Reliance Standard Life Insurance Companyv.American National Insurance Company

Trademark Trial and Appeal Board

Apr 30, 2012

No. 91178996 (T.T.A.B. Apr. 30, 2012)

Mailed:
April 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Reliance Standard Life Insurance Company

v.

American National Insurance Company
_____

Opposition No. 91178996
to Application Serial No. 78895793
filed on May 30, 2006

_____

Roberta Jacobs-Meadway of Eckert Seamans Cherin & Mellott,
LLC for Reliance Standard Life Insurance Company.

Margaret A. Boulware of Boulware & Valor for American
National Insurance Company.
_____

Before Quinn, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

American National Insurance Company (“applicant”) filed
a use-based application to register the mark BENCHMARK
RELIANCE, in standard character form, for the “issuance and
administration of annuities,” in Class 36.
Reliance Standard Life Insurance Company (“opposer”)
opposed the registration of applicant’s mark on the ground
of likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Opposer alleged
THIS OPINION IS NOT CITABLE
AS A PRECEDENT OF THE
T.T.A.B.
Opposition No. 91178996
2
that it has used the mark RELIANCE STANDARD in connection
with insurance underwriting and issuing and administering
annuities since at least as early as August 1965, a date
prior to any date on which applicant can rely for the first
use of its mark, and that applicant’s use of the mark
BENCHMARK RELIANCE for the “issuance and administration of
annuities” so resembles opposer’s mark RELIANCE STANDARD
for insurance underwriting and issuing and administering
annuities as to be likely to cause confusion. Opposer
pleaded ownership of the registrations listed below:
1. Registration No. 1617943 for the mark RSL RELIANCE
STANDARD LIFE INSURANCE COMPANY, in typed drawing form, for
“life accident and health insurance underwriting services,”
in Class 36;1 and
2. Registration No. 3064739 for the mark RELIANCE
STANDARD, in standard character form, for “insurance
underwriting in the fields of life, health and accident;
financial services in the fields of processing, funding,
underwriting, issuing and administering annuities,” in Class
36.2
Applicant, in its answer, admitted that it “claims no
date earlier than August 25, 2003 for the purpose of
claiming priority,” but denied the remaining salient

1 Issued October 16, 1990; renewed.
2 Issued March 7, 2006; Sections 8 and 15 affidavits accepted and
acknowledged.
Opposition No. 91178996
3
allegations in the notice of opposition. During the course
of the proceeding, applicant filed a counterclaim to cancel
Registration No. 3064739 for the mark RELIANCE STANDARD on
the ground of fraud. Applicant alleged that opposer’s
registration “was procured by Opposer’s knowingly false or
fraudulent statements [to overcome a Section 2(d) likelihood
of confusion refusal] which were made with the intent to
deceive the Patent and Trademark Office into granting
registration” to opposer. Opposer denied the salient
allegations in the counterclaim.
Preliminary Issues
A. Whether likelihood of confusion based on opposer’s use
of the word “Reliance” as a stand alone mark was tried
by express or implied consent?

As noted above, opposer alleged that “[i]t has
continuously used Reliance Standard as its name and mark in
connection with its activities since August 1965” and that
applicant’s mark BENCHMARK RELIANCE so resembles opposer’s
“‘Reliance Standard’ tradename and marks,… that it is likely
to cause confusion, mistake, and/or deception.”3 In its
brief, opposer claimed use of the name and mark “Reliance”
for the first time. Because opposer may not rely on
unpleaded marks, we must determine whether opposer’s attempt
to assert use of RELIANCE as a stand-alone mark was tried by
express or implied consent.

3 Notice of Opposition ¶¶4 and 17.
Opposition No. 91178996
4
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering party (1) raised no
objection to the introduction of
evidence on the issue, and (2) was
fairly apprised that the evidence was
being offered in support of the issue.

TBMP § 507.03(b) (3rd ed. 2011). See also Morgan Creek
Productions Inc. v. Foria International Inc., 91 USPQ2d
1134, 1138 (TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1720-1721 (TTAB 2008); Long John Silver’s Inc.
v. Lou Scharf Inc., 213 USPQ 263, 266 n.6 (TTAB 1982)
(applicant’s objection to the introduction of evidence
regarding an unpleaded issue obviated the need to determine
whether the issue had been tried by implied consent); Boise
Cascade Corp. v. Cascade Coach Co., 168 USPQ 795, 797 (TTAB
1970) (“Generally speaking, there is an implied consent to
contest an issue if there is no objection to the
introduction of evidence on the unpleaded issue, as long as
the adverse party was fairly informed that the evidence went
to the unpleaded issue.”).
The question of whether an issue was
tried by consent is basically one of
fairness. The non-moving party must be
aware that the issue is being tried, and
therefore there should be no doubt on
this matter.

Morgan Creek Productions Inc. v. Foria International Inc.,
91 USPQ2d at 1139.
Opposition No. 91178996
5
During the deposition of David Gittelman, opposer’s
Director of Marketing, Mr. Gittelman answered a series of
questions relating to opposer’s first use of the “Reliance
Standard” name and mark.4 The questioning turned to how
opposer uses the mark.
Q. How does Reliance Standard use the
Reliance Standard name and mark?

A. As a … as a printed brand, if you
will. We use the term Reliance
Standard, so you’ll notice on most
of our printed materials if there’s
a logo present it is a Reliance
Standard logo, and that would be
inclusive of all our operating
divisions. We are known in the
marketplace widely as Reliance. I
mean if you were to speak to one of
our brokers, you know, and you said
who’s your Reliance rep, that’s …
that’s pretty much the - -

Q. Okay.

A. - - the lingo.

Q. And how often does that happen?

A. Daily.5

The only evidence introduced by opposer displaying the
use of the mark RELIANCE is Gittelman deposition exhibit No.
5, a flyer about opposer’s SmartChoice disability coverage
for small business groups.6
Q. And could you identify the bottom
portion as to how Reliance Standard
is marked?

4 Gittelman Dep., p. 12.
5 Gittelman Dep., p. 13.
6 Gittelman Dep., pp. 21-23.
Opposition No. 91178996
6
A. In this particular sheet Reliance
is identified by the mark Reliance,
and then Reliance Standard Life
Insurance Company below that.7

The testimony of David Whitehead, opposer’s Vice
President of Accumulation Products Marketing, relating to
the use of RELIANCE as a stand-alone mark was less definite.
Q. Is Reliance ever used alone, apart
from Reliance Standard?

A. Typically not on formal materials
and forms, but is used frequently.
Somebody will refer to Reliance
instead of Reliance Standard or
instead of Reliance Standard life.
If I get a phone call from one of
our agencies or I’m talking to one
of our agencies, they may say hey,
we really like that Reliance
product, that Reliance X, Y, Z
product, okay. So it’s not used
formally on our materials but it is
used in discussions and is - - we
are referred to by a number of our,
you know, agencies and producers at
different points in time.8

Applicant did not object to the above-noted testimony
or object to the introduction of Gittelman Exhibit 6
relating to the use of RELIANCE as a stand-alone mark. In
its brief, applicant acknowledged that opposer was claiming
rights in the “marks RELIANCE and RELIANCE STANDARD for
annuities.”9
The issue is whether the mark BENCHMARK
RELIANCE … is likely to cause confusion
with Opposer, Reliance Standard Life

7 Gittelman Dep., p. 23.
8 Gittelman Dep., p. 11.
9 Applicant’s Brief, p. 1.
Opposition No. 91178996
7
Insurance’s marks RELIANCE and RELIANCE
STANDARD for annuities … 10

In view of the fact that applicant expressly
acknowledged that opposer was claiming use of RELIANCE as a
stand-alone mark, we deem opposer’s notice of opposition
amended to assert RELIANCE as a stand-alone mark under
Fed.R.Civ.P. 15(b)(2).
B. Opposer’s motion to strike applicant’s evidence of
third-party use.

In response to opposer’s Interrogatory No. 16,
requesting applicant to identify all known third parties
using the word “Reliance” as a part of a mark in connection
with annuities, insurance and other financial services,
applicant identified Reliance Insurance Group, Reliance
National Indemnity of Pennsylvania, American Select –
Reliance Ultimate Choice, Reliance Management, Equity
Reliance Group, Old Reliance Insurance Company, and Reliance
Mortgage Group. In addition, applicant identified twelve
third-party marks with the word “Reliance.”
In response to opposer’s request for production of
documents No. 14, requesting documents identifying third
parties using the term “Reliance” in connection with
financial services, applicant stated that it “will produce
responsive, non-privileged, non-confidential documents that

10 Applicant’s Brief, p. 1.
Opposition No. 91178996
8
are in its possession, custody or control.” However,
applicant did not produce any documents.
At trial, applicant introduced a certificate of
licensure for Reliance Insurance Group LLC (printed from the
Internet on August 9, 2010),11 an A.M. Best Company
financial rating for Old Reliance Insurance Company
(copyright 2009),12 an excerpt from the Reliance Insurance
Group website (printed on August 3, 2010),13 an excerpt from
the Reliance Wealth & Trust Partners website (printed on
August 17, 2010),14 an excerpt from the Reliance Financial
Group website (printed on August 17, 2010),15 and an excerpt
from the Reliance Trust website (printed on August 17,
2010).16
Opposer objected to the introduction of those exhibits
during the depositions of George Crume and Christina Hodges-
Eaken and reasserted the objection in a motion to strike the
exhibits filed with its brief on the ground that applicant
never produced any evidence of third-party use of the term
“Reliance” during discovery.
It is not clear from the record when or why applicant
obtained the A.M. Best Company financial rating for Old

11 Crume Dep., Exhibit 13.
12 Crume Dep., Exhibit 14.
13 Hodges-Eaken Dep., Exhibit 20.
14 Hodges-Eaken Dep., Exhibit 21.
15 Hodges-Eaken Dep., Exhibit 22.
16 Hodges-Eaken Dep., Exhibit 23.

Opposition No. 91178996
9
Reliance Insurance Company. Nonetheless, we admit the A.M.
Best Company financial report for Old Reliance Insurance
Company, because applicant identified that company in its
response to opposer’s interrogatory No. 16, thereby
minimizing any surprise or prejudice to opposer. With the
exception of the A.M. Best Company report, it is clear that
the other objected-to documents were obtained by applicant
in preparation for its testimony and were not responsive
documents that were already within its possession or control
when applicant was responding to document requests.
While a party need not investigate third-party use in
response to discovery requests, Rocket Trademarks Pty Ltd.
v. Phard S.p.A., 98 USPQ2d 1066, 1071 (TTAB 2011); Sports
Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d
1782, 1783 (TTAB 2001), applicant’s initial interrogatory
response suggests that it had indeed made at least some such
investigation. It seems highly unlikely that it could have
identified several third-party users of “Reliance” by name
without having some documentation concerning each. Its
concurrent responses to the related document request
promised that it would produce responsive documents, but
applicant never did. Instead, applicant introduced
documents concerning third-party use only after discovery as
exhibits during testimonial depositions.
Opposition No. 91178996
10
However, a failure to discharge one’s duty to
supplement under Rule 26(e)(1) does not automatically
require a sanction, such as striking of proffered evidence,
unless the other party was prejudiced. In Rocket Trademarks
Pty Ltd. v. Phard S.p.A., we previously overruled a similar
objection in similar circumstances because the opposer in
that case had an opportunity to eliminate or minimize any
prejudice during its later rebuttal testimony period:
Opposer's objection, in essence, is that
it was somehow prejudiced by not having
the documents produced earlier in
response to its discovery requests.
However, opposer was not put at a
disadvantage.

Again, applicant had no duty to conduct
an investigation of third-party use
during discovery and, certainly,
applicant's attempt to present evidence
of third-party use of the term ELEMENT
should not have come as a surprise
because it is common practice to
introduce third-party use to demonstrate
that a mark is weak and, therefore,
entitled to only a narrow scope of
protection. The documents introduced as
exhibits to Ms. Fuchs’ deposition were
equally accessible to opposer, i.e.,
they were publicly available via the
internet. Finally, opposer had thirty
days between the close of applicant's
testimony period and the opening of its
rebuttal period to prepare any rebuttal
against the evidence of third-party use.
Accordingly, opposer's objection to the
Fuchs’ testimony deposition exhibits on
the basis that the documents were not
previously produced in response to
opposer's discovery requests is
overruled.

98 USPQ2d at 1071-1072.
Opposition No. 91178996
11
That analysis applies here as well.17 While we do not
condone applicant’s apparent failure to timely supplement
discovery responses, the lack of prejudice leads us to
overrule opposer’s objection to applicant’s evidence of
third-party use. The above-noted exhibits will be
considered for whatever probative value they may have
(which, as we explain infra, is minimal).
C. Applicant’s objection to opposer’s Internet evidence.
Applicant filed a motion to strike opposer’s notice of
reliance introducing into evidence printouts from websites
on the ground that such printouts are not permitted under
Trademark Rule 2.122(e), 37 CFR § 2.122(e). Applicant’s
motion is not well taken. The Board now permits documents
obtained from the Internet to be introduced into evidence
via a notice of reliance. Safer Inc. v. OMS Investments
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (“if a document
obtained from the Internet identifies its date of

17 We are not holding that a party’s duty to supplement its
discovery responses expires when its testimony period begins.
While it is true that applicant could have supplemented its
responses immediately prior to introducing the material at trial,
that would scarcely have made a significant difference in the
conduct of applicant’s testimony period. If opposer believed
that it was critical to possess this type of material prior to
the opening of applicant’s testimony period, it could have sought
the information through its own means, for it was equally
accessible to opposer and applicant prior to trial. In addition,
we note that this case has proceeded under the rules that govern
cases commenced prior to November 1, 2007, which do not require a
party to make pretrial disclosure of the evidence it plans to
produce at trial. Therefore, we discern no significant prejudice
to opposer by applicant’s failure to supplement its responses
immediately prior to introducing the material at trial.
Opposition No. 91178996
12
publication or date that it was accessed and printed, and
its source (e.g., the URL), it may be admitted into evidence
pursuant to a notice of reliance in the same manner as a
printed publication in general circulation in accordance
with Trademark Rule 2.122(e)) (emphasis in the original).
Applicant’s motion to strike opposer’s notice of reliance
introducing into evidence printouts obtained from the
Internet is denied.
The Record
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the application file
for applicant’s mark and the application file for opposer’s
pleaded registration for which applicant seeks cancellation.
The record also includes the following evidence:
A. Opposer’s Evidence.
1. Testimony deposition of David Gittelman, opposer’s
Director of Marketing, with attached exhibits;
2. Testimony deposition of David Whitehead, opposer’s
Vice President of Accumulation Products Marketing, with
attached exhibits;
3. Testimony deposition of John F. Metzger, a legal
assistant in opposer’s counsel’s law firm, with attached
exhibits;
4. Notice of reliance on certified copies of
opposer’s pleaded registrations prepared and issued by the
Opposition No. 91178996
13
United States Patent and Trademark Office showing both the
current status of and current title to the registrations;
5. Notices of reliance on applicant’s responses to
opposer’s interrogatory Nos. 12, 14 and 15;
6. Notices of reliance on applicant’s responses to
opposer’s requests for admission;
7. Notice of reliance on dictionary definitions for
the words “benchmark” and standard”;
8. Notice of reliance on copies of third-party
registrations purporting “to show the nature and extent of
the use of the term ‘benchmark’”;
9. Notice of reliance on copies of third-party
registrations purporting “to show the relatedness of
‘annuities’ and employee benefits programs and products”;
10. Notice of reliance on copies of printed
publications purporting “to establish descriptive use of the
term ‘benchmark’ in relation to annuities”;
11. Notice of reliance on copies of printouts from
websites purporting “to establish that companies advertise
or market both annuities and employee benefit plans to
members of the general public, and that colleges and
universities offer annuities as part of benefit packages”;
12. Notice of reliance on copies of printed
publications purporting “to establish use of the ‘RELIANCE
Opposition No. 91178996
14
STANDARD’ name and mark by persons in the relevant trade to
refer to Opposer and its services”; and
13. Notice of reliance on third-party registrations
purporting “to show the relatedness of ‘annuities’ and
insurance products and services.”
B. Applicant’s evidence.
1. Testimony deposition of Christina L. Hodges-Eaken,
the Vice President for Compliance for Legacy Marketing
Group, a business partner of applicant in the field of
developing and marketing annuity programs, with attached
exhibits;
2. Testimony deposition of George C. Crume, Sr.,
applicant’s Vice President of Brokerage Sales, with attached
exhibits;
3. Applicant’s notice of reliance on the following
items:
a. Copies of third-party registrations for marks
incorporating the word “Reliance” for
financial services in Class 36;
b. Opposer’s responses to applicant’s
interrogatories;
c. Opposer’s responses to applicant’s requests
for admission;
d. Copies of the file histories for opposer’s
pleaded registrations;
Opposition No. 91178996
15
e. Copies of materials from the LexisNexis
database purportedly to show “usage and
adoption of the term ‘Reliance’ in the
marketplace by other third parties”;
f. Copies of materials from the LexisNexis
database purportedly to show “the reputation,
goodwill and recognition of Applicant
American National Insurance Company in the
market place”;
g. Copy of the New Jersey certificate of
licensure for Reliance Insurance Group, LLC
purportedly to show “usage and adoption of
the term ‘Reliance’ in the marketplace by
other third parties”; and
4. Notice of reliance on third-party registrations
registered for annuities but not with employee or group
benefits purportedly “to show that annuities are not related
to employee or group benefits in the marketplace.”
Counterclaim to Cancel Registration No. 3064739
for the mark RELIANCE STANDARD

Standing

Applicant has standing to assert its counterclaim for
cancellation based on opposer's assertion of Registration
No. 3064739 against applicant in its opposition to the
application. Ohio State University v. Ohio University, 51
USPQ2d 1289, 1293 (TTAB 1999) (“[A]pplicant's standing to
Opposition No. 91178996
16
assert the counterclaim arises from applicant's position as
a defendant in the opposition and cancellation initiated by
opposer”).
Fraud
Applicant bears the burden of proving the elements of
fraud by clear and convincing evidence. Any doubt must be
resolved against applicant as the charging party. In re
Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir.
2009). During the prosecution of opposer’s application to
register the mark RELIANCE STANDARD, the examining attorney
refused to register opposer’s mark on the ground of
likelihood of confusion with, inter alia, Registration No.
2297714 for the mark RELIANCE CAPITAL MANAGEMENT, owned by
an unrelated third party, for “financial services in the
nature of investment management and research,” in Class 36.
Opposer’s specimen showing use of the mark RELIANCE
STANDARD for “insurance underwriting in the fields of life,
health and accident; financial services in the fields of
processing, funding, underwriting, issuing and administering
annuities” was a copy of its homepage (rsli.com/home)
printed on February 19, 2004. The homepage provided the
following information (Emphasis added):
Reliance Standard underwrites a variety
of group coverages that are incorporated
into basic employee benefit packages
including group life, group disability
income, personal accidental death and
dismemberment, integrated disability,
Opposition No. 91178996
17
administrative services, group dental
and vision. Reliance Standard offers a
complete portfolio of fixed rate annuity
products to individuals.

To support the likelihood of confusion refusal, the
examining attorney argued that the “marks are virtually
identical” and “[t]he [opposer], as well as the registrants
in the aforementioned marks,18 use their marks for financial
investment and underwriting services.”19
In response to the likelihood of confusion refusal,
opposer made the following arguments (Emphasis added):
The differences in [Opposer’s] mark
RELIANCE STANDARD and registrant’s mark
RELIANCE CAPITAL MANAGEMENT taken
together with the differences in the
goods and services, the sophistication
of the purchasers and the differences in
the trade channels all preclude a
reasonable likelihood of confusion.20 …

The goods and services in question are
not related and would not be encountered
by the same purchasers in situations
that would give rise to an incorrect
assumption as to the source of the goods
and services. … [Opposer] sells group
insurance and annuity goods and services
to employers for inclusion into those
employers’ employee benefits programs,
and has sold such goods and services for
over 90 years. In contrast, registrant
offers investment management and
research. A person seeking an

18 The examining attorney cited five (5) registrations as bars to
registration.
19 September 27, 2004 Office Action.
20 Subsequently in the response, opposer concluded its argument
stating that “[g]iven the above factors, there is no reasonable
likelihood of confusion between [opposer’s] mark and registrant’s
mark, notwithstanding the similarity between the marks
themselves.” (Emphasis added).
Opposition No. 91178996
18
investment manager or advisor would not
encounter employer sponsored insurance
products, and likewise, a company
executive seeking corporate insurance
products would not encounter an
investment manager’s or advisor’s goods
and services. Because the goods and
services are not related, a purchaser
would not be confused as to their
source.

[Opposer] and registrant have different
purchasers and market their goods and
services in different ways, further
decreasing any possible likelihood of
confusion. … [Opposer] markets the
goods and services under its mark to
company executives responsible for
employee benefit programs, while
registrant would, based upon the goods
and services described in the
registration, market its goods and
services [sic] financial institutions
and investment advisors.

… The purchasers of the goods and
services under [opposer’s] and
registrants’ marks are not impulse
buyers, but are highly sophisticated
professionals buying specialized
products. The purchasers of [opposer’s]
and registrant’s goods and services
would purchase only after a process of
evaluation, negotiation and
consideration, therefore, removing any
reasonable likelihood of confusion as to
the source of the goods and services in
question.21

After receipt of opposer’s response to the Office
action, the examining attorney withdrew the Section 2(d)
refusal and approved the mark in opposer’s application for
publication.
Opposition No. 91178996
19
The essence of applicant’s fraud claim is set forth in
paragraph No. 14 of its amended counterclaim:
Opposer knew at the time of filing its
response to [sic] office action and even
several years later as stated in the
declarations of Mssrs. Whitehead and
Gittelman that its annuities services
were not offered to employers but only
to individuals. Despite always knowing
that its annuities goods and services
were offered only to individuals,
Opposer knowingly argued that its
annuities services were sold to
employers. Opposer did not represent
the truth to the Patent and Trademark
Office that it sells annuity services to
individuals and that its annuity
services are not sold to employers.

The relevant standard for proving fraud, set forth in
In re Bose Corp. requires clear and convincing proof of the
following four elements:
(1) applicant/registrant made a false representation
to the USPTO;
(2) the false representation is material to the
registrability of a mark;
(3) applicant/registrant had knowledge of the falsity
of the representation; and
(4) applicant/registrant made the representation with
intent to deceive the USPTO.
In re Bose Corp., 91 USPQ2d at 1941. As explained below, we
find that opposer did indeed make material false statements

21 Opposer’s January 25, 2005 response, pp. 3-5, to the September
27, 2004 Office Action in the file for Registration No. 3064739.
Opposition No. 91178996
20
to the examining attorney, and that opposer knew they were
false. We have enough doubt as to opposer’s intent to
deceive, however, that the fraud claim must fail.
A. Whether opposer made a false representation to the
USPTO?

Applicant contends that opposer’s arguments that it was
selling annuities to employers as part of a package of
employee benefits is a false statement because opposer was
also offering its annuities to individuals. In its brief,
applicant specifically references Paragraph No. 27 in the
Declaration of David Whitehead, opposer’s Vice President of
Accumulation Products Marketing.22 (Emphasis added).
[Opposer] and other companies, including
[applicant], sell annuities and other
financial products through IMOs. IMOs
are independent, that is not affiliated
with a carrier, and usually offer
through their agents annuity products
from several insurance carriers. The
agents who sell annuity products to
individuals work with one or more IMOs
and rely on them for assistance and
expertise when deciding what products to
offer their clients.

In addition, we note that Mr. Whitehead declared that
opposer’s “annuities are marketed and sold to individuals”23
“through insurance agents by intermediaries commonly
referred to as IMOs.”24 In this regard, Mr. Whitehead

22 Whitehead Dep., Exhibit 16. The Declaration was introduced
into evidence in Mr. Whitehead’s deposition.
23 Id. at ¶24.
24 Id. at ¶23.
Opposition No. 91178996
21
provided an example of how an individual consumer could
encounter the annuities of both parties:
31. It is reasonable to assume that
individuals who have been exposed to
[opposer’s] benefits and Absence
Solutions® products and advertising for
them are likely to also be exposed to
[opposer’s] annuities, and annuities of
other competitors, including
[applicant]. It is likely that this
will happen in a variety of contexts.
By way of example only, this can happen
when an individual employed by an
employer that offers [opposer’s] benefit
coverages encounters a situation where
he or she has assets to invest (from
rolling over a 401k, an inheritance,
sale of a home, etc.) and meets with an
agent who offers annuity products
underwritten by [opposer] or
[applicant]. This exposure could also
occur where a company executive charged
with selecting the company’s employee
benefits coverages subsequently seeks to
invest his or her own individual assets.
In a number of instances, the annuity
products could be offered by the same
agent who offers and markets the benefit
coverages, or alternatively by a
separate agent.25

Mr. Whitehead also testified that “all annuity
contracts are sold by licensed insurance agents to
individuals”26 and “[t]hose independent agents then go out
to the kitchen table or wherever else … you know, wherever
else they meet their customers and talk about our annuity
products and then ultimately take an application and submit

25 Id. at ¶31.
26 Whitehead Dep., p. 12.

Opposition No. 91178996
22
it to” [opposer].27 Mr. Whitehead identified the ultimate
customer as an individual.28 Mr. Whitehead later clarified
that opposer does not market directly to individuals; it
markets to independent agencies and agents who market
directly to individuals.29 However, Mr. Whitehead confirmed
that opposer prepares point-of-sale materials the
independent agents may use with individual customers.30 In
this regard, Mr. Whitehead referenced opposer’s website with
links for employers, brokers/agents, and employees and
individuals (“it talks about the fact that as an individual
you may have an insurance policy through work or you may be
interested in purchasing a fixed or indexed annuity for
retirement savings”).31
Opposer argues to the contrary that none of the
statements in its application was false, reciting facts
relating to opposer’s sales of group benefits packages and
annuities.32 Opposer provides the following explanation as
to why its arguments in the application were not false:
None of the facts above stated alters
the fact or contradicts the fact that
persons seeking investment managers are
not looking for employer sponsored
insurance products. None of the facts
above stated alters the fact or
contradicts the fact the company

27 Id. at p. 17.
28 Id.
29 Id. at p. 28.
30 Id. at pp. 28-29 and Exhibits 4-6.
31 Id. at p. 35 and Exhibit 7.
32 Opposer’s Rebuttal Brief, pp. 6-8.
Opposition No. 91178996
23
executives seeking corporate insurance
products would not be looking to
investment advisors. None of the facts
above stated alters the fact that
[opposer] markets the goods and services
under its mark to company executives
responsible for employee benefits. It
does this and it does not market its
goods and services to financial
institutions as such or to investment
advisors, as would the owner of the
registration cited in the prosecution of
the application for [RELIANCE CAPITAL
MANAGEMENT cited as a bar to
registration]. [Applicant] certainly
presents no evidence to the contrary
either of independent investment
managers regularly working with
individuals or others through
individuals or others through employee
benefits programs, or of the corporate
executives who deal with insurance
benefits retaining outside investment
advisors in connection with such
benefits programs.33

Opposer is correct to the extent that in response to
the likelihood of confusion refusal it accurately argued
that it “sells group insurance and annuity goods and
services to employers for inclusion into those employers’
employee benefits programs.” However, opposer’s argument is
based on the false premise that it only sells group
insurance and annuities through employee benefits programs
as part of an employee benefits package. The evidence of
record is unequivocal that opposer sells annuities to
individuals through independent agents and brokers. Opposer
even prepares point-of-sale materials for individuals and

33 Opposer’s Rebuttal Brief, p. 8.
Opposition No. 91178996
24
has a link on its website for individuals to access.34
Thus, by telling a half-truth in its response to the Office
Action (i.e., that opposer renders its services to company
executives in connection with employer benefits programs and
omitting opposer’s sales of annuities to individuals through
independent agents and brokers), opposer made false
statements that were likely to mislead the examining
attorney to believe that opposer does not sell annuities to
individuals. See General Electro Music Corp. v. Samick
Music Corp., 19 F.3d 1405, 30 USPQ2d 1149, 1154 (Fed. Cir.
1994) (submission of a false or misleading statement is
usually sufficient to support conclusion that statement was
made with the intent to deceive); Swiss Watch International
Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d
1731, 1746 (TTAB 2012) (deliberately omitting relevant
portions of a document, or making a statement that, while
true, gives only part of the story is an act deliberately
designed to mislead and may be treated as a false statement
in its effect and also to show the necessary element of
intent).
B. Whether opposer had knowledge of the falsity of the
representation?

Opposer knew that it rendered its annuity services to
individuals and, therefore, it also knew that its statements

34 Whitehead Dep., pp. 28-30; Exhibits 4-7.

Opposition No. 91178996
25
that it “sells group insurance and annuity goods and
services to employers for inclusion into those employers’
employee benefits programs” was only half true and
misleading. Moreover, opposer does not contest the fact
that it knew it rendered its annuity services to
individuals.
We note that the false statements at issue were
attorney argument. Nevertheless, it is well settled that a
client is bound by the actions of its attorney. See
HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d
1902, 1906 (TTAB 2008) (opposer’s counsel improperly
prevented a deposition from going forward and, in this
instance, counsel’s conduct is attributable to opposer as a
party); CTRL Systems Inc. v. Ultraphonics of North America
Inc., 52 USPQ2d 1300, 1302 (TTAB 1999) (“communication
between the client and attorney is a two-way affair”). As
stated by the Supreme Court in Link v. Wabash Railroad, 370
U.S. 626, 633-634 (1962):
[T]here is certainly no merit to the
contention that dismissal of
petitioner's claim because of his
counsel's unexcused conduct imposes an
unjust penalty on the client.
Petitioner voluntarily chose this
attorney as his representative in the
action, and he can not now avoid the
consequences of the acts or omissions of
this freely selected agent. Any other
notion would be wholly inconsistent with
our system of representative litigation,
which each party is deemed bound by the
acts of his lawyer-agent and is
Opposition No. 91178996
26
considered to have notice of all facts,
notice of which can be charged upon the
attorney.

In any event, Mr. Charles Denaro, opposer’s Vice
President, Secretary and Deputy General Counsel, advised
counsel in preparing the response to the likelihood of
confusion refusal.35 Accordingly, the false statements were
not an honest mistake regarding opposer’s channels of trade
and classes of consumers, and at no point does opposer
contend to the contrary.
C. Whether the false representation was material to the
registrability of opposer’s mark?

Opposer’s false statements are material because they
address the channels of trade and classes of consumers to
whom opposer renders its services and were made to overcome
a substantive refusal to register its mark. Opposer argued,
in essence, in its response to the likelihood of confusion
refusal, that because its services are rendered to company
executives in connection with employer benefits programs
(and not to individuals through independent agents and
brokers), opposer’s “insurance underwriting in the fields of
life, health and accident; financial services in the fields
of processing, funding, underwriting, issuing and
administering annuities” would not be encountered by the
same consumers interested in the cited registrant’s

35 Opposer’s answers to applicant’s third set of interrogatories
Nos. 19-22.
Opposition No. 91178996
27
“financial services in the nature of investment management
and research” and, therefore, confusion would be unlikely.
Opposer’s false statements are material because they form
the basis of opposer’s contention that its services and the
services in the cited registration move in different
channels of trade and are sold to different classes of
consumers thereby avoiding a likelihood of confusion.
Opposer argues that the false statements were not
material because they were based on the differences between
group benefits products and investment management and
research services and they did not reference opposer’s sales
of annuities to individuals who may or may not need
investment management and research services. With respect
to its failure to address the sales of annuities to
individuals, opposer argues that “the sale of annuities to
individuals was not in question during the Office action
response. [Opposer] had already disclosed its sale of
annuities to individuals at the time it applied for
registration of its mark” referencing its specimen of use
noted above.36
Opposer’s argument is based in part on the fact that in
the September 27, 2004 Office Action refusing registration,
the examining attorney argued that “[t]he [opposer], as well
as the registrants [there were 5 cited registrations] in the

36 Opposer’s Rebuttal Brief, pp. 9-10.
Opposition No. 91178996
28
aforementioned marks, use their marks for financial
investment and underwriting services.” However cursory the
analysis of the relatedness of the services presented in the
Office Action, there is no basis for opposer’s contention
that the examining attorney removed annuity services from
consideration in the likelihood of confusion analysis.
Opposer’s annuity services were identified as “financial
services in the fields of processing, funding, underwriting,
issuing and administering annuities” and, thus, they fall
within the penumbra of both financial investment and
underwriting services.
Likewise, opposer’s statement in the specimen of use
that it “offers a complete portfolio of fixed rate annuity
products to individuals” does not remove the annuity
services from the likelihood of confusion analysis pending
before the examining attorney. In this regard, we note that
opposer argued that it “sells group insurance and annuity
goods and services to employers for inclusion into those
employers’ employee benefits programs.” There was no reason
for opposer to reference annuities in its response if
opposer believed that the use of its mark in connection with
those services was not at issue.
We view the false statements made by opposer as
material because they were made in response to the refusal
to register and presumably led the examining attorney to
Opposition No. 91178996
29
withdraw the likelihood of confusion refusal and approve
opposer’s application for publication.37
D. Whether opposer made the representation with intent to
deceive the USPTO?

On the record before us, however, we have doubts about
whether opposer intended to deceive the PTO. Opposer argues
that it did not intend to deceive as evidenced by the fact
that it “fully disclosed the nature of its business,
including the sale of annuities to individuals, to the
USPTO.”38 As indicated above, opposer submitted as its
specimen of use an excerpt from its website indicating that
it “offers a complete portfolio of fixed rate annuity
products to individuals.” Although our experience tells us
that opposer intended to mislead the examining attorney by
arguing that opposer “sells group insurance and annuity
goods and services to employers for inclusion into those
employers’ employee benefits programs,” the specimen raises
doubt as to opposer’s intent to deceive.
Because opposer’s specimen of use expressly states that
opposer “offers a complete portfolio of fixed rate annuity
products to individuals,” we must presume that the examining
attorney was aware of that statement when considering
opposer’s right to registration. Under these circumstances,

37 We acknowledge that a refusal to register may be withdrawn for
various reasons, but find the examining attorney’s reliance on
opposer’s argument, as applicant, to be the most plausible.
38 Opposer’s Rebuttal Brief, p. 10.
Opposition No. 91178996
30
we cannot logically find that there was a willful
withholding of facts which, if transmitted and disclosed to
the examining attorney, would have resulted in the
disallowance of the registration sought by opposer. See
Menzies v. International Playtex, Inc., 204 USPQ 297, 305
(TTAB 1979).
E. Conclusion.
A party seeking cancellation of a trademark
registration for fraudulent procurement bears a heavy burden
of proof. Bose, 91 USPQ2d at 1939. Indeed, “the very
nature of the charge of fraud requires that it be proven ‘to
the hilt’ with clear and convincing evidence. There is no
room for speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging party.”
Bose, 91 USPQ2d at 1940, quoting Smith Int'l, Inc. v. Olin
Corp., 209 USPQ 1033, 1044 (TTAB 1981).
After reviewing opposer’s application file, the
evidence of record, and the arguments in the briefs, we find
that opposer’s false statements regarding its channels of
trade and classes of consumers in connection with its
annuities were not occasioned by a misunderstanding, an
inadvertence, or a mere negligent omission, and were
material to the examination of opposer’s application.
However, applicant failed to meet its burden of proving by
clear and convincing evidence that opposer’s false
Opposition No. 91178996
31
statements were made with intent to deceive the USPTO during
the prosecution of opposer’s application for registration.
In view of the foregoing, applicant’s counterclaim to
cancel opposer’s Registration No. 3064739 for the mark
RELIANCE STANDARD, in standard character form, for
“insurance underwriting in the fields of life, health and
accident; financial services in the fields of processing,
funding, underwriting, issuing and administering annuities”
is dismissed.
Likelihood of Confusion
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing.39 Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 213 USPQ at 189.

39 Even if we had granted applicant’s counterclaim to cancel
Registration No. 3064739, opposer still proved its standing in
connection with the common law mark RELIANCE STANDARD. David
Whitehead, opposer’s Vice President of Accumulation Products
Marketing, testified that opposer has used “the Reliance Standard
name and mark” “since the mid ‘60’s” in connection with its two
lines of business: “Our employee benefits line of business as
well as our fixed annuity line of business.” (White Dep., pp. 9-
10; see also Gittelman Dep., pp. 11-12). This testimony is
sufficient to demonstrate that opposer has a real interest in
this proceeding, and therefore has standing regardless of the
existence of its pleaded registration. Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Opposition No. 91178996
32
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to
those marks and the services covered by the registrations.40
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
With respect to RELIANCE as a stand-alone mark, because
RELIANCE is not registered, opposer must prove its date of
first use. Applicant first used BENCHMARK RELIANCE “in the
third or fourth quarter - - I believe third quarter - - of
2003.”41 Accordingly, for purposes of determining priority,
we will use September 30, 2003 as applicant’s priority date.
See EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213
USPQ 597, 598 n.5 (TTAB 1982) (documentary evidence showed
first use in 1977, the month and day were unknown,
therefore, the Board could not presume any date earlier than
the last day of the proved period). See also Osage Oil &

40 The evidence of record establishes that opposer has priority of
use for the mark RELIANCE STANDARD even without its registration.
As indicated in the previous footnote, Mr. Whitehead and Mr.
Gittelman, opposer’s Director of Marketing, testified that
opposer has been using the mark RELIANCE STANDARD in connection
with opposer’s employee benefits line of business and its fixed
annuity line of business since the “mid ‘60s.” Also as indicated
above, applicant, in its answer, admitted that it does not claim
any date “earlier than August 25, 2003 for the purpose of
claiming priority.” (Applicant’s Answer, ¶2). Accordingly,
opposer has proven its common law priority of the mark RELIANCE
STANDARD in connection with opposer’s fixed annuity line of
business and employee benefits line of business.
41 Hodges-Eaken Dep., p. 24. See also Hodges-Eaken Dep., p. 33
(the BENCHMARK RELIANCE “product became available for sale in, I
believe the third quarter of 2003”).
Opposition No. 91178996
33
Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 911
n.22 (TTAB 1985) (evidence established first use in 1968-
1969, therefore December 31, 1969 is date of first use).
Opposer must establish its use of RELIANCE as a stand-alone
mark or trade name prior to September 30, 2003.42
Mr. Gittelman testified that opposer’s predecessor was
a subsidiary of Reliance Group Holdings until 1981 “when it
was spun off to a group called … Dresser Standard,
Incorporated, and we were with them until the late ‘90s when
we were acquired by Delphi Financial Group.”43 As part of
the Dresser Standard, Incorporated transaction, opposer’s
predecessor “secured the right to continue to use the marks
Reliance Standard, Reliance, and Reliance Standard Life
Insurance in all of our operations and advertising.”44
However, as noted above during the discussion relating to
whether opposer’s use of RELIANCE as a stand-alone mark was
tried by consent, both Mssrs. Gittelman and Whitehead
testified that opposer’s independent brokers and agents
refer to opposer as RELIANCE, not that opposer uses RELIANCE
as a mark or trade name. Mr. Gittelman further testified
that RELIANCE STANDARD is opposer’s mark and that opposer

42 As indicated above, in its answer, applicant admitted that it
was not claiming any date of use earlier than August 25, 2003.
43 Gittelman Dep., p. 9.
44 Gittelman Dep., p. 10.

Opposition No. 91178996
34
tries not to deviate from that mark in its printed
materials.45
The only documentary evidence corroborating opposer’s
use of RELIANCE as a stand-alone mark is Gittelman Exhibit
5, a flyer for its SmartChoice disability coverage, for
small groups (2-29 persons), where opposer displayed the
word “Reliance” as a stand alone mark directly above
“Reliance Standard Life Insurance Company.”46 However, the
flyer is not dated, Mr. Gittelman did not testify as to
when the flyer was distributed, and the flyer states that
opposer’s “3-Year Rate Guarantee” is “valid for all
businesses with 2007 effective dates.” Gittelman Exhibit 5
does not prove opposer used RELIANCE as a stand-alone mark
prior to September 30, 2003 or even the May 30, 2006 filing
date of applicant’s application.
Mr. Gittelman’s testimony may be sufficient to prove
opposer’s first use if it is clear, convincing, consistent
and uncontradicted. See National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a
party's mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted);
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ

45 Gittelman Dep., p. 72.
46 Gittelman Dep., p. 21-23, Exhibit 5.

Opposition No. 91178996
35
305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical Services,
Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent,
convincing, and uncontradicted). Based on the testimony of
opposer’s witnesses, it is not clear when opposer first used
RELIANCE as a stand-alone mark and whether opposer used
RELIANCE as a stand-alone mark or trade name or whether such
use was limited to independent brokers and agents referring
to opposer. See Big Blue Products Inc. v. IBM, 19 USPQ2d
1072, 1074 (TTAB 1991). The instant case does not involve a
record like that in the Big Blue Products case, because the
testimony regarding the public recognition of opposer as
“Reliance” per se is not clear, consistent or convincing and
the testimony applies only to the independent agents and
brokers, not the ultimate consumers.
Finally, while Messrs. Gittelman and Whitehead
testified that opposer’s Independent Marketing Organizations
and independent agents refer to opposer as “Reliance,” there
is no corroborating evidence in the record. Opposer did not
call any brokers or independent agents to confirm that
Opposition No. 91178996
36
opposer is known in the industry as “Reliance.” The few
references in the media where the authors abbreviated third-
party company names to “Reliance” are not persuasive that
opposer is known only as “Reliance,” especially because
opposer does not refer to itself as simply “Reliance.”
In view of the foregoing, opposer has failed to prove
its priority of RELIANCE as a trade name or service mark
prior to either the filing date of applicant’s application
[May 30, 2006] or applicant’s earliest date of first use
[September 30, 2003] and, therefore, RELIANCE as a stand-
alone mark will be given no further consideration.
Likelihood of Confusion Factors
Our determination under Section 2(d) is based on an
analysis of all of the 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 Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The degree of consumer care.
Because the purchase of an annuity is part of a
comprehensive financial plan for the ultimate consumer, we
turn first to the degree of consumer care exercised in
making a decision to purchase such a financial instrument.
In this regard, we carefully consider the nature of an
Opposition No. 91178996
37
annuity, who buys annuities, the factors that go into the
purchasing decision, and how annuities are sold.
An “annuity” is defined as “a specified income payable
at stated intervals for a fixed or contingent period, often
for the recipient’s life, in consideration of a stipulated
premium paid either in prior installment payments or in a
single payment.”47 For example, the minimum initial premium
for applicant’s BENCHMARK RELIANCE annuity is $10,000 and
the maximum premium is $1,000,000,48 and opposer’s average
premium per policy is $50,000.49
An article in the February 18, 2002 issue of the
Orlando Sentinel provided the following information about
annuities:
For retirees, this is a the problem:

… Stocks have been in a funk for three
years, so by making withdrawals from a
stock portfolio to cover living expenses
you run the risk of depleting your nest
egg.

A possible answer … is … to buy an
immediate fixed annuity.

47 The Random House Dictionary of the English Language
(Unabridged), p. 84 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also
“The 2007 Individual Annuity Market Sales and Assets” report by
LIMRA International, Inc., p. 70 (Definitions) (Crume Dep.,
Exhibit 9). Opposer is a participating company of LIMRA.
48 Hodges-Eaken Dep., pp. 93.
49 Whitehead Dep., pp. 13, 17 and 65; Whitehead Dep. Exhibit 16
(Whitehead Dec. ¶25). Mr. Whitehead also testified that opposer
has accepted a premium as low as $5,000 and as much as $500,000
(Whitehead Dep., pp. 13-14). But see Whitehead Dep. Exhibit 16
(Whitehead Dec. ¶26) (opposer has accepted a $1,500,000 premium).
Opposition No. 91178996
38
In return for your one-time, lump-sum
payment; an insurance company guarantees
it will send you a check for the rest of
your life, or other period you
designate. Most couples opt to receive
payments until both spouses die.

* * *

“Usually people attracted to fixed
annuities are conservative investors
looking for something that’s
guaranteed,” Carlson said [Bob Carlson,
editor of a monthly newsletter called
Retirement Watch]. “People who want
growth usually don’t even want to
consider fixed annuities.” An immediate
variable annuity, by combining the two
approaches, could appeal to investors
who are not in either extreme, either
too risk-averse or too aggressive.50

Annuities have “features and benefits that are
attractive primarily to the senior market”;51 that is,
people “close to or in retirement.”52 “[G]enerally that’s
the over 60, over 65 age group.”53 These investors are very
conservative; they are looking to preserve their capital,
they are looking for fixed income at a competitive interest
rate, and they are looking for low risk.54

50 Applicant’s notice of reliance.
51 Hodges-Eaken Dep., pp. 12-13.
52 Hodges-Eaken Dep., p. 13.
53 Hodges-Eaken Dep., pp. 21 and 83. See also Crume Dep., p. 22
(“our sales are mostly to people in the senior market with
disposable income … Most of our sales are single premium, which
means you make a one-time deposit … there is [sic] no additional
deposits”), p. 23 (“age 60 and up, 65, in that area, and up”);
Whitehead Dep., p. 13 (50 to 80 age group but average age is 67),
p. 65 (60—70 years old “is pretty standard”); Whitehead Dep.
Exhibit 16 (Whitehead Dec. ¶¶ 6, 7 and 25).
54 Hodges-Eaken Dep., p. 21; Crume Dep., p. 23; Whitehead Dep.,
pp. 13-14; Whitehead Dep. Exhibit 16 (Whitehead Dec. ¶¶ 6 and 7).
Opposition No. 91178996
39
The identity of the company underwriting the annuity is
an important factor in purchasing the annuity. For example,
the underwriter’s performance ratings and length of time the
company has been in business are important to the
customer.55
Q. What are the selling points of an
annuity?

A. Well, the selling points of an
annuity: First of all, the most
important thing to the end-user is,
first of all, the name of the
company and its financial strength,
its ratings, how long its been in
business, track record with the
product line that’s being marketed.
And that’s the most important thing
to begin with.

Then the product itself and its
features, obviously whether it’s
suitable for that client and it
fits their needs. That’s the
second thing - - second thing
involved in it.

Then also basically when the client
decides whether - - the amount of
money they want to put into the
product or whatever, it just
depends upon their needs. I used
to say “their needs, their dreams,”
whatever they forsee for their
future.

The company is probably the most
important thing to enter into the
conversation, its financial
strength, and so forth, and then
the product itself, its features,
and how they fit the needs of the
end-user, the client; and then
foremost, if it’s an annuity,

55 Hodges-Eaken Dep., p. 25.
Opposition No. 91178996
40
basically the interest rate, if
it’s competitive and so forth.56

Opposer’s witness David Whitehead, opposer’s Vice
President of Accumulation Products Marketing, concurred:
A. Typically when a customer has 50, a
hundred, $200,000 and they’re
handing it over to an insurance
company they want to know a little
bit more about - - than the company
name, and I think it’s important
that they know, you know, who --
what the heritage is, you know, the
fact that we’ve been around a
hundred years, you know, and the
fact that we’ve been owned by the
same organization for more than 20
years.57

* * *

Q. Why do you talk about this type
[financial strength ratings] of
information?

A. Again, if somebody is going to
entrust their hard earned dollars
to a financial institution they
typically want to know what ratings
have been assigned by the financial
rating … by the financial rating
agencies.58

The parties market their annuities through independent
marketing organizations and independent agents.59 According
to George Crume, applicant’s Vice President of Brokerage
sales, “[t]he protocol is that the end-user is to work

56 Crume Dep., p. 21. See also Crume Dep., pp. 26-27.
57 Whitehead Dep., pp. 19-20.
58 Whitehead Dep., p. 24.
59 Hodges-Eaken Dep., p. 11 (independent insurance agents
“typically solicit products direct to the public or the end
consumer”); Whitehead Dep. pp. 17-18, 28.
Opposition No. 91178996
41
through their agent or their broker. Then their broker
works through their marketing company and then through my
national sales manager team and then eventually to the home
office.”60 David Whitehead provided the following
testimony:
Q. How do you market your annuities?

A. We use what I’ll refer to as
managing general agents or
independent marketing organizations
to promote our products to
independent agents. Those
independent agents then go out to
the kitchen table or wherever else
… you know, wherever else they meet
their customers and talk about our
annuity products and then
ultimately would take an
application and submit it to
Reliance Standard.61

Opposer has contracted with approximately 100 independent
marketing organizations that interact with approximately
12,000 agents.62 Likewise, applicant has contracted with
20,000 agents across the country.63
Customers rely on these independent agents in deciding
whether to buy an annuity and what annuity to buy.64
Q. [H]ow do they go through the selection
process?

A. The selection process - -

60 Crume Dep., p. 19.
61 Whitehead Dep., p. 17. See also Whitehead Dep. Exhibit 16
(Whitehead Dec. ¶23).
62 Whitehead Dep., p. 18.
63 Hodges-Eaken Dep., pp. 26-27.
64 Hodges-Eaken Dep., p. 28.
Opposition No. 91178996
42
Q. For the client.

A. Again, when we talked about the
suitability review, typically [the
independent insurance agent] are
gathering key information from the
respective client, going through
and identifying what other
investments they have, their risk
tolerance, their short- and long-
term financial objectives, their
health status, what their income
and expenses are, what’s the
purpose of the monies. And then
based on that information, they may
recommend a couple of different
products to the client.

* * *

You know the sales process is so
individualized based on, you know,
the consumer information. And then
based on that, the producer may,
you know, recommend or present to a
prospective [sic] two - - one or
two or three annuities; and then
the client generally chooses what
is appropriate based on the
features and benefits of the
product and obviously, you know,
the strength and security of the
insurance company that is
underwriting it.

Q. Do the [independent agents] know
the companies, or do they know the
identity of the companies or the
insurance companies who are
offering the particular annuities?

A. Yes. Most definitely they would
know that. One, because they want
to make sure that they’re
presenting a product, you know,
that had certain ratings if
strength and security was a
concern. Also the name of the
company is on any type of brochures
that they might use during the
Opposition No. 91178996
43
solicitation. So an agent is
always going to know the insurance
company name.65

Based on the nature of an annuity as a financial
instrument, the personal interaction between the prospective
annuitant and the selling agent, and the cost of the
premium, one would expect that the relevant purchasers
exercise a high degree of care making their purchasing
decision. Nothing in the record is to the contrary. The
relevant consumers, senior citizens and/or persons planning
for their retirement, have a focused need or plan for the
annuity (e.g., fixed income and preservation of capital).
The relevant consumers consult with independent agents, who
sell the annuities for the underwriters. These agents are
experts in the field who carefully assess the consumers’
needs and help them select among several alternatives.
Purchasing an annuity is an important purchase and is
unusual in terms of its complexity. There is a reasonably
intense evaluation process by the ultimate consumer in
collaboration with the independent selling agent. In view
of the foregoing, we find that annuities are purchased only
after careful consideration by the relevant consumers with
specific consideration given to the identity and reputation
of the annuity underwriter.

65 Hodges-Eaken Dep., pp. 58-60.
Opposition No. 91178996
44
B. The similarity or dissimilarity and nature of the
services at issue, the established, likely-to-continue
trade channels and classes of consumers.

Applicant is seeking to register its mark for the
“issuance and administration of annuities.” Opposer’s
Registration No. 3064739 for the mark RELIANCE STANDARD, in
standard character form, is for, inter alia, “financial
services in the fields of processing, funding, underwriting,
issuing and administering annuities.” Accordingly, the
services are in part identical. In fact, applicant and
opposer are competitors66 that offer similar annuities.67
Because both parties are engaged in issuing and
administering annuities, we focus the likelihood of
confusion analysis on the annuity services. If we do not
find likelihood of confusion with respect to the marks at
issue for identical services, then there would be no
likelihood of confusion with a registered mark for services
that are not identical. See In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
Because the services described in the application and
opposer’s registration are in part identical, we must
presume that the channels of trade and classes of purchasers
are the same. See American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101

66 Gittelman Dep., p. 70; Whitehead Dep., pp. 10, 47. See also
Whitehead Dec., ¶18 attached to the Whitehead Dep., Exhibit 16.
67 Whitehead Dep., p. 51.
Opposition No. 91178996
45
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers.”). See also In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
C. The strength of opposer’s mark.
1. Inherent Strength

Through a notice of reliance, applicant introduced two
registrations owned by Covenant Reliance Producers, LLC:
a. Registration No. 3054867 for the mark
COVENANT RELIANCE PRODUCERS, LLC for
“insurance brokerage in the field of senior
retirement products such as life, health, and
annuities.” Registrant disclaimed the
exclusive right to use “LLC”; and
b. Registration No. 3096202 for the mark
COVENANT RELIANCE PRODUCERS for “insurance
brokerage for annuities, life, and long-term
care.”
Applicant also introduced Registration No. 2297714 for
the mark RELIANCE CAPITAL MANAGEMENT for “financial services
Opposition No. 91178996
46
in the nature of investment management and research.” That
registrant disclaimed the exclusive right to use the term
“Capital Management.”
Finally, applicant introduced seven (7) registrations
for marks which incorporate the word “Reliance” for
financial services other than issuing and underwriting
annuities.
The third-party registrations introduced by applicant
are not evidence that those marks are in use, let alone used
so extensively that consumers have become sufficiently
conditioned by their usage that they can distinguish between
such marks on the bases of minute differences. The
probative value of third-party trademarks depends entirely
upon their usage. E.g., Scarves by Vera, Inc. v. Todo
Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir.
1976) (“The significance of third-party trademarks depends
wholly upon their usage. Defendant introduced no evidence
that these trademarks were actually used by third parties,
that they were well promoted or that they were recognized by
consumers.”). As the Court of Customs and Patent Appeals,
the predecessor to our primary reviewing court, pointed out
in Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324,
153 USPQ 406, 407 (C.C.P.A. 1967), “the existence of these
registrations is not evidence of what happens in the market
place or that customers are familiar with their use.”
Opposition No. 91178996
47
Nevertheless, the third-party registrations may be used
in the manner of a dictionary to show that a mark or a
portion of a mark is descriptive or suggestive of goods and
services. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ
588, 592 (TTAB 1975) (the third-party registrations may be
considered in the same manner as a dictionary to show a
possible meaning or significance in a particular trade). In
view of the foregoing, and given the definition of
“reliance” as “confident or trustful dependence,”
“confidence,” and “something or someone relied on”),68 when
it is used as part of a trademark in connection with
financial services, “RELIANCE” may be understood as
suggesting that the consumer may have “confidence” in the
financial service provider.
2. The number and nature of similar marks in use in
connection with similar services.

a. Media references to companies in the
financial services field that incorporate
“Reliance” in their trade name.

Through a notice of reliance, applicant introduced
articles from publications obtained from the LexisNexis
database referencing “Reliance” used as part of the trade
name of companies in the financial services field. The
articles are discussed below:

68 The Random House Dictionary of the English Language
(Unabridged), p. 1628.

Opposition No. 91178996
48
1. Four (4) articles in business publications (2008-
2009) referenced Reliance Trust Company, a division of
Reliance Financial Corporation that formed Reliance Asset
Advisors, LLC “to serve the trust, wealth management and
financial services needs of the Greater Wilmington, North
Carolina market.” After the initial introduction of the
company, three (3) articles referred to the company as
“Reliance.”
2. Four (4) articles posted on newswires (2001)
referenced three related companies, Reliance Group Inc.,
Reliance Insurance Co., and Reliance Group Holdings, and
their financial difficulties. After the initial reference
to the full name of the companies, the articles referred to
them as “Reliance.”
3. Four (4) articles posted on newswires (1983, 1992,
and 1999) referencing the Reliance Insurance Group, a
property and casualty insurer.
The eight (8) articles posted on newswires have minimal
probative value because the record does not indicate whether
the stories were picked up by publications in general
circulation and whether they were read by relevant
consumers. See In re Cell Therapeutics Inc., 67 USPQ2d 1795
(TTAB 2003) (while newswire stories may have value they may
not have the same probative value as stories appearing in
magazines and newspapers). See also In re International
Opposition No. 91178996
49
Business Machines Corp., 81 USPQ2d 1677, 1683 n.10 (TTAB
2006). The remaining four (4) articles in business
publications reference one other company using the name
“Reliance.” While these articles may have some value in
that they were published in business publications that may
be read by the independent brokers and agents that sell
annuities, there is no indication that the ultimate
consumers of the annuities would have encountered these
articles.
b. Third-party use.
As indicated in the preliminary issue section at the
beginning of this decision, applicant introduced a
certificate of licensure for Reliance Insurance Group LLC
(printed on August 9, 2010),69 an A.M. Best Company
financial rating for Old Reliance Insurance Company
(copyright 2009),70 an excerpt from the Reliance Insurance
Group website (printed on August 3, 2010),71 an excerpt from
the Reliance Wealth & Trust Partners website (printed on
August 17, 2010),72 an excerpt from the Reliance Financial
Group website (printed on August 17, 2010),73 and an excerpt

69 Crume Dep., Exhibit 13.
70 Crume Dep., Exhibit 14.
71 Hodges-Eaken Dep., Exhibit 20.
72 Hodges-Eaken Dep., Exhibit 21.
73 Hodges-Eaken Dep., Exhibit 22.
Opposition No. 91178996
50
from the Reliance Trust website (printed on August 17,
2010).74
Internet websites can be used as evidence “that the
public may have been exposed to those internet websites and
therefore may be aware of the advertisements contained
therein.” Rocket Trademarks Pty Ltd., v. Phard S.p.A., 98
at 1072. But see Penguin Books Ltd. v. Eberhard, 48 USPQ2d
1280, 1284 n.5 (TTAB 1998) (white pages listings do not show
that the public is aware of the companies). However, there
is nothing in the record to indicate the extent of the
public exposure to these listings. Anthony’s Pizza & Pasta
International Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d
1271, 1278 (TTAB 2009) (“we consider the restaurant listings
for what they show on their face (i.e., that ‘Anthony’s’ has
been extensively featured in the name of restaurants).”),
aff’d unpublished, No. 2010-1191 (Fed. Cir. November 18,
2010). Moreover, the number of Internet sites showing
third-party use (four) is extremely limited. As for
the certificate of licensure and financial rating
information, the fact that a company has been licensed by a
particular state or has been given a financial rating does
not indicate the extent of public exposure to that company
name, let alone that the name is used as a mark. In sum, we
find the probative value of this evidence to be minimal.

74 Hodges-Eaken Dep., Exhibit 23.
Opposition No. 91178996
51
c. Conclusion
The evidence of third-party use is sufficient to show
that the word “Reliance” is used by others in the financial
services industry to suggest that the provider of the
financial services instills confidence or may be relied
upon.
3. The fame or strength of the prior mark (sales,
advertising length of use).

In its brief, opposer contends that RELIANCE STANDARD
is a strong mark for the following reasons:
a. Opposer has been using the mark RELIANCE
STANDARD since the mid-60’s;75
b. Opposer is well known and respected in the
insurance industry;76 and
c. Opposer’s sales have been consistently
strong.77

75 White Dep., pp. 9-10; Gittelman Dep., pp. 11-12.
76 White Dep., pp. 48-49 (opposer ranks “in the 30-40 category” in
fixed annuities and independent distribution); Gittelman Dep.,
pp. 26-27 (“we are generally regarded as a very solid, very
secure company in the space that we occupy” and are highly rated
by independent financial ratings agencies), p. 65 (according to
the Ward Group, an independent consulting firm, opposer is among
the top 50 performing life and health insurance companies), p.
69. Opposer also referenced 27 articles in printed publications
referring to opposer as evidence of opposer’s renown. The
articles do not demonstrate that opposer is well known. Most of
the articles reference opposer in passing (e.g., “Sarkar said
that she was ill for a while after the transplant but began to
feel well enough to return to work at Reliance Standard Life
Insurance Co. last July”).
77 Whitehead Dep., pp. 22-26; Gittelman Dep., pp. 25-29.

Opposition No. 91178996
52
Opposer also introduced testimony and evidence regarding its
advertising expenditures.
David Gittelman, opposer’s Director of Marketing,
provided the following testimony:
Consider for a second that you’re an
employer making a decision between three
benefit plans, you may be looking at
Hartford and Aetna and Reliance
Standard; and Hartford [sic]. You know
what a deer looks like and, you know,
Aetna you’ve heard of and, you know,
everybody knows what Snoopy looks like,
and Reliance Standard may not be a
common household name, so this is an
opportunity for both prospects and
ultimately customers to know who we
are.78

4. Assessment of evidence of strength of the prior
mark.

Overall, the evidence demonstrates that opposer is a
successful company; it does not demonstrate that the mark
RELIANCE STANDARD is particularly well known, let alone a
strong or famous mark.
D. The nature and extent of any actual confusion.
Applicant argues that there is no likelihood of
confusion as evidenced by the lack of any reported instances
of actual confusion.79 However, the absence of any reported
instances of confusion is meaningful only if the record

78 Gittelman Dep., pp. 57-58.
79 Applicant’s Brief, p. 26. Opposer, of course, argues that
actual confusion is not the test. (Opposer’s Brief, pp. 35-36).
Opposer is unaware of any reported instances of actual confusion.
Opposer’s response to applicant’s interrogatory No. 8.

Opposition No. 91178996
53
indicates appreciable and continuous use by applicant of its
mark for a significant period of time in the same markets as
those served by opposer under its mark. Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In
other words, for the absence of actual confusion to be
probative, there must have been a reasonable opportunity for
confusion to have occurred. Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative
value of the absence of actual confusion depends upon there
being a significant opportunity for actual confusion to have
occurred); Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988);
Central Soya Co., Inc. v. North American Plant Breeders, 212
USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion
over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with
little probability of occurring”).
As indicated above, we consider applicant’s date of
first use to be September 30, 2003, the last day of the
third quarter. Opposer’s trial period closed July 6, 2010.
Both applicant and opposer do business throughout the entire
United States.80 Accordingly, there has been almost 7 years
of simultaneous use of the marks RELIANCE STANDARD by
opposer and BENCHMARK RELIANCE by applicant for identical

80 Crume Dep., pp. 8, 11-12; Gittelman Dep., p. 13.
Opposition No. 91178996
54
annuity services, sold in the same channels of trade to the
same classes of consumers.
We also note that opposer contends that it is
“generally well regarded as a very solid, very secure
company in the space we occupy,”81 that it is “in the top
ten in all these areas [industry rankings],”82 and that its
reputation carries across its different business sections
because it cross promotes its services.83 As noted in the
previous section, opposer had introduced evidence showing
that it has used the mark RELIANCE STANDARD since the mid-
60’s, that opposer is well-known and respected in the
industry and that opposer has had consistently strong sales.
Likewise, applicant claims that it is known as “a very
strong company, a lot of financial strength.”84 In fact,
applicant has made the Forbes magazine list of “100 Most
Trustworthy Companies” in 2008 and 2009.85
Applicant and opposer “compete against each other … for
the sales of insurance, group benefits programs, and
annuities,” citing the testimony of Messrs. Whitehead,
Gittelman, and Crume and Ms. Hodges-Eaken.86 Moreover, as
described above, the annuities are sold to the ultimate

81 Gittelman Dep., p. 27.
82 Gittelman Dep., pp. 29, 69
83 Gittelman Dep., pp. 51-52; Whitehead Dep., pp. 36-37.
84 Crume Dep., p. 12.
85 Crume Dep., p. pp. 12-13.
86 Opposer’s Brief, p. 24.

Opposition No. 91178996
55
consumer by independent insurance agents and brokers who
interview the end consumer to identify the end consumer’s
financial status and goals and then present up to three
annuities from different companies that the agent/broker
believes will meet that goal. According to Mr. Whitehead,
“[m]any of our IMOs [Independent Marketing Organizations]
offer products from both [applicant] as well as [opposer]”87
and he expressly identified five (5) who represent both
opposer and applicant.88
The parties have designated their advertising
expenditures and sales revenues as confidential and,
therefore, we may only refer to them in general terms.
However, we can say that in terms of annuity premiums,
applicant’s revenues exceeded opposer’s premiums in 2004
through 2006, and marketing expenditures of the parties were
comparable in 2004 through 2006.89 The sales and marketing
information for both parties is substantial enough for us to
conclude that there has been a reasonable opportunity for
confusion to have occurred and that the lack of any reported
instances of confusion weighs against finding that there is
a likelihood of confusion. So as to be clear, however, we
recognize that actual confusion is not necessary to show

87 Whitehead Dep., pp. 52, 60.
88 Whitehead Dep., pp. 52-56, Exhibits 11-15.
89 Applicant’s amended responses to opposer’s interrogatory Nos.
11 and 14; opposer’s supplemental responses to applicant’s
interrogatory Nos. 4 and 5.
Opposition No. 91178996
56
likelihood of confusion. See, e.g., Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to 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. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. Opposer’s mark is
RELIANCE STANDARD and applicant’s mark is BENCHMARK
RELIANCE.
While the marks are similar in appearance because they
share the word “Reliance,” they look different because
applicant’s mark begins with the word “Benchmark.” Because,
consumers are likely to focus on the word “Benchmark” in
applicant’s mark BENCHMARK RELIANCE rather than the word
“Reliance,” as the word “Benchmark” is the first word in the
mark and because the word “Reliance” is suggestive when used
in connection with financial services. See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
Opposition No. 91178996
57
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the
mark and the first word to appear on the label); Wet Seal
Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). By
the same token, because of its position as the first word in
opposer’s mark, “Reliance” would be noted by the consumer.
However, the significance of the word “Reliance” is limited
because it is suggestive.
The marks BENCHMARK RELIANCE and RELIANCE STANDARD have
a different sound because of the suggestive nature of the
shared word “Reliance” and because “Reliance” is the second
word in applicant’s mark and the first word in opposer’s
mark. Accordingly, the marks roll off the tongue
differently.
With respect to the connotation and commercial
impression engendered by the marks, the word “Reliance” may
be understood as suggesting that the consumer may have
“confidence” in the financial service provider.
The word “Standard” is defined, inter alia, as follows:
1. something considered by an authority
or by general consent as a basis of
comparison; an approved model. 2. an
object that is regarded as the usual or
most common size or form of its kind …
3. a rule or principle that is used as
a basis for judgment: They tried to
establish standards for a new
philosophical approach. 4. an average
or normal requirement quality, quantity,
Opposition No. 91178996
58
level, grade, etc.: His work this week
hasn’t been up to his usual standard.90

Opposer focuses its advertising on convincing consumers
that it is a company that deserves the consumer’s confidence
and that its annuities are “stable and competitive vehicles
for accumulating retirement assets and providing a
guaranteed retirement income you can’t outlive.”91 Thus,
RELIANCE STANDARD means and engenders the commercial
impression of a model of confidence.
The word “Benchmark” is defined as follows:
1. a standard or excellence,
achievement, etc. against which similar
things must be measured or judged: The
new hotel is a benchmark in opulence and
comfort. 2. any standard or reference
by which others can be measured or
judged: The current price for crude oil
may become the benchmark.92
Ms. Hodges-Eaken testified that the goal of the
branding campaign for the BENCHMARK RELIANCE annuity is to
convey “confidence inspired by experience, meaning the
BenchMark family of products has been available for a number
of years and you’ve got confidence in the company that’s
underwriting the product.”93 Her testimony is corroborated
by applicant’s advertising that uses “Confidence inspired by

90 The Random House Dictionary of the English Language
(Unabridged), p. 1857.
91 Whitehead Dep., Exhibit 4.
92 The Random House Dictionary of the English Language
(Unabridged), p. 1857. See also Compact Oxford English
Dictionary of Current English (askoxford.com) (Opposer’s notice
of reliance).
93 Hodges-Eaken Dep., pp. 24-25.
Opposition No. 91178996
59
experience” as an advertising tagline.94 The mark BENCHMARK
RELIANCE means and engenders the commercial impression that
consumers may have confidence in the underwriter’s standard
of excellence. Thus, the meaning and commercial impressions
created by the marks are similar.
Opposer argues, in essence, that the marks are similar
because they share a common word “Reliance” and the other
elements of the marks “Benchmark” and “Standard” have
similar meanings which bestow a similar overall meaning upon
the marks BENCHMARK RELIANCE and RELIANCE STANDARD. While
opposer possesses rights in the mark RELIANCE STANDARD,
BENCHMARK RELIANCE is distinguishable in appearance and
sound and is not likely to be equated with RELIANCE
STANDARD, especially considering the degree of care with
which the services are rendered. See Floss Aid Corp. v.
John O. Butler Co., 205 USPQ 274, 285 (TTAB USPQ 1979)
(scope of protection for opposer's rights in its mark
“Flossaid” is sufficient to bestow umbrella of protection
upon it in its field, should not extend to preclude others
in trade from registering marks for same goods that project
same or similar suggestion relative to use of goods where
marks are otherwise distinguishable in appearance and sound
and are not likely to be equated with opposer's mark due to
hazy or faulty recollection of marks). Similarity of

94 Hodges-Eaken Dep., Exhibits 4-7 and 12.
Opposition No. 91178996
60
meaning is more significant in cases of inherently strong
marks than if the marks are suggestive. See for example,
Hancock v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ
330 (CCPA 1953) (CYCLONE vs. TORNADO both for fencing). In
this case, the term common to both marks, “Reliance,” is
suggestive, and one may not exclusively appropriate the
connotation of suggestive terms because competitors must be
free to use those terms to describe their goods and
services. See E. L. Bruce Co. v. American Termicide, 285
F.2d 462, 128 USPQ 341 (CCPA 1960) (suggestive nature of
“TERMI” on products for extermination of termites is
critical part of holding that “TERMICIDE” AND “TERMINIX” are
not confusingly similar, in spite of their similar
connotations); Sure-Fit Products Co. v. Saltzson Drapery
Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958) (fact that
common element “FIT,” in “SURE-FIT” and “RITE-FIT” for slip
covers, was descriptive is decisive factor in holding that
marks are not confusingly similar, in spite of their similar
meanings); Hillyard Chemical Co. v. Vestal Laboratories,
Inc., 206 F.2d 926, 99 USPQ 117 (CCPA 1953) (highly
suggestive nature of “BRITEN-ALL” and “SHINE-ALL” for
cleaning and polishing compounds persuasive of holding of
non-likelihood of confusion in spite of their similar
meanings); Penn Dairies, Inc. v. Pennsylvania Agricultural
Cooperative Marketing Association, 200 USPQ 462 (TTAB 1978)
Opposition No. 91178996
61
(“PENN BEST” and “PENSUPREME” held not confusingly similar
in spite of their similar suggestiveness due to the
laudatory nature of the suffixes and geographical
significance of the prefixes); Sunbeam Corp. v. Green Bay
Tissue Mills, Inc., 199 USPQ 695, 698 (TTAB 1978) (“although
the designations ‘PURE BREW’ [for coffee filters] and ‘CLEAR
BREW’ [for coffeemakers] may have similar meanings, the
differences between them in sound and appearance are
sufficient, in the view of the [suggestive] natures of such
marks, to obviate any likelihood of confusion”).
Despite the fact that the marks have similar meanings
and engender similar commercial impressions, the differences
in their appearance and sound outweigh the similarities. In
view of the foregoing, we find that applicant’s mark
BENCHMARK RELIANCE is not similar to opposer’s mark RELIANCE
STANDARD.
F. Balancing the factors.
Based on the nature of the services, underwriting
annuities, the high degree of care exercised by consumers in
deciding whether to purchase such a financial instrument is
a significant factor in the likelihood of confusion
analysis. In this regard, the testimony and evidence of
record indicate that consumers pay close attention to the
financial stability and reputation of the underwriter.
Opposition No. 91178996
62
We also find that the lack of any reported instances of
actual confusion is relevant because there has been a
reasonable opportunity for confusion to have occurred. Both
parties have good reputations in the industry so that their
annuities are marketed by the independent marketing
organizations and independent agents. They render identical
services, through the same channels of trade and to the same
classes of consumers. In fact, opposer identified five
Independent Marketing Organizations that sell the annuities
underwritten by both parties. After seven (7) years of
simultaneous use, there have been no reported instances of
confusion.
Overall, and particularly in view of the high degree of
care exercised by consumers, the lack of any reported
instances of confusion, and the differences in the marks, we
find that applicant’s mark BENCHMARK RELIANCE for the
“issuance and administration of annuities” is not likely to
cause confusion with opposer’s mark RELIANCE STANDARD for
“insurance underwriting in the fields of life, health and
accident; financial services in the fields of processing,
funding, underwriting, issuing and administering annuities.”
Because we did not find a likelihood of confusion between
applicant’s mark and opposer’s mark RELIANCE STANDARD for in
part identical services, there is no likelihood of confusion
between applicant’s mark and the more different mark RSL
Opposition No. 91178996
63
RELIANCE STANDARD LIFE INSURANCE COMPANY for “life accident
and health insurance underwriting services.”
In reaching this conclusion, we have carefully
considered all of the evidence pertaining to the relevant du
Pont factors, as well as all of the parties’ arguments with
respect thereto (including any evidence and arguments not
specifically discussed in this opinion).
Decision: The counterclaim to cancel opposer’s
Registration No. 3064739 is dismissed.
The opposition is dismissed and applicant’s mark will
be forwarded for registration in due course.