Principal Financial Services, Inc.v.Beacon Bank

Trademark Trial and Appeal Board

May 26, 2004

No. 91156105 (T.T.A.B. May. 26, 2004)

Wellington Mailed: May 26, 2004
Opposition No. 91156105
Principal Financial
Services, Inc.
v.
Beacon Bank1
Before Quinn, Hairston and Chapman, Administrative Trademark
Judges.
By the Board:
Applicant has filed an application to register the
mark:
for “business and consumer banking services” in
International Class 36.2
1 On August 1, 2001, applicant recorded with the Trademark Office
[at reel/frame nos. 2349/0419] its change of name from First
State Bank of Excelsior to Beacon Bank. The caption of this
proceeding is amended to reflect this name change. See TBMP
§ 512.02 (2d ed. June 2003).
2 Application Serial No. 75624099 was filed on January 21, 1999.
An amendment to allege use was filed on August 17, 2001, wherein
applicant alleges a date of first use anywhere and in commerce of
February 1, 1999.
UNITED STATES PATENT AND
TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3514
Opposition No. 91156105
2
Registration has been opposed by Principal Financial
Services, Inc. (“opposer”) under Section 2(d) of the
Trademark Act, 15 U.S.C. Section 1052(d), on the ground that
applicant’s mark is “confusingly similar to opposer’s family
of (triangular) design marks” and is “likely to cause
confusion, deception and mistake among purchasers.” The
“family of triangular design marks” that opposer relies on
is comprised of the following registered and applied-for
marks:
for “administering and marketing mutual funds and
securities” in International Class 36;3
for “consulting and contract management services to
health maintenance organizations and preferred provider
organizations” in International Class 35; “arranging for
prepaid medical care for others” in International Class 36;
and “health care services rendered through preferred
provider organizations and health maintenance organizations”
in International Class 42;4
3 Registration No. 1435905 issued on April 7, 1987 with a date of
first use anywhere and in commerce of March 5, 1986. The Section
8 affidavit was accepted.
4 Registration No. 1504246 issued on September 13, 1988 with a
date of first use anywhere and in commerce of September 5, 1985.
The Section 8 affidavit was accepted.
Opposition No. 91156105
3
for “life, health, accident and casualty insurance and
reinsurance underwriting and brokerage services;
underwriting, administering and managing annuities and
pension funds for others; variable life insurance and
variable annuities funded through a variety of funding
media” in International Class 36;5
for “life, health, accident and casualty insurance
underwriting services, investment management services,
administering annuities, mutual funds, pensions and income
programs for others, registered investment advisory services
and broker-dealer securities services” in International
Class 36;6
for “life, health, accident and casualty insurance
underwriting services, investment management services,
administering annuities, mutual funds, pensions and income
programs for others, registered investment advisory services
and broker-dealer securities services” in International
Class 36;7
5 Registration No. 1508542 issued on October 11, 1988 with a date
of first use anywhere and in commerce of September 5, 1985. The
Section 8 affidavit was accepted.
6 Registration No. 1530022 issued on March 14, 1989 with a date
of first use anywhere and in commerce of September 5, 1985. The
Section 8 affidavit was accepted.
7 Registration No. 1530023 issued on March 14, 1989 with a date
of first use anywhere and in commerce of September 22, 1985. The
Section 8 affidavit was accepted. The mark in the drawing is
lined for the color blue, which is a feature of the mark.
Opposition No. 91156105
4
for “life, health, accident and casualty insurance
underwriting services, investment management services,
administering annuities, mutual funds, pensions and income
programs for others, registered investment advisory services
and broker-dealer securities services” in International
Class 36;8
for “real estate leasing and management services” in
International Class 36;9 and
for “financial analysis and consulting, financial investment
in the field of securities for others and securities
brokerage services; life, health, accident and casualty
insurance and reinsurance underwriting and insurance and
investment brokerage services; underwriting, investment
management and distribution of annuities and pension funds
for others; underwriting variable life insurance and
underwriting, investment management and distribution of
variable annuities funded through a variety of funding
media; commercial and residential real estate services,
namely, brokerage, investment, management, mortgage loan,
and financial valuation services; investment management
services, investment management and distribution of mutual
funds and income programs for others, investment advice and
consultation services and security brokerage services; real
estate leasing and management services; financial services,
8 Registration No. 1531199 issued on March 21, 1989 with a date
of first use anywhere and in commerce of September 22, 1985. The
Section 8 affidavit was accepted. The mark in the drawing is
lined for the color blue, which is a feature of the mark.
9 Registration No. 1698013 issued on June 30, 1992 with a date of
first use anywhere and in commerce of December 1, 1985. The
Section 8 affidavit was accepted; renewed.
Opposition No. 91156105
5
namely, administration of healthcare plans and insurance
claims administration for healthcare plans” in International
Class 36.10
Opposer also specifically alleges, inter alia, in the
notice of opposition that “through its licensees,
subsidiaries and predecessors-in-interest, [opposer] is
using and has used its (triangular) design marks worldwide
since at least as early as 1985 for a wide variety of
services”; that these services “include but are not limited
to banking services and financial investment services”; that
these services are “marketed and sold through various
distribution channels” and “as such, opposer sells,
distributes and promotes its services to the general
public”; that “long prior to applicant's filing of its
application to register the BEACON & (triangular) Design
mark, opposer, through its licensees, subsidiaries and
predecessors-in-interest, has used opposer's family of
(triangular) design marks in interstate commerce in
connection with opposer's goods and services”; and that
applicant is using the color blue in connection with its
proposed mark and two of opposer’s pleaded registrations,
namely, Registration Nos. 1530023 and 1531199, claim the
color blue as a feature of the mark.
10 Application Serial No. 76423430 was filed June 20, 2002, with
an allegation of a date of first use anywhere and in commerce of
November 1, 1985. The application is pending and was published
in the Official Gazette for opposition on April 27, 2004.
Opposition No. 91156105
6
Applicant, in its answer, admitted “the existence of
[opposer’s] cited registrations and pending application”;
that “applicant is using the color blue in connection with
[applicant’s mark]”; and that “of opposer’s federal
registrations for its family of (triangular) design marks,
both Reg. No. 1530023 and Reg. No. 1531199 claim the color
blue as a feature of the mark.” Applicant otherwise denied
the remaining allegations in the notice of opposition.
This case now comes up for consideration of opposer’s
motion (filed January 12, 2004) for summary judgment on the
issue of likelihood of confusion. The parties have briefed
the motion. In order to expedite our decision, the Board
presumes familiarity with the issues presented and does not
provide a complete recitation of the allegations and
contentions of each party.
In its motion, opposer asserts that on November 14,
2003, it served discovery requests, including requests for
admissions, on applicant; that applicant has not responded
to these discovery requests; and, therefore, the requests
for admissions are deemed admitted by applicant under Fed.
R. Civ. P. 36. [A copy of opposer’s requests for admissions
is attached to the motion]. Opposer argues that these
admissions by applicant include admissions that “[a]pplicant
is aware of instances or occurrences of actual consumer
confusion between [the parties marks]”; that both parties
Opposition No. 91156105
7
offer the same services, namely, “consumer and mortgage
loan, credit card, checking and savings account,
construction, and business loan services” in connection with
their respective marks; that “[a]pplicant was aware of
opposer's (triangular) Design marks prior to filing [the
subject application]”; that applicant's proposed mark is
similar in appearance to opposer's “(triangular) design
marks”; that opposer has used its (triangular) Design marks
since at least as early as 1985; and that opposer's
“(triangular) design marks” are famous.
In addition, opposer notes that applicant made the
previously discussed admissions in its answer to the notice
of opposition. And, based on the admissions in the answer
and those deemed by Rule 36 to be admitted, opposer
concludes that there is no genuine issue of material fact in
this case as to any of the relevant factors pertaining to
likelihood of confusion; and that opposer is entitled to
judgment as a matter of law.
In response to the motion, applicant does not offer
substantive arguments as to why judgment as a matter of law
should not be entered in opposer’s favor. Indeed, applicant
does not contend that a genuine issue of material fact
remains. Instead, applicant argues in its response that it
believed “an understanding had been reached with opposer’s
attorney that all discovery would be deferred.” Applicant
Opposition No. 91156105
8
refers to a letter (dated November 5, 2003) from opposer’s
counsel to applicant’s counsel and a consented motion for
extension of time (filed by opposer on November 7, 2003).
Applicant states that it was its understanding that “all
discovery, including any discovery responses, would be
deferred until after the holidays with a schedule to be
determined.” Applicant further states that opposer’s
discovery requests (including the admission requests relied
on in the summary judgment motion) were “served during the
extended discovery period and the undersigned would not have
consented to the extension without the described
understanding as to the deferral.” Applicant does not seek
leave to withdraw or amend any admissions effectively
admitted under Fed. R. Civ. P. 36 but requests that the
summary judgment motion be denied.
Opposer filed a reply brief wherein it states that
applicant “had no reasonable basis to believe that there was
any agreement to ‘defer discovery.’” Opposer states that
counsel for the parties “spoke regarding an extension of the
discovery period on November 5, 2003, in order to allow time
to complete discovery.” [Italics in original]. Opposer
states that its letter to applicant’s counsel (dated
November 5, 2003) and its consented motion (filed November
7, 2003) make it “quite clear” that “the actual intent was
simply to extend the deadline of the discovery period.”
Opposition No. 91156105
9
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). When the moving
party’s motion is supported by evidence sufficient, if
unopposed, to indicate that there is no genuine issue of
material fact and that the moving party is entitled to
judgment, the nonmoving party may not rest on mere denials
or conclusory assertions, but rather must offer countering
evidence, by affidavit or as otherwise provided in Fed. R.
Civ. P. 56, showing that there is a genuine factual dispute
for trial. See Fed. R. Civ. P. 56(e), and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990). In a motion for summary
judgment, the evidentiary record and all reasonable
inferences to be drawn from the undisputed facts must be
viewed in the light most favorable to the nonmoving party.
See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993).
We have carefully considered the parties’ arguments and
evidentiary submissions. For the reasons discussed below,
we find that no genuine issues of material fact exist as to
opposer’s standing, priority, and/or the factors bearing on
Opposition No. 91156105
10
likelihood of confusion, and that opposer is entitled to
judgment as a matter of law on its Section 2(d) claim.
Preliminarily, we turn to opposer’s request to deem its
requests for admission as admitted based on applicant’s
failure to respond to said requests. Fed. R. Civ. P. 36
provides that if a party upon which requests for admission
have been served fails to file a timely response thereto,
the requests will stand admitted (automatically), and may be
relied upon by the propounding party pursuant to 37 CFR §
2.120(j)(3)(i), unless the party upon which the requests
were served is able to show that its failure to timely
respond was the result of excusable neglect; or unless a
motion to withdraw or amend the admissions is filed pursuant
to Rule 36(b), and granted by the Board. See also TBMP §
527.01(d) (2d ed. June 2003).
It is clear that applicant failed to respond to
opposer’s requests for admission. We also find that
applicant has not shown that its failure to respond was the
result of excusable neglect. See TBMP § 407.03(a) (2d ed.
June 2003) regarding failure to timely respond to requests
for admissions, and cases and authorities cited therein.
Applicant’s argument regarding its understanding that
counsel for the parties agreed to “defer” discovery requests
including responses is without basis and lacks logic. The
November 5, 2003 letter from opposer’s counsel to
Opposition No. 91156105
11
applicant’s counsel and opposer’s follow-up, consented
motion for extension of time clearly set forth an
“extension” of the discovery period and make no reference
whatsoever to any “deferral” of any due dates for discovery
responses. The consented motion for extension of time also
sets forth proposed dates for the close of discovery and
testimony periods. If the parties intended to also defer
discovery responses, then clearly the motion’s proposed
resetting of testimony periods to follow shortly after the
close of the discovery deadline infers that there was no
intention to defer discovery. Certainly, at the very least,
upon receiving opposer’s November 5, 2003 letter, the
consented motion to extend and opposer’s discovery requests
(with a demand that responses be filed within thirty days),
applicant was put on notice that there were some
incongruities between its stated understanding of a deferral
of discovery and the fact these papers infer there was no
such deferral. Applicant does not explain why it did not
simply contact opposing counsel to clarify this matter, or
file appropriate motions with the Board.
In view of the above, the requests for admissions
served on applicant stand admitted, including applicant’s
admissions that its mark is similar to opposer’s marks; that
opposer’s mark is famous; that the parties use their
Opposition No. 91156105
12
respective marks in connection with identical services; and
that applicant is aware of instances of actual confusion.
Specifically, as to priority, applicant has admitted
(by way of admission request No. 40) that opposer used its
(triangular) design marks since at least as early as 1985.
Thus, there is no genuine issue that opposer has priority
based on its use since as early as 1985 which precedes
applicant’s claimed date of first use of February 1, 1999.
As to the issue of likelihood of confusion, we also
find no genuine issue of material fact remains for trial.
Based on the record and admissions applicant is deemed to
have admitted, we find that the parties’ respective marks
are similar in appearance; that the parties use their marks
in connection with identical services; that the parties’
services travel are offered through the same trade channels
to the same types of customers; that applicant is aware of
instances of actual confusion between the parties’ marks;
and that opposer’s pleaded marks are famous.
Accordingly, opposer’s motion for summary judgment is
granted, the opposition is sustained, and registration of
applicant’s mark is refused.
* * *