THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`
`Oral Hearing:
`December 3, 2009
`
`
`
`
`
`
`
`
`
`
`Mailed:
`February 12, 2010
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Capital Blue Cross
`________
`
`Serial No. 78869843
`_______
`
`Elliott C. Bankendorf of Husch Blackwell Sanders Welsh &
`Katz, Ltd. for Capital Blue Cross.
`
`Meghan Reinhart, Trademark Examining Attorney, Law Office
`108 (Andrew Lawrence, Managing Attorney).
`_______
`
`Before Quinn, Zervas and Kuhlke, Administrative Trademark
`Judges.
`
`Opinion by Kuhlke, Administrative Trademark Judge:
`
`
`Capital Blue Cross seeks registration on the Principal
`
`Register of the standard character mark AVALON for “issuing
`
`group and individual health insurance policies and offering
`
`as a licensed insurer such health insurance policies and
`
`the administration thereof excluding acting as a broker or
`
`
`PRECEDENT OF THE TTAB
`
`
`Oral Hearing:
`December 3, 2009
`
`
`
`
`
`
`
`
`
`
`Mailed:
`February 12, 2010
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Capital Blue Cross
`________
`
`Serial No. 78869843
`_______
`
`Elliott C. Bankendorf of Husch Blackwell Sanders Welsh &
`Katz, Ltd. for Capital Blue Cross.
`
`Meghan Reinhart, Trademark Examining Attorney, Law Office
`108 (Andrew Lawrence, Managing Attorney).
`_______
`
`Before Quinn, Zervas and Kuhlke, Administrative Trademark
`Judges.
`
`Opinion by Kuhlke, Administrative Trademark Judge:
`
`
`Capital Blue Cross seeks registration on the Principal
`
`Register of the standard character mark AVALON for “issuing
`
`group and individual health insurance policies and offering
`
`as a licensed insurer such health insurance policies and
`
`the administration thereof excluding acting as a broker or
`
`
`
`Serial No. 78869843
`
`insurance agent” in International Class 36.1 Registration
`
`has been refused under Section 2(d) of the
`
`Trademark Act, 15 U.S.C. §1052(d), on the ground that
`
`applicant’s mark, when used with its identified services,
`
`so resembles the registered marks set forth below as to be
`
`likely to cause confusion, mistake or deception.
`
`Registration No. 2388231 for the mark
` (“risk management”
`disclaimed), for services identified as
`“insurance brokerage services in the field of
`surety bonds, marine cargo insurance, errors and
`omissions insurance and other lines of insurance”
`in International Class 36, issued September 19,
`2000, Section 8 and 15 declarations accepted and
`acknowledged, owned by Avalon Risk Management,
`Inc.;
`
`Registration No. 3271955 for the mark
`
` (“consulting” and
`“insurance/reinsurance claims management”
`disclaimed), for services identified as
`“insurance claims auditing services” in
`International Class 35 and “insurance services,
`namely, insurance consulting services; insurance
`and reinsurance claims management” in
`International Class 36, issued July 31, 2007,
`owned by Avalon Consulting, LLC; and
`
`Registration No. 3271956 for the standard
`character mark AVALON CONSULTING (“consulting”
`disclaimed), for services identified as
`“insurance claims auditing services” in
`
`
`1 Application Serial No. 78869843, filed April 26, 2006, alleging
`a bona fide intention to use the mark in commerce under Trademark
`Act Section 1(b), 15 U.S.C. §1051(b).
`
`
`2
`
`
`
`Serial No. 78869843
`
`International Class 35 and “insurance services,
`namely, insurance consulting services; insurance
`and reinsurance claims management” in
`International Class 36, issued July 31, 2007,
`owned by Avalon Consulting, LLC.
`
`The appeal is fully briefed. We reverse the refusal
`
`to register.
`
`Our determination of the issue 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, In re Majestic
`
`Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
`
`(Fed. Cir. 2003). In any likelihood of confusion analysis,
`
`two key considerations are the similarities between the
`
`marks and the similarities between the services. See
`
`Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
`
`1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
`
`Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
`
`1997).
`
`
`
`With regard to the marks, overall we find applicant’s
`
`mark AVALON to be similar to the marks in all three
`
`registrations. It is not disputed that the word AVALON is
`
`the dominant element in the marks in the cited
`
`registrations. Indeed, other than the stylized A in one of
`
`the cited marks, all other matter in the cited marks is
`
`3
`
`
`
`Serial No. 78869843
`
`disclaimed. Disclaimed, descriptive matter may have less
`
`significance in likelihood of confusion determinations.
`
`See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
`
`1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
`
`Corp., 753 F.2d 1056, 224 USPQ2d 749, 752 (“Regarding
`
`descriptive terms, this court has noted that the
`
`descriptive component of a mark may be given little weight
`
`in reaching a conclusion on the likelihood of confusion”);
`
`In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
`
`2001) (disclaimed matter is often “less significant in
`
`creating the mark’s commercial impression”).
`
`
`
`Applicant focuses its argument on the scope of
`
`protection to be given the cited marks, the differences in
`
`the services and the sophistication of the purchasers. As
`
`to the first issue, the scope of protection, this relates
`
`to the du Pont factor of “the number and nature of similar
`
`marks in use on similar goods” or the inherent weakness of
`
`the mark in that it has taken on some meaning in that field
`
`such that consumers rely on other matter to distinguish the
`
`marks.
`
`
`
`Applicant argues that the “trademark register is
`
`crowded with other ‘avalon’ marks and as such, a consumer
`
`is not likely to be confused between any two of the crowd.”
`
`Br. p. 5. In support of this argument applicant submitted
`
`4
`
`
`
`Serial No. 78869843
`
`evidence of several third-party registrations for a variety
`
`of goods and services.2 The first problem with applicant’s
`
`argument is that third-party registrations are not evidence
`
`of use in the marketplace and, as such, are not probative
`
`of the sixth du Pont factor, “the number and nature of
`
`similar marks in use on similar goods.” AMF Inc. v.
`
`American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
`
`268, 269-70 (CCPA 1973). However, “they may be considered
`
`to demonstrate the meaning of a word which comprises the
`
`mark, or a portion thereof, to show that there is a well-
`
`known and commonly understood meaning of that word and that
`
`the mark has been chosen to convey that meaning.” Knight
`
`Textile Corp. v. Jones Investment CO., 75 USPQ2d 1313 (TTAB
`
`2005). This raises the second problem with applicant’s
`
`argument. Of the Federal registrations (other than the
`
`three cited registrations) only those belonging to one
`
`third-party include insurance-related services and those
`
`are limited to and associated with its real estate
`
`services.3 Thus, the relevant registrations come from only
`
`
`2 Applicant also submitted hit list summaries from an Internet
`search engine. Search summaries are generally too truncated to
`provide sufficient information about the use of a particular
`term, and those of record in this case suffer from this
`limitation. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB
`2002). They thus are accorded limited probative value.
`
` 3
`
` The third-party state registrations “are of absolutely no
`probative value” on the question of likelihood of confusion.
`
`5
`
`
`
`Serial No. 78869843
`
`three third parties and are not sufficient to establish
`
`that the term AVALON is weak in the insurance field.
`
`However, we note that these three coexist and each is for
`
`very different types of insurance-related services.
`
`
`
`We turn then to an analysis of the services. We
`
`compare applicant’s services identified as “issuing group
`
`and individual health insurance policies and offering as a
`
`licensed insurer such health insurance policies and the
`
`administration thereof excluding acting as a broker or
`
`insurance agent” with those in each of the registrations.
`
`
`
`As noted above, the services in Registration No.
`
`2833281 are “insurance brokerage services in the field of
`
`surety bonds, marine cargo insurance, errors and omissions
`
`insurance and other lines of insurance.” We find the
`
`services in the registration to be quite distinct from
`
`applicant’s services. Most prominently they differ by
`
`field of use in that applicant’s insurance services are
`
`limited to the health care field and registrant’s services
`
`are limited to surety bonds, marine cargo and errors and
`
`omissions. We do not read the remainder of registrant’s
`
`identification to include the health care field. This is
`
`
`Allstate Insurance Co. v. Delibro, 6 USPQ2d 1220, 1223 (TTAB
`1988). In any event, only two of those are listed in the
`insurance field.
`
`
`
`
`
`6
`
`
`
`Serial No. 78869843
`
`entirely out of the natural scope of this identification.
`
`In addition, as applicant states “registrant is not
`
`operating as the issuer of health insurance policies, but
`
`rather as a brokerage. As such, the Registrant is not a
`
`licensed insurer and cannot legally issue insurance
`
`policies. Registrant, as an insurance broker, is an
`
`insurance salesperson that searches the marketplace in the
`
`interest of clients (not insurance companies). The
`
`Registrant’s legal obligation is to the individual or group
`
`who will ultimately be covered by the insurance and not to
`
`the issuer of insurance.” Br. p. 7. See also May 29, 2007
`
`Response Exh. K (excerpts from LOMA Textbook, Insurance
`
`Company Operations 2d ed.; and www.ambest.com “Best’s
`
`Insurance Resources Glossary of Insurance Terms” containing
`
`definitions for “brokerage,” “policy,” and “licensed
`
`insurer”).
`
`
`
`The services in Registration Nos. 3271955 and 3271956
`
`are “insurance claims auditing services” in International
`
`Class 35 and “insurance services, namely, insurance
`
`consulting services; insurance and reinsurance claims
`
`management” in International Class 36. Applicant argues
`
`that “[r]egistrant is not operating, and cannot legally
`
`operate, as the issuer of health insurance policies, but
`
`rather only as a consultant to sophisticated corporate
`
`7
`
`
`
`Serial No. 78869843
`
`entities, specifically in the highly technical field of
`
`underwriting and issuing insurance policies under stringent
`
`state licensing programs. Without specific state licensure
`
`and oversight the Registrant may not act as a licensed
`
`insurer and cannot legally issue insurance policies. On
`
`the other hand, Applicant is a licensed insurer. This
`
`means that Applicant holds a license in one or more states
`
`to actually underwrite specified policies in the lines of
`
`insurance for which it qualifies.” Br. p. 7.
`
`
`
`The examining attorney argues that there is an
`
`“abundance of evidence demonstrating that ‘issuing group
`
`and individual health insurance policies,’ ‘administration
`
`of policies,’ ‘insurance brokerage services,’ ‘insurance
`
`claims auditing services,’ ‘insurance consulting services,’
`
`and ‘insurance and reinsurance claims management’ services
`
`are closely related and often undertaken by the same
`
`company.” Br. p. 14. The examining attorney submitted
`
`several third-party use-based registrations in support of
`
`this argument. See In re Albert Trostel & Sons Co., 29
`
`USPQ2d 1783 (TTAB 1993). The problem with the evidence is
`
`that none of the third-party registrations exactly overlap
`
`with applicant’s services and the services listed in each
`
`respective registration. See, e.g., Reg. No. 3103817 for
`
`the mark STONEBRIDGE CASUALTY INSURANCE, for “insurance
`
`8
`
`
`
`Serial No. 78869843
`
`services, namely, brokerage, claims processing,
`
`consultation, underwriting and administration of property
`
`insurance, disability insurance, fidelity and surety
`
`insurance, marine and transportation insurance, casualty
`
`insurance, credit insurance, accident and health insurance,
`
`motor vehicle insurance, aircraft insurance, workers’
`
`compensation insurance, fire insurance, malpractice
`
`insurance, earthquake insurance, liability insurance,
`
`mortgage guaranty insurance, homeowners insurance, crop and
`
`livestock insurance, personal injury insurance”; and Reg.
`
`No. 3340023 for the mark for the mark THE POWER TO COMPETE,
`
`for “cost management for the health benefit plans of
`
`others; cost management for the health care benefit plans
`
`of others; health care cost containment; health care cost
`
`review; ...insurance claims auditing services; managing the
`
`operations of insurance agencies and brokers on an
`
`outsourcing basis.” In addition, many of these third-party
`
`registrations are for wide-ranging services that include
`
`banking and financial services along with various services
`
`within the larger insurance field. See, e.g., Reg. No.
`
`2970759 for the mark THE WEBSTER WAY for, inter alia,
`
`“financial and insurance services, namely, banking
`
`services; personal and commercial banking services;
`
`checking account services, savings account services ...
`
`9
`
`
`
`Serial No. 78869843
`
`providing working capital loans ... providing working
`
`capital loans ... trust and estate planning ... insurance
`
`agency, brokerage, underwriting and administration services
`
`in the fields of life, accident, health, disability, long-
`
`term care, management and professional liability
`
`...investment management ... risk management.”
`
`
`
`The examining attorney also points to excerpts from
`
`the webpages of various health care benefit providers,
`
`contending that they “show that a wide variety of insurance
`
`products and services, including claims auditing, claims
`
`management and issuing health insurance policies, are
`
`provided by one source.” Br. p. 15. However, these
`
`examples merely underscore the difference between insurance
`
`services from a health benefits provider and the insurance
`
`services listed in the registrations. For example, the
`
`website for UnitedHealthcare includes the following
`
`description of services:
`
`We are a part of Unitedhealthcare, a subsidiary
`of UnitedHealth Group Incorporated, an innovative
`leader in the health and well-being industry,
`serving more than 50 million Americans. To help
`you attract and retain top-caliber employees, we
`offer a variety of health care coverage options,
`...
`
`Office Action (January 29, 2009).
`
`10
`
`
`
`Serial No. 78869843
`
`On the next web page it discusses its online services
`
`provided as part of the overall health care coverage
`
`services:
`
`If you are a member, you can: ... update your
`address ... check claim status... If you are a
`physician, health care practitioner or facility,
`you can: ...check claim status check member
`eligibility.
`
`
`Id.
`
`
`
`
`The website for Aetna includes the following:
`
`Aetna is one of the nation’s leaders in health
`care, dental, pharmacy, group life, and
`disability insurance, and employee benefits.
`Dedicated to helping people achieve health and
`financial security. Aetna puts information and
`helpful resources to work for its members to help
`them make better informed decisions about health
`care. ... Our customer service and claim areas
`represent the “face” of Aetna, serving as the
`important first line of contact with our
`customers. These professionals work directly
`with our members, doctors and employer groups
`(companies) to help them better understand our
`products and services and assist with timely,
`accurate payment of their claims, while providing
`a human connection at those times when it is
`needed most. ... Customer Service
`Representatives, Claim Benefits Specialists and
`Service Consultants work in our Customer Service
`Centers located across the nation.
`
`
`Id.
`
`
`
`Similarly, the website for Kaiser Permanente includes
`
`information about how to submit a claim to their claims
`
`department. Id.
`
`11
`
`
`
`Serial No. 78869843
`
`
`
`The claims “auditing” and “management” services on
`
`these health insurance websites are merely ancillary to the
`
`primary services of issuing health care insurance as
`
`compared to, for example, the services provided by
`
`registrant which involve managing claims directed to
`
`another company in a variety of fields. Registrant’s
`
`website reveals that the service it provides is to assist
`
`clients:
`
`... in effectively and efficiently managing and
`resolving your claims. With more than forty
`years of combined claim experience in the
`property/casualty industry, the members of Avalon
`Consulting have learned to turn what is
`unexpected into what can be expected. We can
`also help you by evaluating claim organization
`structures, managing run-off claims and providing
`insight into the financial exposures presented by
`property/casualty claims.
`
`Response Exh. B (March 20, 2008).
`
`
`
`With regard to the “insurance consulting” in
`
`Registration Nos. 3271955 and 3271956, the examining
`
`attorney argues that “[r]egistrant’s services are
`
`identified broadly and there is no limitation regarding the
`
`consumers to whom it provides its services.” Br. p. 16.
`
`In order to qualify as a service for registration purposes,
`
`a service must be sufficiently separate from an applicant’s
`
`principal activity. Trademark Manual of Examining
`
`Procedure (TMEP) § 1301.04(a)(iii) (6th ed. 2009). It is
`
`12
`
`
`
`Serial No. 78869843
`
`not clear what “insurance consulting” services a licensed
`
`provider of health insurance would provide other than
`
`explaining the services they offer or how to utilize their
`
`services. Similarly, to the extent “insurance consulting”
`
`would extend to the general public, that would be more in
`
`the nature of an ancillary service in connection with an
`
`insurance broker or agent. In view thereof, we find that
`
`“insurance consulting” does not encompass applicant’s
`
`identified services and the record does not support a
`
`finding that the consuming public would associate a single
`
`source with applicant’s services, an issuer and
`
`administrator of a health benefits plan, and insurance
`
`consulting services. As applicant states “simply because
`
`Applicant and Registrants are engaged in the general field
`
`of insurance is not sufficient, in itself, to demonstrate
`
`that the respective services are related.” Br. p. 10. See
`
`General Electric CO. v. Graham Magnetics Inc., 197 USPQ
`
`690, 694 (TTAB 1977).
`
`Because there are no limitations in the identification
`
`of services, we must presume that the services will be
`
`offered in all ordinary channels of trade and to all
`
`classes of customers for those services. However, it is
`
`not clear from this record that licensed providers of
`
`health insurance, and insurance/reinsurance claims auditing
`
`13
`
`
`
`Serial No. 78869843
`
`and management on the one hand, and insurance brokerage
`
`services in the field of surety bonds, marine cargo
`
`insurance and errors and omissions insurance, on the other
`
`hand, travel in the same channels and are directed at the
`
`same consumer, other than to note that everyone seeks
`
`health insurance and within that group some individuals may
`
`be engaged in seeking other types of insurance or
`
`insurance-related services such as consulting or claims
`
`auditing or management, either as a sophisticated purchaser
`
`for a group plan or as an individual making a careful
`
`purchase. In any event, even assuming common channels of
`
`trade and overlap in purchasers, we find that these factors
`
`do not outweigh the differences present in the services
`
`themselves combined with the added degree of care, on the
`
`part of individual consumers, and sophistication, on the
`
`part of professional buyers, in the purchasing decision.
`
`In conclusion, we find on this record that applicant’s
`
`services are not sufficiently related to each of the
`
`registrants’ services such that there is a likelihood of
`
`confusion and the conditions of sale of the respective
`
`services also serve to prevent customer confusion.
`
`In making our determination here, we recognize that
`
`examining attorneys are somewhat hampered by evidentiary
`
`limitations. In re Pacer Technology, 338 F.3d 1348, 67
`
`14
`
`
`
`Serial No. 78869843
`
`USPQ2d 1629, 1631 (Fed. Cir. 2003). Perhaps on a different
`
`record developed in an inter partes case a different result
`
`would be reached.
`
`Decision: The refusals to register under Section
`
`2(d) of the Trademark Act are reversed.
`
`15
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