature of life insurance underwriting and viatical
settlement services, most customers will make their
purchasing decisions with some degree of care. However,
even assuming that the purchase of applicant’s and
registrant’s services would involve a deliberate decision,
this does not mean that the purchasers are immune from
confusion as to the origin of the respective services,
especially when, as we view the present case, the
similarity between the marks and the similarity between the
services outweigh any sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12
Ser No. 78891211
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USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990) [similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods]. See also In re Research Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical 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.”].
One final point requires our attention. Applicant
states that the registered mark “appears to not be
regularly used by the prior registrant, if it is even used
at all.” (Brief, p. 5). Applicant bases its statement on
its purported search of registrant and its affiliates’
websites. To the extent that applicant’s allegations
constitute a collateral attack on registrant’s
registration, they are impermissible. Section 7(b) of the
Trademark Act provides that a certificate of registration
on the Principal Register shall be prima facie evidence of
the validity of the registration, of the registrant’s
ownership of the mark and of the registrant’s exclusive
right to use the mark in connection with the goods or
services identified in the certificate. During ex parte
prosecution, including an ex parte appeal, an applicant
Ser No. 78891211
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will not be heard on matters that constitute a collateral
attack on the cited registration (e.g., a registrant’s
nonuse of the mark). In re Dixie Restaurants, 41 USPQ2d at
1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992). See TMEP § 1207.01(d)(iv) (5th ed. 2007).
Accordingly, no consideration has been given to applicant’s
arguments in this regard.
We conclude that purchasers familiar with registrant’s
life insurance underwriting services under its mark THE
ARCHITECT would be likely to believe, upon encountering
applicant’s viatical settlement services offered under the
mark THE ARCHITECT OF LIFE SETTLEMENTS, that the services
originated with or are somehow associated with or sponsored
by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.