The Lincoln National Life Insurance Companyv.Kansas City Life Insurance Company

Trademark Trial and Appeal Board

Nov 6, 2019

91236982 (T.T.A.B. Nov. 6, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: November 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Lincoln National Life Insurance Company
v.
Kansas City Life Insurance Company

_____

Opposition No. 91236982
_____

John D. Simmons, Bridget H. Labutta, and Keith A. Jones, of Panitch Schwarze
Belisario & Nadel LLP,
for The Lincoln National Life Insurance Company.

Clinton G. Newton and Reid L. Williams of Shook Hardy & Bacon LLP,
for Kansas City Life Insurance Company.
_____

Before Wellington, Ritchie, and Heasley,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
On January 26, 2017, Kansas City Life Insurance Company (“Applicant”) applied
to register ACCELETERM on the Principal Register in standard character form for
“insurance services, namely, underwriting, issuance, and administration of life
insurance policies,” in International Class 36.1

1 Application Serial No. 87315051 was filed under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce.
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On October 2, 2017, The Lincoln National Life Insurance Company (“Opposer”)
filed an opposition, alleging priority and likelihood of confusion with its prior
registered mark LINCOLN TERMACCEL, also in standard character form, for
“insurance services, namely, underwriting, issuance and administration of life
insurance,” in International Class 36.2
Applicant denied the salient allegations of the Notice of Opposition, except that
Applicant admitted that “the services listed in its application are identical to the
services listed in Opposer’s registration.”3 As discussed below, the parties agreed to
conduct this proceeding via Accelerated Case Resolution (“ACR”) based on summary
judgment briefs and attached evidence.
I. The Record and ACR Stipulation
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. As noted, the parties agreed
to conduct this proceeding via the streamlined process of ACR. The parties submitted
to the Board on August 2, 2019 a Joint Stipulation to Proceed via Accelerated Case
Resolution, which stipulates, inter alia, that 1) “summary judgment motions, and all
accompanying declarations and evidence, be treated as the final record and briefs in
the case;” 2) the “summary judgment evidence be treated as properly of record for
purposes of final decision;” and 3) the parties “consent to the Board’s resolution of any
and all disputed issues of material fact.”4

2 Registration No. 4783326 issued on July 28, 2015.
3 5 TTABVUE 3 (paragraph 12).
4 28 TTABVUE 2-3.
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The stipulation was approved by the Board on August 8, 2019.5 Opposer included
with its brief the declarations of Nancy Smith, Vice President, Legal & Assistant
Corporate Secretary of Lincoln Financial Company, a “holding company which
operates multiple insurance businesses, including the Opposer,”6 as well as the
declaration of Keith Jones, attorney for Opposer, and exhibits thereto. Applicant
included with its brief the declaration of Donald Krebs, Senior Vice President of Sales
and Marketing for Applicant, as well as the declaration of Clinton G. Newton,
attorney for Applicant, and exhibits thereto.7
II. Standing and Priority
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025-28 (Fed. Cir. 1999). Opposer submitted a copy of its pleaded registration into
the record as Exhibit E to the declaration of Nancy Smith. Although Exhibit E is not
a status and title copy of the pleaded registration, Ms. Smith testified that Opposer
“owns the federal trademark registration,” and that Opposer has used the mark
LINCOLN TERMACCEL for “insurance services, namely, underwriting, issuance

5 29 TTABVUE.
6 16 TTABVUE 24.
7 22 TTABVUE 23 et. seq. In the June 28, 2019 order denying summary judgment, the Board
cautioned that several exhibits were improperly designated as “confidential.” The order
further cautioned that “[i]n the future, the Board may disregard the ‘confidential’ designation
for those matters which are improperly designated.” 24 TTABVUE 5, n.5 (cites omitted). As
noted, we treat only properly designated information as confidential.
Opposition No. 91236982
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and administration of life insurance” since “at least as early as May 11, 2015” as
further “set forth in U.S. Registration No. 4783326,”8 which issued as a registration
on July 28, 2015. Applicant filed its intent to use application on January 26, 2017,
and Applicant has not filed a Statement of Use. We find that Opposer has established
its standing and priority in this proceeding. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice King’s
Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record related to a likelihood of confusion. See In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods and
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). We discuss the du Pont factors for which there is relevant
argument and evidence.

8 16 TTABVUE 25 (Paras. 10-13).
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A. Services and Channels of Trade
As noted above, Applicant admitted in its answer that “the services listed in its
application are identical to the services listed in Opposer’s registration.”9 We agree
that the services, as identified, are identical. To the extent Applicant argues that the
parties are not competitors, and that the services will travel in different channels of
trade to different classes of consumers, we are bound by the unrestricted
identifications. See Octocom Sys., Inc. v. Hous. Computer Servs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the identification
of goods set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the particular channels of trade or the
class of purchasers to which the sales of goods are directed.” (citations omitted)).
Where, as here, the services are identical, they are presumed to travel in the same
channels of trade to the same class of consumers. 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). Thus, without
regard to Applicant’s arguments and evidence of marketplace use, we must presume
that the trade channels are the same.
The second and third du Pont factors weigh heavily in favor of finding a likelihood
of confusion.

9 5 TTABVUE 3 (paragraph 12).
Opposition No. 91236982
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B. The Strength of Opposer’s Mark
Although neither Opposer nor Applicant makes a specific argument as to the
strength of Opposer’s LINCOLN TERMACCEL mark, both parties discuss generally
the conceptual and commercial strength of the mark. The parties agree that the term
LINCOLN, a house mark used by Opposer, is arbitrary, although they disagree as to
the effect of this element on Opposer’s mark as a whole.10
In the confidential record, Opposer provided evidence of its revenue and
advertising expenses for the LINCOLN TERMACCEL mark between 2015 and 2017.
There is no evidence that third parties use a combination of “TERM” and “ACCEL,”
the shared elements of the parties’ respective marks, as a mark for life insurance
services. Overall, there is insufficient evidence for us to make a finding of commercial
strength, and we find it to be neutral.
As for conceptual strength, both parties agree that “TERM” may be understood
by consumers as referring to “term life insurance.”11 The parties disagree as to
whether consumers would have an understanding of “ACCEL” with regard to life
insurance. There is, however, ample evidence in the record of life insurance policies
referring to provisions that may “Accelerate” their “Term,” such as “Accelerated
Death Benefit for Chronic Condition;” “Accelerated Death Benefit for Critical Illness;”
and “Accelerated Death Benefit for Terminal Illness.”12 In this regard, we find that
Opposer’s LINCOLN TERMACCEL is suggestive of life insurance policies that may

10 16 TTABVUE 26; 22 TTABVUE 11, 100.
11 16 TTABVUE 25; 22 TTABVUE 24.
12 22 TTABVUE 33.
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include term acceleration provisions. Opposer’s mark is nevertheless inherently
distinctive, and entitled to a normal scope of protection under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b).
C. Comparison of the Marks
We thus consider the similarity or dissimilarity of the parties’ marks in their
entireties as to appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014); In re E. I. du Pont De Nemours & Co., 177 USPQ at 567; Palm
Bay Imps., 73 USPQ2d at 1692. In comparing the marks, we are mindful that the test
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests.
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). Where, as here, the identified services are identical,
the degree of similarity between the marks necessary to support a determination of
likelihood of confusion declines. See Bridgestone Ams. Tire Operations LLC v. Fed.
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).
Opposer’s mark is LINCOLN TERMACCEL. Applicant’s mark is ACCELETERM.
Opposer argues that Applicant’s mark merely transposes the elements “TERM” and
“ACCEL,” and omits the house mark, LINCOLN. Applicant argues in response that
the terms are not merely transposed, and that LINCOLN is the dominant portion of
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Opposer’s mark.
As noted above, we find the elements “TERM” and “ACCEL” to be suggestive of
life insurance policies that may include an acceleration provision on the term of the
policy. The order of the elements does not affect our finding. See In re Nationwide
Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER, with
“RUST” disclaimed, for a rust-penetrating spray lubricant likely to be confused with
BUST RUST for a penetrating oil); Bank of America National Trust and Savings
Ass’n v. The American National Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978)
(holding BANKAMERICA and BANK OF AMERICA, on the one hand, and
AMERIBANC, on the other, convey the same meaning and create substantially
similar commercial impressions). In this regard, Applicant’s ACCELETERM gives a
very similar commercial impression to Opposer’s LINCOLN TERMACCEL, as
applied to identical life insurance services.
Although Opposer’s mark contains a house mark, LINCOLN, our precedent
dictates that the addition of a house mark does not necessarily avoid likelihood of
confusion. “[S]uch addition may actually be an aggravation of the likelihood of
confusion as opposed to an aid in distinguishing the marks so as to avoid source
confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations
omitted) (finding LE CACHET DE DIOR confusingly similar to CACHET). See also
In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972)
(stating that addition of a trade name will make consumers think that products have
a common origin or that the companies have merged); Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying principle that “the addition
Opposition No. 91236982
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of a trade name or house mark or other such matter to one of two otherwise similar
marks will not serve to avoid a likelihood of confusion.”). We find, rather, that
consumers are likely to perceive Applicant’s mark as a variant on Opposer’s
LINCOLN TERMACCEL.
Overall, we find the similarities in connotation and commercial impression to
outweigh differences in sight and sound. The first du Pont factor also favors finding
a likelihood of confusion.
D. Conditions of Sale
Applicant asks us to consider the conditions of sale for the identified life insurance
services. Applicant points out that life insurance policies present a fairly substantial
investment for purchasers. It is axiomatic that we must make our determination
based on the least sophisticated consumer, which in this case may include members
of the general public who have expertise in neither the insurance nor the legal fields.
See Stone Lion Capital Partners, 110 USPQ2d at 1163 (affirming that TTAB properly
considered all potential investors for recited services, including not only sophisticated
investors, but also “the least sophisticated potential purchasers”). Nevertheless, the
record does indicate that life insurance policies would typically cost a consumer
thousands of dollars over a twenty or thirty year term.13 Consumers are thus likely
to exercise a somewhat heightened level of care, and we find the fourth du Pont factor
to weigh somewhat against a finding of likelihood of confusion.

13 See for example, Opposer’s submitted advertised materials for LINCOLN TERMACCEL at
16 TTABVUE 40-41.
Opposition No. 91236982
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E. Balancing the Factors
Considering all of the arguments and evidence of record as they pertain to the
relevant du Pont factors, we find that the services and channels of trade are identical.
While the shared elements of the parties’ marks are suggestive of these services,
Opposer’s pleaded mark is nevertheless inherently distinctive, and the marks,
considered as a whole, are similar, especially in connotation and commercial
impression. While consumers of the identified life insurance services may be expected
to exercise a somewhat heightened degree of care in their purchasing decisions, this
is outweighed by the use of similar marks on identical services.
We find a likelihood of confusion between Opposer’s LINCOLN TERMACCEL and
Applicant’s ACCELETERM as identified for identical services.
Decision: The opposition is sustained.