UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL N9:
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`74/716462
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`APPLICANT: USF&G CORP.
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`CORRESPONDENT ADDRESS:
`Robin Ramswick Fuller
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`The St. Paul Companies, Inc.
`MC5 15A
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`385 Washington Street
`St. Paul MN 55102
`MARK: VISIONPAK
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`CORRESPONDENT’S REFERENCE/DOCKET N0: 256.0003
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`Please provide in an correspondence:
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`CORRESPONDENT EMAIL
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`‘
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`1. Filing date, serial number, mark and
`applicant's name.
`2. Examining Attorney's name and
`Law Office number.
`3. Your telephone number and e-mail
`address.
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON APPEAL
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`TRADEMARK EXAMINING ATTORNEY’S APPEAL BRIEF
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Applicant:
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`USF&G CORP.
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`Trademark:
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`VISIONPAK
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`Serial No:
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`74/7 16462
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`Attorney;
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`Robin Ramswick Fuller
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`Address;
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`The St. Paul Companies, Inc.
`MC5 15A
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`385 Washington Street
`St. Paul MN 55102
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`BEFORE THE
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`TRADEMARK TRIAL
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`AND
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`APPEAL BOARD
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`ON APPEAL
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`This concerns appeal of a refiisal under Section 2(d) made Final in 1996. As the applicant filed
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`many actions, including a number of requests for reconsideration and suspension of action on this
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`appeal and a petition to cancel the cited registration, the examining attorney provides the following
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`description of the proceedings.
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`STATEMENT OF PROCEEDINGS
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`The application was filed August 16, 1995 for the proposed mark VISION-PAK for services
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`identified as “insurance underwriting services.” The application was based on Section 1(b) and no
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`allegation of use has been filed.
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`In the first Office action mailed February 6, 1996, the examining attorney refused registration of
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`VISION-PAK under Section 2(d) on the basis of likelihood of confiision with Reg. Nos. 1335908
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`VISION for use with “underwriting insurance services” and 1726230 VISION 2000 for “life
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`insurance underwriting services,” both owned by the same entity; required amendment to the
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`recitation of services; and required applicant to provide information and materials.
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`In its response
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`filed September 4, 1996, the applicant argued against likelihood of confusion based primarily on a
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`list of 8 registrations that included VISION as a component as arguably showing VISION is a weak
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`component, amended the recitation of services to “insurance underwriting services in the fields of
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`property and casualty,” responded to the examining attomey’s questions, and submitted
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`promotional materials about applicant’s services.
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`In the Final Office action mailed November 5, 1996, the examining attorney accepted the
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`applicant’s amendment to the recitation of services, information and materials about the services,
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`withdrew refiisal on the basis of Reg. No. 1726230, and made Final the refiasal under Section 2(d)
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`for the proposed mark VISION-PAK on the basis of Reg. 1335908. Evidence attached to the Final
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`action included Webster’s II New Riverside University Dictionary for the “package;” copies fi'om
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`X-search of 13 applications and registrations owned by this applicant that show applicant itself
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`obtained registrations for use with the broadly identified “insurance underwriting services” (the
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`same services identified in the cited registration),
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`life, and property and/or casualty insurance
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`services under the same and/or similar marks; copies from X-search of 28 third parties’
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`registrations for marks that include PAK and its functional variants, demonstrating that PAK and
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`its functional variants would be regarded as weak and in frequent use in the insurance industry;
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`copies from the specimen brochure for registrant’s companion Reg. 1726230 for VISION 2000;
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`copies from X-search of approximately 40 third party registrations showing registration for the
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`same and/or similar mark for services identified in this application and in the cited registration.
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`On May 5, 1997, the applicant filed a Notice of Appeal and Request for Reconsideration, argued
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`against the refusal, arguing on the one hand that VISION is a weak component as shown by
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`submission of 14 registrations for goods and services in Classes 16, 36, 41, and 42, and 7
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`applications for goods and services in Classes 9, 35, 36, 41 and 42, that include VISION as a
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`component, but arguing on the other hand that PAK is not a weak component, stating incorrectly
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`that the examining attorney relied “on a mere three registrations,” when in fact the examining
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`attorney had attached 28 third parties’ registrations that include PAK and its variants showing PAK
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`to be a frequent and weak component in the insurance field.
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`In an order from the Board mailed
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`May 29, 1997, Judge Cissel
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`instituted the appeal and suspended action thereon, granted the
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`reconsideration request, and remanded the file. The examining attorney denied the request for
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`reconsideration, and continued the Final action refusing registration of VISION-PAK for
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`“insurance underwriting services in the field of property and casualty. In this action, the examining
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`attorney distinguished the VISION registrations submitted by applicant (4 were for use with vision
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`and eye care insurance services, 2 were for use with limited, highly specialized services - fimeral
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`and burial insurance and insurance and administration for auto repair (by then cancelled)), and one
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`(Reg. 1924071 now cancelled) for use with a list of financial services, insurance underwriting
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`services being the last) and noted that opposition proceedings had commenced against all but 2 of
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`the pending VISION applications identified by applicant.
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`The examining attorney attached
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`additional evidence supporting the refusal,
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`including, a search strategy showing the dearth of
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`registrations (a mere 6, see line 17) that included VISION as a component for use in connection
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`with Class 36 insurance underwriting and administration services not for eye care or vision
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`insurance services, contrasted with 1106 hits for registrations for PAK and its variants for Class 36
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`services (see line 7); copies from X-search of 23 registrations for PAK and its variants limited to
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`Class 36 insurance underwriting and administration services; and definitions for “package
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`insurance” and “package policy” from Dictionary of Insurance Terms.
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`In an order from the Board mailed January 12, 1998, Judge Simms resumed the appeal and
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`allowed applicant 60 days to file its brief.
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`On March 13, 1998, the applicant requested suspension of the appeal, two amendments, and a
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`second request for reconsideration. The applicant requested amendment of the recitation of
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`services to “insurance underwriting services for emerging technology companies in the field of
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`property and casualty,” requested amendment of the mark from VISION-PAK to VISIONPAK,
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`and argued against the refusal under Section 2(d), contending again that VISION is weak -
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`notwithstanding the above-noted evidence of only 6 registrations for non-eye care insurance
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`services that include VISION, but that PAK is not weak — notwithstanding the above-noted 1106
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`hits of registrations in Class 36 in the search strategy and 28 ‘PAK’ registrations, because PAK had
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`not been disclaimed.
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`In an order from the Board mailed April 28, 1998, Judge Seeherman granted remand, suspended
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`action on the appeal, and remanded the file to the examining attorney. The examining attorney
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`accepted the amendments of the recitation of services and mark, denied the request
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`for
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`reconsideration, continued the Final action, attached evidence supporting the refusal -including
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`copies from X-search of 3 newly issued registrations for PLATINUM PAK (PAK disclaimed),
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`GLOBAL SECURITY PACKAGE (SECURITY PACKAGE disclaimed), and POLLUSTION
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`4
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`PROTECTION PACKAGE (permitted on the Supplemental Register) for Class 36 insurance and
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`underwriting services; copies from TRAM showing abandonment of the previously-noted
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`applications having VISION as a component against which oppositions had been filed (VISION,
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`ALEXIS.-VISION, VISON HEALTHCARE RESOURCES, and INVISION).
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`In an order from the Board mailed August 14, 1998, Judge Seeherman resumed action on the
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`appeal and allowed applicant 60 days to file its brief. On October 7, 1998, applicant filed a Notice
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`of Appeal and stated that applicant was in negotiations with the owner of the cited registration and
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`if the parties concurred in a consent, the appeal would be moot. Applicant did not file its brief by
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`October 14, 1998.
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`On November 6, 1998, applicant filed a Request for Leave to File Appeal Brief Out Of Time
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`based on a docketing error, the mistaken duplicative Notice of Appeal and statement therein that
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`applicant was in negotiations with owner of the cited registration, that delay would not prejudice
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`any third party’s interests, and that a negotiated consent would moot the appeal. The applicant’s
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`brief was filed November 6, 1998.
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`On November 13, 1998, the applicant filed its third request for suspension of the appeal,
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`indicating therein that applicant filed on November 8, 1998, a Petition for Cancellation of the cited
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`registration, seeking partial cancellation of the registration or in the alternative, modification of the
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`services in the cited registration, to eliminate the basis for refusal.
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`In an order from the Board mailed January 21, 1999, Judge Seeherman granted applicant’s
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`request to file its brief out of time, granted the request for suspension of action on the appeal in
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`view of the Petition to Cancel, and stated “Applicant should advise the Board when there has been
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`a final disposition of Cancellation No. 28,265.”
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`Office TTABVUE records, a copy of which is attached hereto for convenience of the Board and
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`applicant,
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`indicate that applicant’s Petition to Cancel cited Reg. 1335908 was dismissed with
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`prejudice July 2, 2001, approximately 8 months afier applicant failed to respond to the Board’s
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`Noverrlber 17, 2000 order to show cause and suspension of proceedings, which issued a year and a
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`half after the owner of the cited registration filed its response in June 1999. There is no indication
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`that applicant advised the Board of the 2001 final disposition of its Cancellation Petition. There is
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`no indication that the owner of the cited registration (a) agreed to modify the identification of
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`services in Reg. No.1335908; (b) agreed to partial cancellation of Reg. No. 1335908; or (c)
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`consented to applicant’s registration of this application.
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`The examining attorney received the file April 14, 2004, with an undated order from the Board
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`that the examining attorney file her brief in accordance with Trademark Rule 2.142(b), e.g.,
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`“within 60 days afier the brief of the appellant is sent to the examiner?”
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`ISSUE ON APPEAL
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`The sole issue on this appeal is whether Final refiisal of the proposed mark VISIONPAK for use
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`with “insurance underwriting services for emerging technology companies in the field of property
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`and casualty” under Section 2(d) on the basis of likelihood of CO1‘lfi.lSlOI'l with Reg. No. 1335908 for
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`the mark VISION for use with “underwriting insurance services” is proper.
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`EVIDENCE
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`Almost all the evidence was submitted by the examining attorney as attachments to Ofiice
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`actions. The only evidence submitted by applicant consists of copies from X-search of 21
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`applications and registrations attached to the request for reconsideration filed May 1997. The
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`dictionary evidence is from Webster’s II New Riverside University Dictionary and the Dictionary
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`of Insurance terms, showing the definition of package as “a proposition or offer consisting of
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`several items each of which must be accepted,” that PAK would be understood as having the
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`' Office TRAM records, a copy of which is attached hereto show that the file was received in the Law Office of the
`examining attorney April 8, 2004, its contents having been scanned to TICRS March 29, 2004. The file also contains a
`page indicating “Case Forwarded to Examining Attorney for Brief: 3/23/04.” The examining attorney was out of the
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`6
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`meaning “package,” that “package insurance” means “multiple line insurance,” and “package
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`policy” means “several basic property and/or liability policies combined to form a single policy;”2
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`applicant’s promotional materials in the form of two brochures — applicant’s 4-page brochure
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`shows that applicant’s services include “a host of valuable services to assist traveling employees,”
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`that its services are “available through independent agents that represent applicant,” and that its
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`services
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`include
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`“general
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`liability
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`covering
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`bodily
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`injury,...personal
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`injury,...medical
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`payments,...repatriation and disease coverage,...medical...assistance,...traditional
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`coverages
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`including...umbrella liability” and applicant’s 3-page brochure describes applicant’s VisionPak
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`services as including “personal
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`injury,...medical payments...medical coverage for traveling
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`employees,
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`spouses,
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`and
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`family members
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`and
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`accidental
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`death
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`and
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`dismemberment
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`coverage. . .traditional coverages including. . .umbrella liability,” copies of the examining attorney’s
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`December 2, 1997 X-search strategy showing 1106 hits for PAC and variants in Class 36 and 6 hits
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`for VISION in Class 36 that are not for use with eye care or vision services; copies from X-search
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`attached to Office action #2 of registrations owned by applicant, showing that applicant applied for
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`and obtained registrations for broad identifications of services, e.g.,
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`insurance underwriting
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`services and financial planning (1299867, 1308315, 1303079, 1305275, 1303078, SN 74624580),
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`for
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`life, health and annuity underwriting services (1531241, 1540840),
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`for
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`insurance and
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`reinsurance underwriting in the fields of property, casualty and life (192663, 1918989), for life
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`insurance underwriting services (1854301) and for life insurance and annuity underwriting
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`Office from April 7 through 14, 2004. In keeping with past practice, the examining attorney has calculated the date for
`the filing its brief as 60 days from March 23, 2004, e. g., May 24, 2004.
`2 “Multiple line insurance,” as defined in the same dictionary is “combination of coverages from property and liability
`policies. See also Homewoners Insurance Policy; Personal Automobile Policy (PAP); Commercial Package Policy.”
`In reviewing the file, it appears that the page for “multiple line” from Dictionary of Insurance Terms is missing.
`Because the Dictionary of Insurance Terms is a standard reference text in the field of insurance services and as this
`page may have become missing during scanning of the file into TICRS by Office contractors, the examining attorney
`attaches hereto copy of that page from Dictionary of Insurance and requests that the Board take judicial notice. B. V.D.
`Licensing Corp. v. Body Action Design, Inc., 6 USPQ2d 1719 (Fed. Cir. 1988).
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`(1763272); copies from X-search attached to Office actions #2 and 3 of many entities’ registrations
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`for marks that include the fimctionally equivalent terms PAC, PAK, PACKAGE in singular and
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`plural form used in connection with insurance and other financial products and services (omni—pac
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`1945340, BANKPACK 1924063, POOL PACK 1890182, MOVE-PAK 1896480, BENEPAK,
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`1986068, THE TEXAS COMMERCIAL PACKAGE POLICY 1944967, TERMINAL PAC
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`1858860, VenuePak 1850339, RESIDENTIAL BUILDER PAK 1900097, APPOINTPAK
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`1818831, DAIRYPAK 1853297, PAK II 1856954, CUSTOMER SATISFACTION PAK 1763249,
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`ADVANTAGEPAC 1718741, ELITEPAC 1799624, IM PAK 1740189, PRINT PAC 1783625,
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`CADDYPAK 1832412, BONDPAK 1766693, TRAC PAC 1686732, RBH SERVICE PAK
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`1667845, FAVOROPAK 1738616, THE COMPLETE PACKAGE 1687629, MACHINE PAC
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`1666941, GRADPAK 1654667, ESCROPAC 1633424, LUMBER PAC 1659245, PACKAGING
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`DEPOT 1660772); and copies from X-search attached to Office action #2 of numerous third party
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`registrations for marks showing use with services identified in the cited registration and insurance
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`underwriting for property and casualty; copies of specimen from the file of Reg. 1726230 VISION
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`2000 attached to Office action #2, showing registrant’s services include “accidental death benefit
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`rider, additional insured rider,. . .business insurance exchange rider, chi1dren’s insurance rider;” and
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`copies of Office TRAM records attached to Office action #3 showing cancellation of Reg 1631849
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`AUTOVISION and from TTAB records of oppositions filed by owner of cited registration against
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`75118321 VISION,
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`75118176 ALEXIS-VISION,
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`75070096 VISION I-IEALTHCARE
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`RESOURCES AND 75021956 INVISION.
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`LEGAL STANDARD AND ARGUMENT
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`The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
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`1973),
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`listed the principal factors to consider in determining whether there is a likelihood of
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`confixsion. Among these factors are the similarity of the marks as to appearance, sound, meaning
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`and commercial impression, the similarity of the parties’ respective services, and similarity of the
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`markets and channels of trade. The overriding concern is to prevent buyer confusion as to the
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`source of the goods. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (ND. Ga.
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`1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in
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`favor of the registrant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840; 6 USQ2d 1025 (Fed.
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`Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).
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`In this case, key considerations in the analysis of likelihood of confiision are the similarities
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`between the parties’ respective services, marks and markets.
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`THE PARTIES’ MARKS ARE HIGHLY SIMILAR OVERALL
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`The mark in the cited registration is VISION. The applicant applied to register the proposed
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`mark VISION-PAK, amended to VISIONPAK in its second request for reconsideration after the
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`Final action. The following principles are applied. The parties’ respective marks are considered in
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`their entireties for similarities in appearance, sound, meaning and commercial impression. In re
`Mack, 197 USPQ 755 (TTAB 1977). When the applicant's mark is compared to a registered mark,
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`"the points of similarity are of greater importance than the points of difference." Esso Standard Oil
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`Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ
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`517 (1956).
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`The test
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`is not whether the marks can be distinguished when subjected to a
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`side-by-side comparison. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179
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`(TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a
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`general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling &
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`Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
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`(TTAB 1975); TMEP section 1207.01(b).
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`The general rule is that likelihood of confusion under Section 2(d) is not avoided between
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`otherwise confusingly similar marks merely by adding or deleting wording that is descriptive in
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`relation to the identified goods and/or services. Coca-Cola Bottling Co. v. Joseph E. Seagram &
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`Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) ("BENGAL" and "BENGAL LANCER");
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`Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) ("THE LILLY"
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`and "LILLI ANN"); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) ("CONFIRM" and
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`"CONFIRMCELLS");
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`In re Riddle, 225 USPQ 630 (TTAB 1985)
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`("ACCUTUNE"
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`and
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`"RICHARD PETTY'S ACCU TUNE"); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB
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`1979) ("HEAD START" and "HEAD START COSVETIC"); In re Pellerin Milnor Corp., 221
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`USPQ 558 (TTAB 1983) (MILTRON and MILTRONICS); In re BASF A.G., 189 USPQ 424
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`(TTAB 1975) (LUTEXAL and LUTEX); TMEP sections 1207.01(b)(i) and (iii).
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`The applicant’s argument that the examining attorney impermissibly dissected a unitary mark is
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`unfounded and contrary to the following well-established principles. While respective marks are
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`viewed in their entireties, certain features of a mark may be more significant
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`in creating a
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`commercial impression. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
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`1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable
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`Bancorporation, 229 USPQ 709 (TTAB 1986).
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`It is a well-established principle that in articulating
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`reasons for reaching a conclusion on the issue of likelihood of confusion, “there is nothing
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`improper in stating that, for rational reasons, more or less weight has been given to a particular
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`feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their
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`entireties.” In re National Data Corp., 732 F2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
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`It is
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`the examining attomey’s position, well-supported by evidence of record, that in this case, when the
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`only or initial, dominant portion is the same in both marks, VISION, then confiision is likely
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`notwithstanding applicant’s addition of the frequently used, and less significant by virtue of
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`placement and meaning, suffix PAK when considering the parties’ related services and market.
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`Applicant argued on the one hand that VISION is a weak and diluted term for insurance related
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`services and should be entitled to only a narrow scope of protection, and on the other hand that
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`PAK is not weak or frequently used in the insurance industry, and that applicant’s addition of the
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`PAK suflix should be enough to avoid likelihood of confiision. These arguments ignore the facts
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`and evidence. The examining attorney would agree that in connection with insurance services for
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`eyes, eye care, and vision, the term VISION could be construed as less significant as descriptive of
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`the intended use of those services.3 However, neither applicant’s nor registrant’s services are for
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`use in connection with eye care, e.g., vision, insurance services. The evidence shows, as of the
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`December 2, 1997 search strategy attached to Office action #3, a mere SIX registrations in Class 36
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`issued for marks having VISION as a component that are not for use in connection with eye care,
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`e.g., vision, insurance services (see line 17). Of those six registrations, four are now cancelled --
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`Reg. 1631849 AUTOVISION, for auto repair insurance administration; 1638737 PREVISION, for
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`funeral and burial services insurance underwriting; 1924071 VISIONTRAK for many financial
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`services, and registrant’s companion Reg. 1726230 VISION 2000, for life insurance underwriting.
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`This leaves only two registrations extant that include VISION as a component for insurance
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`services - cited Reg. 1335908 VISION for underwriting insurance services and Reg. 1960121
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`BENEVISION for" insurance benefit claims administration services. With only these two
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`registrations of record that include VISION for any type of non-eye-care Class 36 insurance
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`services, and registrant’s Reg. 1335908 being the only registration for VISION for use with
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`underwriting insurance services, contrary to applicant’s argument
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`that VISION is weak,
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`the
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`registrant’s mark VISION may be viewed as having some strength, because there are no other
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`VISION registrations for non-eye-care insurance underwriting services, there are few registrations
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`for VISION marks for any other non-eye-care related insurance services, cited Reg. 1335908
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`3 These registrations for eye care and vision insurance include 1448854 DELTA VISION (VISION disclaimed);
`1726186 VISIONPLUS; 1792928 VISION PERFECT (VISION disclaimed); 2003668 AMERIVISION.
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`VISION is incontestable, and cited Reg. 1335908 VISION withstood this applicant’s attempts to
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`negotiate a consent and Petition to Cancel seeking to limit registrant’s identification of services.
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`The same search strategy, demonstrates the weakness of the PAK suffix in applicant’s
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`proposed mark, as it shows 1106 registrations for marks having PAK as a component for Class 36
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`insurance services (see line 7). As noted above, the examining attorney provided copies of 31
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`marks with PAK or its variant as a component used in the insurance industry. The search strategy,
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`the few relevant registrations for marks with VISION as component and the many more, relevant
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`third party registrations and applications with PAK or its variants as a component, the regular
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`dictionary and insurance dictionary definitions for “package,” the applicant’s brochure, together
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`comprise overwhelming evidence against applicant’s argument that VISION is diluted and weak
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`for insurance services (other than eye care insurance services) and against applicant’s argument
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`that PAK is not weak but sufficiently distinguishes the parties’ marks in this case.
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`Even if the Board were to accept applicant’s argument that VISION is weak, even “weak”
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`marks are still entitled to protection against registration by a subsequent user of the same or similar
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`mark for the same or closely related goods or services. See Hollister Incorporated v. Ident A Pet,
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`Inc., 193 USPQ 439' (TTAB 1976) and cases cited therein.
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`Applicant also argued that the proposed mark VISIONPAK is suggestive because purchasers
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`will understand this mark to refer to the “pack” or “group” of applicant’s industry experts who
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`possess the “vision” behind applicant’s insurance underwriting services and also as a “group” or
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`“bundle” of insurance services offered for emerging technology companies with “vision” and
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`“foresight,” and this creates substantial differences in commercial
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`impression. Even if the
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`applicant’s above-envisioned scenarios were true, the scenarios apply to registrant and its VISION
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`mark equally as well: purchasers will understand registrant’s VISION insurance services refer to
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`registrant as a source who possesses “vision” behind registrant’s insurance underwriting services
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`12
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`and registrant’s VISION broadly identified underwriting insurance services comprise a group of
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`insurance services offered for emerging technology companies with “vision” and “foresight.”
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`In it argument against the examining attomey’s position that PAK is less dominant and weak,
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`the applicant omitted consideration of evidence showing that PAK and its functional variants are
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`weak and descriptive in the insurance field. The evidence relied on by the examining attorney is
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`the plain meaning from Webster’s II New Riverside University Dictionary of “package,” for which
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`PAK is a readily understood abbreviation, “a proposition or offer consisting of several items each
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`of which must be accepted;” the meanings from Dictionary of Insurance Terms of “package
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`insurance” and “package policy” in the insurance field, “multiple line insurance — combination of
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`coverages from property and liability policies” and “several basic property and/or liability policies
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`combined to form a single policy,” respectively;
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`the applicant’s statements in its brochure
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`reinforcing the View that the suffix PAK in VISIONPAK would be understood to have the meaning
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`package, e .g., a group of services offered together, e.g., “VisionPak...nimble enough to handle
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`regular and rapid change” and “VISIONPAK not only takes care of your basic needs but also adds
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`special coverages that minimize the unique risks you face;” and copies from X-search of
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`registrations for Class 36 insurance underwriting and administration services for marks that
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`included PAK or its variants as a component.
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`The applicant’s argument against the weakness of PAK rests on its assertion that since PAK was
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`not disclaimed in some registrations, PAK in its proposed mark should not be considered to be
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`weak and less dominant.
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`In this regard, applicant is missing the point.
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`In order for a tem to be
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`considered weak and less dominant there is no requirement that the term be disclaimed, particularly
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`in cases where it forms part of another word and is incapable of being disclaimed. The applicant’s
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`argument also disregards the evidence: the dictionary definitions, the statements in applicant’s
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`brochure, the third party registrations show that PAK and its variants are frequently used in this
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`industry; and the subsequent, less significant placement of PAK as a suffix in the albeit unitary
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`mark VISIONPAK. The examining attomey’s evidence clearly demonstrates that PAK is not a
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`significant, distinguishing element in the proposed mark VISION-PAK, or as amended after two
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`requests for reconsideration, VISIONPAK.
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`Both parties’ marks are in typewritten form. This means that either may present its mark in any
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`form.4 The applicant may present VISIONPAK in any form, may emphasize the initial term
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`VISION, and may further diminish the significance of the second term PAK. As shown in
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`applicant’s brochure, the applicant has presented the mark as VisionPak. Note that while Reg.
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`1726230 for registrant’s companion mark VISION 2000 was in typed form, the copies of its
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`specimen brochure for VISION 2000, attached to the Office action #2, show VISION in much
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`larger, darker, more dominant lettering and 2000 on a second line in less dominant outline form.
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`This specimen brochure is evidence that registrant’s customers had seen the VISION mark
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`followed by the less significant suffix 2000, and as shown by its content, that registrant’s VISION
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`"2000 services,
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`like applicant’s VISIONPAK services,
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`included a package of services, e.g.,
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`accidental death, additional insured, business insurance, children’s insurance, etc., some of the very
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`items discussed in applicant’s brochure, e.g., in addition to business insurance, accidental death,
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`additional insureds (spouses and family members). The fact that the record for this application
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`includes two registrations owned by the same entity for VISION and VISION 2000 for insurance
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`underwriting services supports the conclusion that customers would consider VISIONPAK to be
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`another in registrant’s line of VISION insurance underwriting services.
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`Inasmuch as the initial dominant wording VISION is the same in both parties’ marks, even if
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`customers were to note or remember the specific difference in the marks, the difference is so minor
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`4 Registration of a mark in typewritten form means that the mark may be displayed in any style of lettering. Squirtco v.
`Tomy Corp., 216 USPQ 937 (Fed. Cir. 1983); In re Mars, Inc., 221 USPQ 1185 (TTAB 1983). Registrant is entitled to
`adopt any style of lettering in the display of its mark, including styling identical to that used by applicant, and if this
`application issued to registration, vice versa.
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`that customers are not likely to believe that they indicate goods and/or services originating from
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`separate sources. Rather, customers will view any difference as a minor variation of the same
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`mark,
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`identifying goods and/or services from a single source. The less dominant,
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`in terms of
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`position and meaning, suffix PAK in applicant’s proposed mark is not sufficient to distinguish the
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`marks. When considered in their entireties, the parties’ marks create highly similar commercial
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`and overall impressions.
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`THE PARTIES’ SERVICES AND MARKETS ARE CLOSELY RELATED
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`The services identified in the cited registration are “underwriting insurance services.” The
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`services identified in this application, as of the second request for reconsideration, are “insurance
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`underwriting services for emerging technology companies in the field of property and casualty.”
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`The following principles are applied. The parties’ respective goods and/or services are compared
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`to determine if they are related or if the activities surrounding their marketing are such that
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`confusion as to origin is likely.
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`In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re
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`International Telephone and Telegraph Corp, 197 USPQ 910 (TTAB 1978); Guardian Products
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`Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). The parties’ respective goods and/or
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`services do not need to be identical or even competitive to find a likelihood of COI1fLlSlOIl. They
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`need only be related in some manner, or the conditions surrounding their marketing be such, that
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`they could be encountered by the same purchasers under circumstances that could give rise to the
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`mistaken belief that the goods and/or services come from a common source.
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`In re Martin's
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`Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning
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`Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984);
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`Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International
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`Telephone & Telegraph Corp, 197 USPQ 910 (TTAB 1978).
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`
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`When the marks of the respective parties are highly similar, as in this case, there need be only
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`some relationship between the goods and/or services of the respective parties in order to determine
`49-
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`that there is a likelihood of confiision.
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`In re Concordia International Forwarding Corp., 222
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`USPQ 355 (TTAB 1983); Amcor, Inc. v