The Guardian Life Insurance Company of Americav.Ike Grupo Empresarial S de RL de CV

Trademark Trial and Appeal Board

Mar 22, 2018

No. 91228519 (T.T.A.B. Mar. 22, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Guardian Life Insurance Company of America
v.
Ike Grupo Empresarial S de RL de CV
_____
Opposition No. 91228519
_____
Craig S. Mende, Jason D. Jones, and Leo Kittay of Fross Zelnick Lehrman & Zissu,
P. C. for The Guardian Life Insurance Company of America.

Cheryl L. Burbach and C. Blair Barbieri of Hovey Williams LLP for Ike Grupo
Empresarial S de RL de CV.
_____

Before Bergsman, Greenbaum, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Ike Grupo Empresarial S de RL de CV (“Applicant”) filed an application1 for
registration of the mark ANGEL GUARDIAN SIEMPRE CONTIGO in standard
characters for “Pre-need funeral insurance services,” in International Class 36.

1 Application Serial No. No. 86729861 was filed on August 19, 2015 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), on the basis of Applicant’s use of the mark in commerce,
alleging May 15, 2013 as the date of first use and February 10, 2014 as the date of first use
in commerce. The application states that the English translation of SIEMPRE CONTIGO is
“Always With You.” The application also identifies services in International Class 39.
Opposer does not oppose registration of Applicant’s mark for the services in Class 39.
Opposition No. 91228519
2

The Guardian Life Insurance Company of America (“Opposer”) has opposed
registration of the mark on the ground that it so resembles Opposer’s earlier used
and registered marks GUARDIAN (in standard characters and design form), THE
GUARDIAN, and THE GUARDIAN LIFE INSURANCE COMPANY OF AMERICA
(both in standard characters) as to be likely to cause confusion, mistake or deception
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Applicant, in its
answer, denied the salient allegations of the notice of opposition. The case is fully
briefed.
I. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file for the opposed mark. The parties stipulated
as follows:2
Documents produced by a party in response to requests for
production of documents or interrogatories in this
proceeding will be deemed authentic business records.
Objections to admissibility of such documents on grounds
of authenticity or genuineness are waived. All other
objections are preserved.
The parties filed the following testimony and evidence:
Opposer:
Trial declaration of Beth Wood, Opposer’s Vice President and Chief
Marketing Officer of Individual Markets, with exhibits (8 TTABVUE,
public version at 9 TTABVUE).

Rebuttal trial declaration of Beth Wood, with exhibits (25 TTABVUE).

2 6 TTABVUE; approved by the Board at 7 TTABVUE.
Opposition No. 91228519
3

Trial declaration of Alphonsus Padavano, Opposer’s Assistant Vice
President – Reinsurance Accounting & Operations, and HR Finance
Controller, and exhibits (10 TTABVUE, public version at 11 TTABVUE).

Trial declaration of Logan Gould, Opposer’s Director and Counsel in
Opposer’s Law Department, with exhibits (12 TTABVUE).

Rebuttal trial declaration of Logan Gould (26 TTABVUE, public version
at 27 TTABVUE).

Notice of reliance on U.S. registrations of Opposer’s marks that include
the term GUARDIAN (13 TTABVUE).

Notice of reliance on U.S. registrations and applications of third parties
(14 TTABVUE).

Notice of reliance on Applicant’s responses to certain interrogatories,
requests for admission, and document requests propounded by Opposer
(15 TTABVUE, public version at 16 TTABVUE).

Notice of reliance on documents produced by Applicant (17 TTABVUE,
public version at 18 TTABVUE).

Notice of reliance on printed publications (19 TTABVUE).

Notice of reliance on Internet materials (20 TTABVUE).

Rebuttal notice of reliance on USPTO record of third-party registration.
(24 TTABVUE).

Applicant:
Testimony declaration of Rodrigo Canasi, Officer, alternate Board
member, and Director of New Projects of Applicant, with exhibits (22
TTABVUE, confidential exhibits at 23 TTABVUE).

Notice of reliance on:
- Opposer’s responses to certain requests for admission and
interrogatories propounded by Applicant;
- Documents produced by Opposer;
- Internet materials.

(21 TTABVUE).

Opposition No. 91228519
4

II. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff
must show that it has a real interest in the proceeding beyond that of a mere
intermeddler and that it has a reasonable basis for its belief of damage resulting from
registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999).
Opposer has pleaded and proven3 that it owns the following 13 subsisting U.S.
registrations covering the services listed below:
Reg. No. Mark Services
1641534 GUARDIAN Insurance services, namely individual life
insurance underwriting services

1641537 GUARDIAN Insurance services, namely group dental
insurance underwriting services

1642279 GUARDIAN Insurance services, namely group life insurance
underwriting services

1853811 GUARDIAN Insurance underwriting services in the field of
disability insurance

1857906 THE GUARDIAN Insurance underwriting services in the field of
disability insurance

3 13 TTABVUE. Opposer also demonstrated its ownership of other subsisting registrations,
which are of record.
Opposition No. 91228519
5

Reg. No. Mark Services
2268145 THE GUARDIAN
LIFE
INSURANCE
COMPANY OF
AMERICA
Group and individual life, disability, accident,
health and dental insurance underwriting
services; pension planning services; pension and
pension fund management; annuity and annuity
administration services; financial services,
namely, management of money market funds,
trust funds, United States government trust
funds and stock funds; providing information to
others in the field of insurance; managing funds,
stocks and bonds and other investments for
institutions and the general public;
administration of cafeteria plans as described in
section 125 of the Internal Revenue Code; real
estate services, namely, real estate development,
real estate management, real estate investment
and mortgage lending services; reinsurance
underwriting services; joint venture investment
services in managed care organizations

2643197

Group and individual life, disability, accident,
health and dental insurance underwriting
services; pension planning services; pension and
pension fund management; annuity
underwriting and annuity administration
services; financial services, namely,
management of money market funds, trust
funds, united states government trust funds and
stock funds; providing information to others in
the field of insurance; managing funds, stocks
and bonds and other investments for institutions
and the general public; financial administration
of cafeteria plans as described in Section 125 of
the Internal Revenue Code; real estate services,
namely, real estate management, real estate
investment and mortgage lending services;
reinsurance underwriting services; joint venture
investment services for managed care
organizations

Opposition No. 91228519
6

Opposer has also demonstrated that over a period of years it has used the mark
GUARDIAN in connection with a variety of insurance underwriting services.4 Thus,
Opposer has shown that it has a real interest in this proceeding and a reasonable
basis for its belief that it will be damaged by registration of Applicant’s mark, and
has established its standing to oppose registration of Applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Ritchie v. Simpson, 50 USPQ2d at 1025-6; and Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). We note, moreover, that
Applicant has conceded that Opposer has standing.5
III. Opposer’s claim under Section 2(d).
Opposer opposes registration of Applicant’s mark under Trademark Act § 2(d), on
the ground that Applicant’s mark “so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previously used in the United States by
[Opposer] and not abandoned, as to be likely, when used on or in connection with the
[services] of [Applicant], to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). In view of Opposer’s ownership of valid and subsisting registrations
of its pleaded marks, priority is not at issue with respect to the marks and the services
identified in the registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

4 See, e.g., Wood dec. ¶¶ 6-7, 8 TTABVUE 4.
5 Applicant’s brief at 19, 30 TTABVUE 21.
Opposition No. 91228519
7

Our determination of likelihood of confusion is based on an analysis of all of the
probative facts in evidence that are relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256
(Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In our analysis, below, we have considered all factors with respect to which
there is evidence of record.
A. The strength of Opposer’s pleaded marks.
We will first address Opposer’s contention that its marks GUARDIAN, THE
GUARDIAN, and THE GUARDIAN LIFE INSURANCE COMPANY OF AMERICA
have “enormous strength” and “considerable renown,” and are “entitled to a very
broad scope of protection in the field of insurance.”6 In determining the strength of a
mark, we consider both its inherent strength based on the nature of the term itself
and its commercial strength based on use in the marketplace. See In re Chippendales
USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (measuring both
conceptual and marketplace strength). For purposes of analysis of likelihood of
confusion, a mark’s commercial strength may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).
For purposes of evaluating the commercial strength of a mark, the proper standard
is the mark’s “renown within a specific product market,” id., and “is determined from

6 Opposer’s brief at 7, 28 TTABVUE 9.
Opposition No. 91228519
8

the viewpoint of consumers of like products,” id. at 1735, and not from the viewpoint
of the general public.
To demonstrate the commercial strength of its mark, Opposer has submitted
testimony that Opposer commenced use of its mark GUARDIAN in connection with
insurance services in 1918 and that it is among the top five mutual life insurance
companies, by market share, in the United States (having an average market share
from 2011-2015 of 2.78%).7 Opposer has disclosed (confidentially) the number of its
insured individual customers, the value of its life insurance policies now in force, its
revenues, and other financial data. Opposer has shown that GUARDIAN LIFE
INSURANCE was named “Brand of the Year” for 2017 by The Harris Poll in the
category of life insurance (one of 450 categories).8 Opposer has made of record copies
of unsolicited press and Internet publicity referring to Opposer and its business.9
With respect to conceptual strength, we agree with Opposer’s contention that
GUARDIAN is inherently distinctive.10 Nautilus Group Inc. v. ICON Health and
Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (“A mark that is
fanciful, arbitrary, or suggestive is considered to be inherently distinctive ….”).
However, GUARDIAN is suggestive of the purpose of insurance services. We take
judicial notice of the dictionary definition of “guardian,” which as a noun means “one
that guards or secures: one to whom a person or thing is committed for protection,

7 Wood dec. ¶¶ 6, 28, 8 TTABVUE 4, 9.
8 8 TTABVUE 29-33.
9 19, 20 TTABVUE.
10 Opposer’s brief at 27, 28 TTABVUE 29.
Opposition No. 91228519
9

security or preservation”; and as an adjective means “performing or appropriate to
the office of a protector.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p.
1007.11 In the context of insurance, GUARDIAN suggests that insurance will protect
the interests of the insured or his family and is, therefore, not inherently the strongest
type of mark. See Abercrombie & Fitch Company v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 764-5 (2d Cir. 1976) (categorizing terms as fanciful, arbitrary,
suggestive, descriptive, or generic).
A careful review of all the evidence indicates that Opposer is a major player in
the field of insurance and has been such for many years; and that its business under
the GUARDIAN mark enjoys a high degree of renown in the financial industry. Most
of the evidence of recognition relates to Opposer’s performance as a business,
primarily showing the assessment of Opposer’s operations by business people, rather
than recognition of Opposer’s brand among individual consumers of insurance
services. Overall, the evidence demonstrates that the mark GUARDIAN enjoys a high
degree of renown, but not the very highest degree of renown throughout all segments
of the relevant market. The renown of Opposer’s mark enhances the likelihood that
customers would perceive a trademark similar to GUARDIAN as being associated
with Opposer.
Applicant, for its part, argues that “Opposer’s mark is not as strong as Opposer
averred,” because “the term GUARDIAN is prevalently used in the marketplace for

11 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Opposition No. 91228519
10

goods and services related to providing protection to consumers through insurance
products and services and/or financial investment and advisement products and
services.”12 The Federal Circuit has held that evidence of the extensive registration
and use of a term by others can be powerful evidence of the term’s weakness. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Use evidence
may reflect commercial weakness, while third-party registration evidence that does
not equate to proof of third-party use may bear on conceptual weakness if a term is
commonly registered for similar goods or services. See Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 917 (CCPA 1976).
Applicant enumerates in its brief 34 third-party uses of marks and names that
include the term GUARDIAN in the insurance and financial fields.13 Of these, we find
16 of the examples of such use to be of relatively little relevance, because they relate
to fields other than insurance, such as investment advice and wealth management.
Applicant’s service is defined as an insurance product, not an investment advice
product; accordingly it is the strength of Opposer’s mark in the insurance field that
is of most significance. Opposer criticizes the evidence of the remaining third-party
uses because it lacks information regarding the “extent to which the services … have

12 Applicant’s brief at 37, 30 TTABVUE 39.
13 Applicant’s brief at 38-39, 30 TTABVUE 40-41; and 21 TTABVUE 34-376.
Opposition No. 91228519
11

been sold or marketed” and regarding “length of use, geographic scope, or commercial
impact” of the uses.14
While we give at least some weight to evidence showing that third-party marks
are in actual use, in the present case we doubt that the demonstrated third-party
uses of GUARDIAN marks have had a substantial weakening effect on the
commercial strength of Opposer’s mark. Opposer’s operations are very substantial
and it is a major presence in the insurance marketplace. Some degree of peripheral
third-party use, not in direct competition with Opposer, can exist without detracting
in a commercially meaningful way from the strength of Opposer’s mark. However, we
do agree that the evidence demonstrates and confirms the inherent suggestiveness of
Opposer’s mark, inasmuch as third parties frequently invoke the concept of a
“guardian” in order to convey the protective aspects of their insurance services. This
suggestiveness indicates that customers will not always perceive different iterations
of the term GUARDIAN in combination with other words as an indicator of Opposer
as the source of services.
Overall, we find that Opposer’s mark GUARDIAN is commercially very strong,
with some demonstrated conceptual weakness due to its suggestive meaning.
B. The services.
We turn next to the similarity or dissimilarity of the services at issue, as
identified in the Applicant’s application and Opposer’s pleaded registrations. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,

14 Opposer’s brief at 45, 28 TTABVUE 47.
Opposition No. 91228519
12

1161-1162 (Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computs. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). We will focus on a comparison of
Applicant’s “Pre-need funeral insurance services” with Opposer’s “individual life
insurance underwriting services,” as these are the services of Opposer that are most
similar to Applicant’s services. If confusion is likely with respect to Opposer’s life
insurance services, there is no need for us to consider the likelihood of confusion with
respect to the other services for which Opposer’s marks are registered. On the other
hand, if there is no likelihood of confusion with respect to life insurance services, then
there would be no likelihood of confusion with respect to Opposer’s other services.
See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
“When analyzing the similarity of [services], it is not necessary that the [services]
of the parties be similar or even competitive to support a finding of likelihood of
confusion. Instead, likelihood of confusion can be found if the respective [services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (internal quotation marks and citations omitted).
The parties’ services are not identical, as identified, but they are similar to the
extent that both are insurance services and in both cases the insurer’s obligation is
triggered by the same type of event, i.e., the insured’s death. Applicant has explained,
“funeral insurance services is a type of insurance used to pay for funeral services and
Opposition No. 91228519
13

merchandise costs ….”15 Applicant’s witness characterized the services as “a
particularized combination of services that can be purchased as individually tailored
burial or cremation packages”; and explained that “pre-need funeral insurance
services … covers the cost of predetermined fixed-rate funeral-related expenses. This
typically includes standard funeral home services, funeral merchandise, church
services, burial services, burial merchandise, cremation services, and/or cremation
merchandise.”16 Applicant has admitted that these are types of expenses that might
be paid out of the proceeds of a life insurance policy.17
Opposer’s witness characterized Applicant’s services as follows:
A “pre-need” insurance policy – also referred to as a “pre-
paid” or “funeral” insurance policy – is a life insurance
policy purchased directly from a funeral home that pays
out upon the death of the insured intended to cover the
price the funeral home will charge at the time of service for
the insured’s funeral and cremation or burial. … Although
pre-need policies are often purchased directly from a
funeral home they are typically held (or underwritten) by
a life insurance company, which is the party that stands
behind the policy and is trusted to provide the benefits.18
Opposer contends that such services are closely related to life insurance services.
Opposer’s witness stated:
One inevitable set of costs that arise upon the death of a
family member are those associated with the funeral of the
insured. Benefits paid under GUARDIAN life insurance
policies are routinely used to pay funeral expenses of the

15 Applicant’s answer to Interrogatory No. 14, 15 TTABVUE 9.
16 Canasi dec. ¶¶ 13, 14, 22 TTABVUE 5-6.
17 Applicant’s answer to Interrogatory No. 14, 15 TTABVUE 9 (“life insurance proceeds may
be used for those goods and services.”).
18 Padavano dec. ¶ 4, 10 TTABVUE 3.
Opposition No. 91228519
14

insured. Indeed, many of our clients purchase life
insurance policies in part to be assured that their funeral
expenses will not be a financial burden on their closest
relations, in addition to providing financial support to
those relatives more generally.19
Opposer also contends that it offers, through wholly owned subsidiaries, insurance
policies that are similar in type to pre-need funeral insurance:
A “final expense” insurance policy, also known as burial
insurance, is a life insurance policy purchased directly from
a life insurance company that pays out upon the death of
the insured to a named beneficiary, typically a family
member or friend. Final expense insurance may cover the
funeral home costs and certain other costs triggered by the
death of the insured, including debts, medical bills and
travel costs.
…
Guardian, through its subsidiaries FSLIC and SALIC, does
hold and honor pre-need and final expense insurance
policies …20
Finally, we note that Applicant, in its online advertising, offers life insurance as
an optional part of its package of services:
In addition, you also have the option of contracting a life
insurance, and your beneficiaries will receive the insurance
amount.21
If the holder dies during his stay in the United States, the
designated beneficiaries could receive the contracted
amount or, this amount could be deposited until the time
of incident, only in case of not using the Funeral Plan
Expenses with Ángel Guardián.22

19 Wood dec. ¶ 25, 8 TTABVUE 8.
20 Padavano dec. ¶¶ 5-6, 10 TTABVUE 4 (emphasis added).
21 22 TTABVUE 21.
22 22 TTABVUE 16 (emphasis in original).
Opposition No. 91228519
15

It is important that you have the following documents
available upon our agent’s visit: … Information of the
beneficiary of the Life Insurance (optional).23
The evidence and testimony suffice to persuade us that the services of Applicant
and Opposer are commercially related, such that customers would readily believe
that both types of services could emanate from a single source. The du Pont factor of
the similarity or dissimilarity of the services favors a finding of likelihood of
confusion.
C. Trade channels and purchasing conditions.
Opposer points out, correctly, that the application and registrations at issue
contain no limitations as to trade channels, and that we must presume that the
parties’ services would be marketed through all normal channels of trade for such
services. Opposer argues that normal channels for insurance services are “insurance
brokers and agents.”24 On the other hand, Opposer’s witness defined pre-need funeral
insurance as “a life insurance policy purchased directly from a funeral home ….”25
Applicant stated that its services are “marketed through agents and independent
salespeople.”26 The evidence shows that Applicant, for the purpose of marketing its
services, entered into an agreement with an entity that operates funeral
establishments and offers funeral merchandise and services, whereby Applicant
would “engage in the insurance-funded preneed sale of certain funeral merchandise

23 22 TTABVUE 19.
24 Opposer’s brief at 41, 28 TTABVUE 43.
25 Padavano dec. ¶ 4, 10 TTABVUE 3.
26 Response to Interrogatory No. 16, 15 TTABVUE 11.
Opposition No. 91228519
16

and services … solely at [certain] funeral establishments and cemeteries.”27 Applicant
then entered into agreements with entities to serve as independent sales
representatives who would be authorized to promote and sell Applicant’s services
“solely in the trade areas of [certain] Establishments,” which are funeral homes.28
This evidence indicates a distinction as to the trade channels of Applicant and
Opposer, as there is no evidence that life insurance is sold through funeral homes.
Overall, we find the trade channels for the parties’ services to be dissimilar.
However, the classes of customers for pre-need funeral insurance services and life
insurance services are broad, encompassing all individuals that have an interest in
providing for expenses after death. Because there are no limitations or restrictions as
to classes of customers in the application and the cited registration, we presume that
the parties’ services would be marketed to all normal classes of customers for such
services. See, e.g., Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722; In re
Elbaum, 211 USPQ 639 (TTAB 1981). Such customers would include ordinary
consumers who have no particular sophistication, and we must base our analysis “on
the least sophisticated potential purchasers.” Stone Lion Capital v. Lion Capital, 110
USPQ2d at 1163 (internal quotation marks omitted). We find that there would be
substantial overlap between the classes of individual customers for the services of
Applicant and Opposer.

27 See 17 TTABVUE 35-44 (confidential).
28 17 TTABVUE 155-162 (confidential). See also 17 TTABVUE 163-178.
Opposition No. 91228519
17

Applicant points out that, unlike Opposer, it does not offer its services to
“business entities for distribution as employee benefits,” but only to individual
customers.29 Nonetheless, substantial overlap remains with respect to the portion of
Opposer’s customers who are individuals.30 Applicant’s contention that it offers its
services exclusively to “Mexican individuals living in the United States, with family
back home in Mexico”31 is unavailing because Applicant has not included this
limitation in the identification of services in its application. Overall, we find that
there is substantial overlap between the classes of customers for the services of
Applicant and Opposer.
With respect to conditions of sale, Applicant contends that “[s]ales
representatives provide extensive assistance prior to purchasing [Applicant’s]
services due to the unique nature of such services, as well as the convoluted legal
requirements surrounding repatriation … This professional, face-to-face assistance
creates a condition of sale that minimizes any potential confusion.”32 The evidence
indicates that Applicant provides its customers a highly detailed, itemized price list,
including items such as embalming and other preparation and care of the deceased’s
body; facilities and staff for visitation and funeral services at various types of venues;
transportation of the body; cremation; burial; caskets; and many other details.33

29 Canasi dec. ¶ 30, 22 TTABVUE 10.
30 See Wood dec. ¶¶ 9-10, 8 TTABVUE 4.
31 Applicant’s brief at 16, 30 TTABVUE 18.
32 Applicant’s brief at 44, 30 TTABVUE 46.
33 22 TTABVUE 25-31.
Opposition No. 91228519
18

While every detail is itemized, the price list indicates price ranges for the following
services: direct cremation: $3,505-$13,200; immediate burial: $3,895-$14,090;
caskets: $795-$10,195; rental caskets: $1,000-$1,500. To a customer, selecting
Applicant’s services may seem more like the prepayment for funeral arrangements
than a purchase of insurance. Moreover, the experience of making many momentous
decisions regarding the disposition of one’s body is likely to be sufficiently daunting
as to raise the degree of care that the customer brings to the process. Overall, we find
the conditions of sale of Applicant’s services to be such as to increase the customer’s
degree of care in selecting the services.
D. The marks.

Next we consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. v. Triumph Learning,
101 USPQ2d at 1721 (internal quotation marks omitted)). While we consider each
mark in its entirety, there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided that
our ultimate conclusion rests upon a comparison of the marks in their entireties. In
Opposition No. 91228519
19

re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this
type of analysis appears to be unavoidable.” Id. We will focus on a comparison of
Applicant’s mark to Opposer’s mark GUARDIAN, in standard characters, because
Opposer’s other pleaded marks have more points of difference with respect to
Applicant’s mark. In re Max Capital Group Ltd., 93 USPQ2d at 1245.
The marks are similar in appearance to the extent that each includes the term
GUARDIAN. This term also could be pronounced the same in both marks, although
in the context of Applicant’s mark, which includes several Spanish words, the term
GUARDIAN might be pronounced in the Spanish manner, creating a phonetic
distinction between the marks. In addition, the term GUARDIAN could be perceived
as having the same meaning in both marks; however, this issue warrants further
discussion, which we will provide below. Aside from the term GUARDIAN, all of the
other words in Applicant’s mark (i.e., ANGEL and SIEMPRE CONTIGO) are points
of difference in appearance, sound and meaning.
We note that Applicant’s mark contains the entirety of Opposer’s “flagship mark,”
GUARDIAN. Opposer argues:
Applicant’s addition of the word ‘ANGEL’ does not create a
sufficiently dissimilar mark to avoid a likelihood of
confusion. This is because it is well established that “[i]f a
junior user takes the entire arbitrary mark of another,
addition of a suggestive or descriptive element is generally
not sufficient to avoid confusion.” 4 McCarthy § 23:50
(collecting cases).34

34 Opposer’s brief at 39, 28 TTABVUE 41.
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Opposer argues that ANGEL is “strongly suggestive or descriptive of the funeral
insurance services Applicant offers …” and “the tagline ‘siempre contigo’ exacerbates
the likelihood of confusion, since ‘always with you’ is a phrase that could be used to
describe life insurance and a life insurance company.”35 We do not agree that ANGEL
is descriptive with respect to funeral-related services. While it is possible that
ANGEL might be suggestive of death or the after-life and therefore not entirely
arbitrary in the context of Applicant’s funeral insurance services, we do not agree
that ANGEL is strongly suggestive of funeral insurance services. We do agree that
SIEMPRE CONTIGO (or “always with you”) is suggestive of the reliability that one
would like to associate with insurance services.
Notably, Opposer does not contend that GUARDIAN is the dominant component
of Applicant’s mark. Instead, Opposer contends that ANGEL GUARDIAN is the
dominant element.36 We agree with this assessment, because the evidence shows, as
Opposer explains, that “Applicant refers to itself in consumer-facing material as
simply ‘ANGEL GUARDIAN’”37 and emphasizes this phrase over the tagline
“SIEMPRE CONTIGO” in displays of the mark.38
With respect to the meaning and connotation of the marks, we have noted above
that GUARDIAN means “one that guards or secures: one to whom a person or thing
is committed for protection, security or preservation”; and “performing or appropriate

35 Id. at 40, 28 TTABVUE 42 (emphasis in original).
36 Id. at 35, 28 TTABVUE 37.
37 Id. at 36, 28 TTABVUE 38.
38 See, e.g., 22 TTABVUE 15, 25.
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to the office of a protector.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993)
p. 1007. The term ANGEL GUARDIAN engenders the commercial impression of
“guardian angel,” which means “an angel believed to have special care for a particular
individual,” id., and would likely be understood to have this meaning. Indeed,
ANGEL GUARDIAN, in Spanish, does have this precise meaning. Applicant’s
witness testified:
The belief in guardian angels is an established and beloved
Catholic dogma: every soul on earth has an angel
commissioned to guide, guard, and protect it; and to always
watch over it. The Spanish translation of “guardian angel”
is “angel guardian.” The “ANGEL GUARDIAN” portion of
the marks [sic] is meant to convey to its targeted
purchasers that the services offered under the ANGEL
Marks provide protection to [Applicant’s] insureds.39
We find that GUARDIAN and ANGEL GUARDIAN have appreciably different
connotations. Although both terms refer to an agent of protection, ANGEL
GUARDIAN has a religious or mystical significance that is absent from the term
GUARDIAN alone.
Considering the two marks in their entireties, we find that they create, overall,
different commercial impressions. Although both include the term GUARDIAN, in
Applicant’s mark that term is embedded in other matter that both reduces its visual
and phonetic salience and alters its meaning and connotation. While Opposer’s mark
creates the impression of a guard or protector, Applicant’s mark creates the distinct
impression of a spiritual or celestial being having a special relationship with a

39 Canasi dec. ¶ 24, 22 TTABVUE 9.
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particular individual. The tagline SIEMPRE CONTIGO (or “always with you”)
reinforces the impression of an angel specially assigned to the care of a particular
individual. In sum, we find that the two marks at issue have many distinguishing
characteristics.
E. Balancing the factors.

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We have found
Opposer’s mark commercially strong, but to some degree suggestive of insurance
services. The parties’ services are related and would be offered to the same classes of
customers, but through different channels of trade and under conditions that would
raise customers’ degree of care. The marks are similar only by virtue of the shared
term GUARDIAN. We have found that they have different meanings and engender
different commercial impressions. Moreover, there are several salient differences in
appearance, sound, and meaning between Applicant’s mark and Opposer’s mark.
Giving due regard to the differences between the services and the manner in which
they are marketed, we find that the differences between the marks are sufficient to
render confusion unlikely.
Decision: The opposition is DISMISSED.