Modern Woodmen of America

Trademark Trial and Appeal Board

May 7, 2012

No. 77308779re (T.T.A.B. May. 7, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: May 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Modern Woodmen of America
________

Serial Nos. 77308794, 77308779, and 77308822
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Modern Woodmen
of America.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Taylor, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On March 12, 2012, this Board suspended proceedings
pending determination of the final status of cited Reg. No.
2995606 for the mark WOODMEN MORTGAGE SERVICES. On April
26, 2012, Reg. No. 2995606 was cancelled. Accordingly,
applicant’s request for reconsideration (filed February 6,
2012) of our decision issued January 12, 2012 is granted to
the extent that any discussion in the decision regarding
Reg. No. 2995606 is considered moot, and the decision is
hereby vacated as to that registration.
Serial Nos. 77308794, 77308779, and 77308822

2

To the extent our decision that a likelihood of
confusion exists was predicated upon the presumed validity
of Reg. No. 2995606, we note that none of the specific
findings made with respect to Reg. No. 2995606 were
determinative of the outcome, and we examine them in turn
below.
First, in comparing the services recited for the mark
MODERN WOODMAN BANK and design (Serial No. 77308794), we
made a finding that banking and mortgage loan services are
“legally identical to, or encompass,” the services recited
in Reg. No. 2995606, “mortgage banking services.” The
record also supports a finding that banking and mortgage
loan services are related to “broker-dealer services and
insurance agency services,” “general insurance agency
services,” and the “underwriting of life insurance.”1 As
evidenced by the third-party registrations attached in the
Office Action dated July 12, 2009 and January 19, 2010, and
discussed in our decision of January 6, 2012, the parties’
services are highly related and are often performed by a
single source. This evidence is probative to show that
consumers would likely perceive both applicant and
registrant’s services as the type that may be performed by a

1 The cited registrations that remain active are: Reg. No. 2767582
for the mark WOODMEN FINANCIAL SERVICES for “financial services,
namely, broker-dealer services and insurance agency services in
the field of variable life and annuity insurance policies and
mutual funds;” Reg. No. 2995607 for the mark WOODMEN INSURANCE
AGENCY for “general insurance agency;” and Reg. No. 3559362 for
the mark WOODMEN OF THE WORLD for “underwriting of life
insurance.”
Serial Nos. 77308794, 77308779, and 77308822

3

single company. See In re Infinity Broad. Corp. of Dallas,
60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Thus, our
decision that a likelihood of confusion exists did not
depend upon our finding of legal identity between the
parties’ services with respect to trademark application
Serial No. 77308794.
Additionally, in our January 12, 2012 decision, we
found that the parties’ services are presumed to travel in
the same channels of trade and be encountered by the same
classes of purchasers, in part because we found that
“applicant’s insurance and banking services have been found
to be legally identical to registrants’ insurance and
banking services.” We add that the presumption continues
to hold true, inasmuch as the remaining services are
closely related. To clarify our earlier decision, the
decision (at page 16) is amended to read (added text in
bold):
Because applicant’s insurance and banking services
have been found to be legally identical and/or
closely related to registrants’ insurance and
banking services, and there are no limitations or
restrictions as to trade channels or class of
consumers in either the cited registrations or
applicant’s applications, such services are
presumed to move in the same channels of trade and
be encountered by the same classes of purchasers.

Serial Nos. 77308794, 77308779, and 77308822

4

At pages 17 and 18, the decision is further amended to
read (added text in bold):

Even assuming arguendo that purchasers of such
services would carefully deliberate before making
a purchasing decision, this does not mean that
they are immune from confusion as to the origin of
the respective services, especially where, as we
view the present case, the similar nature of the
marks and the identity or close relationship of
the services outweigh any sophisticated purchasing
decision.

...

Even sophisticated consumers may view the marks as
variations on a theme (MODERN WOODMEN as the
newest “line” in the WOODMEN OF THE WORLD
services) intended to differentiate identical or
closely related services having a common source or
sponsorship.

In all other respects, the prior decision, affirming
the examining attorney’s refusals to register trademark
application Serial Nos. 77308794, 77308779, and 77308822
under Trademark Act § 2(d), stands.