throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`_ . _ . _ . . . . . . . _ _ _ . . . . . . _ . _ . _ . . . - -x
`
`THE BEACON MUTUAL INSURANCE
`
`COMPANY,
`
`Opposer,
`
`V.
`
`CGU INSURANCE COMPANY’
`
`.
`
`Opposition No. 91 156332
`
`76, 245’ 937
`’
`
`_
`IllllllIllllllllllllllllllllllllllllllllllIHHIII
`
`2
`Applicant.
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _x
`
`01-03-2006
`U75 Patent 8- TMOYC/TM Mall FcptDt_ 4:11
`
`MOTION TO GRANT CONCURRENT USE
`
`REGISTRATIONS BASED ON COURT DECREE
`
`MOTION
`
`Applicant, CGU Insurance Company, hereby moves pursuant to
`
`Trademark Rule § 2.99(f) to amend its applications Serial Nos. 76/265,227 and
`
`76/265,228 to seek concurrent use registrations. The ground for applicant’s motion is
`
`that the United States District Court for the District of Rhode Island, a court of competent
`
`jurisdiction, has issued a final determination that the parties are entitled to use the same
`
`or similar marks in commerce in different geographic areas. Accordingly, applicant
`
`requests that concurrent use registrations be granted.
`
`If applicant’s motion to amend its applications to seek concurrent use
`
`registrations is denied, in the alternative, applicant moves pursuant to TBMP §l 1 13.01 to
`
`convert this opposition to a concurrent use proceeding to enable applicant to pursue
`
`restricted registrations. Accordingly, applicant requests that the Board enter judgment
`
`against applicant in this opposition, approve applicant’s amendments for concurrent use,
`
`and institute a concurrent use proceeding based upon the amended applications.
`
`

`
`Finally, if the two preceding motions are denied, applicant requests the
`
`Board to reset applicant’s time to answer, move or otherwise respond to the Notice of
`
`Opposition in this proceeding.
`
`MEMORANDUM
`
`I.
`
`FACTS
`
`Opposer, The Beacon Mutual Insurance Company, commenced this
`
`opposition on April 28, 2003 against application Serial Nos. 76/265,227 and 76/265,228
`
`to register ONEBEACON INSURANCE and a Lighthouse Design and ONEBEACON,
`
`respectively. Pursuant to the Board’s order dated July 17, 2003, this opposition was
`
`suspended pursuant to Trademark Rules 2.127(a) and 2.1 17(a), because of the pendancy
`
`of Civil Action No. Ol-354—T in the United States District Court for the District of Rhode
`
`Island. The civil action related to app1icant’s right to use ONEBEACON and its
`
`Lighthouse Design, which opposer sought to enjoin.
`
`On July 19, 2005 the court issued an Amended Judgment in the civil
`
`action in which it enjoined applicant from using ONEBEACON and its Lighthouse
`
`Design only in the State of Rhode Island. (Progoff Decl. 1] 2; Ex. 2) Thus, applicant has
`
`the unfettered right to continue to use these marks throughout the United States with the
`
`exception of Rhode Island.
`
`As directed by the Board, on September 7, 2005 applicant informed the
`
`Board of the Court’s July 19, 2005 Judgment and, at the same time, filed amended
`
`applications to register its marks as concurrent use registrations covering the entire
`
`United States with the exception of Rhode Island. (Progoff Decl. 1] 3; Exs. 3 and 4) On
`
`November 4, 2005 the Board issued a scheduling order that reactivated this proceeding.
`
`In its scheduling order, the Board suggested that applicant “should file a motion to amend
`
`

`
`.0
`
`2’
`
`the application and state the grounds, therefore, to allow the opposer opportunity to
`
`respond.” Applicant brings this motion in accordance with the Board’s suggestion.
`
`II.
`
`APPLICANT IS ENTITLED TO A CONCURRENT USE REGISTRATION
`
`BASED ON A COURT DECREE
`
`Applicant is entitled to a concurrent use registration without further
`
`proceedings pursuant to Trademark Rule § 2.99(f) based on the judgment issued by the
`
`district court. Trademark Rule 2.99(t) states:
`
`“When a concurrent use registration is sought on the basis that a court of
`competent jurisdiction has finally determined that the parties are entitled
`to use the same or similar marks in commerce, a concurrent use
`registration proceeding will not be instituted if all of the following
`conditions are fulfilled:
`
`(1) The applicant is entitled to registration subject only to the concurrent
`lawful use of a party to the court proceeding; and
`
`(2) The court decree specifies the rights of the parties; and
`
`(3) A true copy of the court decree is submitted to the examiner; and
`
`(4) The concurrent use application complies fully and exactly with the
`court decree; and
`
`(5) The excepted use specified in the concurrent use application does not
`involve a registration, or any involved registration has been restricted
`by the Director in accordance with the court decree.”
`
`Applicant has met each of the conditions set forth in Rule 2.99(t). First,
`
`applicant’s marks are entitled to registration subject only to opposer’s concurrent lawful
`
`use. Both of applicant’s applications were approved by the Trademark Examining
`
`Attorney and would have issued as registrations were it not for this opposition. No third
`
`parties, other than opposer, have an objection that has not been resolved to either of the
`
`applications in issue, and the only impediment to registration is opposer’s opposition
`
`based on the use of its mark in the State of Rhode Island.
`
`

`
`\?
`
`Second, the court decree clearly specified the rights of the parties. After
`
`protracted litigation, the court allowed applicant to use its marks without restriction in all
`
`states other than Rhode Island. A true and correct copy of the Court’s Decision and
`
`Order dated July 15, 2005 and its Amended Judgment dated July 19, 2005, are submitted
`
`with this motion (Progoff Decl. 1] 2; Exs. 1 and 2).
`
`The concurrent use applications comply fully and exactly with the court
`
`decree by requesting applicant be granted a registration in all states other than Rhode
`
`Island, the only state in which the court found that opposer has rights and the only state in
`
`which the Court precluded applicant from using its marks. (Progoff Decl. 1] 3; Exs. 3 and
`
`4)
`
`Finally, opposer has not registered its mark, and the excepted use specified
`
`in the concurrent use application, therefore, does not involve a registration.
`
`Accordingly, applicant has met all of the requirements of Rule 299(1) and
`
`therefore requests that the Board grant a concurrent use registration without any further
`
`proceedings.
`
`III. MOTION TO CONVERT OPPOSITION TO CONCURRENT USE
`PROCEEDING
`
`If the Board does not grant applicant’s request for concurrent use
`
`registrations, in the alternative applicant requests that the Board convert this opposition
`
`proceeding into a concurrent use proceeding pursuant to TBMP §l 1 13.01, which
`
`provides:
`
`“An opposition may be terminated in favor of a concurrent use
`proceeding. .
`.
`:
`
`*
`
`*
`
`*
`
`

`
`\/’
`
`(4)When an opposition is filed against an application for an unrestricted
`registration, the applicant may file a motion to amend its application to
`one for concurrent registration, reciting opposer as an exception to
`applicant’s claim of exclusive use, together with a motion to terminate the
`opposition in favor of a concurrent use proceeding. .
`.
`. If opposer does not
`consent to the amendment, but applicant consents to entry ofjudgment
`against itself with respect to its right to an unrestricted registration,
`judgment will be entered against applicant in the opposition, with respect
`to applicant’s right to an unrestricted registration; the amendment will be
`approved; and a concurrent use proceeding involving the amended
`application will be instituted, all in one Board action.”
`
`See also, Faces, Inc. v. Face ’s, Inc. 222 U.S.P.Q. 918 (TTAB 1983)
`
`(finding opposer will not be prejudiced by entry ofjudgment against applicant in the
`
`opposition and the institution of a concurrent use proceeding).
`
`Here, opposer has refused to consent to applicant’s proposed amendment
`
`of its applications. Accordingly, applicant consents to the entry ofjudgment against its
`
`right to an unrestricted registration in the opposition. In addition, applicant requests the
`
`Board to approve applicant’s amendments for concurrent use registrations and institute a
`
`concurrent use proceeding based upon the amended applications
`
`IV.
`
`EXTENSION OF TIME TO FILE ANSWER
`
`If the Board refuses applicant’s requests for concurrent use registrations,
`
`or in the alternative the institution of a concurrent use proceeding, applicant requests that
`
`

`
`-r
`
`_.
`
`7‘
`
`the Board reset app1icant’s time to answer, move or otherwise respond to the Notice of
`
`Opposition in this proceeding.
`
`Dated: December27, 2005
`
`_
`I hereby certify that this car-
`respondence is being deposited
`with the United States Postal
`S6l'VlC6 as first class mail in
`an envelope addressed to:
`Com issioner fot Trademarks.
`
`Respectfully submitted,
`
`ROPES & GRAY LLP
`
`Byg
`
`Susan Progoff
`Nicole D. D’Amato
`
`Fish & Neave IP Group
`1251 Avenue of the Americas
`
`New York, New York 10020
`Te1.: (212) 596-9000
`
`Attorneys for Applicant,
`
`_
`
`OneBeacon Insurance Company
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_ _ _ _ _ . . . _ . . . . _ _ . . . _ . . . . . . . . . . - -x
`
`THE BEACON MUTUAL INSURANCE
`
`COMPANY,
`
`Opposer,
`
`v.
`
`Opposition No. 91156332
`
`CGU INSURANCE COMPANY,
`
`Applicant.
`. . _ . . . . . . . . . . . . . . . . . . . . . . . . . . - -x
`
`DECLARATION OF SUSAN PROGOFF
`
`1, Susan Progoff, declare as follows:
`
`1.
`
`I am a member of the Bar of the State of New York and of the firm
`
`of Ropes & Gray LLP, attorneys for applicant, CGU Insurance Company. I submit this
`
`declaration in support of applicant’s motion for concurrent use registrations based on a
`
`court decree pursuant to Trademark Rule 299(1).
`
`2.
`
`The parties to this opposition were also parties to Civil Action No.
`
`01-354-5 in the United States District Court for the District of Rhode Island, in which
`
`opposer sought an injunction against applicant’s use of its service marks ONEBEACON
`
`and ONEBEACON and Lighthouse Design. The Court issued its Decision and Order on
`
`July 15, 2005 and an Amended Judgment issued in this case on July 19, 2005. Copies of
`
`the Decision and Order and of the Amended Judgment are attached as Exhibits 1 and 2,
`
`respectively. In its decision, the Court enjoined applicant’s use of its marks only in
`
`Rhode Island, but permitted applicant to continue to use its marks without restriction or
`
`limitation throughout the remainder of the United States. Neither party filed an appeal.
`
`

`
`3.
`
`On September 7, 2005, applicant sought to amend its application
`
`Serial Nos. 76/265,227 and 76/265,228 to seek concurrent use registrations. Copies of
`
`the Amended Applications to Recite Concurrent Use under Section 2.73 for the
`
`applications to register ONEBEACON INSURANCE & Lighthouse design and
`
`ONEBEACON, Serial Nos. 76/265,227 and 76/265,228, are attached as Exhibits 3 and 4,
`
`respectively.
`
`4.
`
`App1icant’s attorneys requested opposer’s consent to app1icant’s
`
`amendment of its applications to seek concurrent use registrations. Opposer refused to
`
`consent to this request.
`
`5.
`
`I declare under penalty of perjury that the foregoing is true and
`
`correct.
`
`Dated: December27, 2005
`
`E(,(,(>&§U7LLE:l/©%,{fl
`
`Susan Progoff /
`
`'.é‘€583le°.$e'é"/51§‘§$.3"L2S%;aea
`with the United States Postal
`SGWICS as first class mail In
`an envelope addressed to:
`Co - nssioner for Trademarks.
`
`
`
`

`
`EXHIBIT 1
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page1 of 31
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF RHODE ISLAND
`
`
`THE BEACON MUTUAL INSURANCE
`
`COMPANY,
`
`Plaintiff,
`
`v.
`
`DNEBEACON INSURANCE GROUP,
`
`Defendant.
`
`
`esrsasrsrs/svsrsasrxrsa
`
`C.A. No. 01-3545
`
`WILLIAM E. SMITH, United States District Judge.
`
`nzgzsxou mm oggzn
`
`I.
`
`Introduction
`
`The Beacon Mutual Insurance Company (“Plaintiff” or “Beacon”)
`
`is the largest writer of workers’ compensation insurance in the
`state of Rhode Island.
`‘It has used the name §The Beacon Mutual
`
`Insurance Company”
`
`(along with a
`
`lighthouse logo)
`
`since 1992.
`
`Meanwhile, OneBeacon Insurance Group (“Defendant” or “OneBeacon”),
`
`formerly known as CGU Insurance, adopted its current name, and
`
`Following
`in June 2001.
`began using a lighthouse logo as well,
`this name
`change, Beacon _brought
`this lawsuit ‘claiming that
`
`Defendant's adoption of the name “OneBeacon” and a lighthouse logo
`
`violated federal and state unfair competition law.
`
`Beacon also
`
`asserted claims
`
`for
`
`service mark
`
`infringement
`
`and trademark
`
`dilution under state law.
`
`OneBeacon responded to Beacon's suit with a Motion for Sumary
`
`Judgment, which this Court granted.
`
`Beacon Mut.
`
`Ins. Co, v.
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page2of 31
`
`(“figgg
`0geB§acgn Lgs, grggp, 290 F‘. Supp. 2d 241 (D.R.I. 2003)
`_I_"), gggjg 376» F.3d 8
`(1st Cir. 2004).
`In granting summary
`
`judgment,
`opinion in
`
`this Court
`la
`
`relied primarily on the First Circuit's
`Pr d
`n
`v Be
`a
`I s r m
`cl,
`
`718 F.2d 1201 (1st Cir. 1983), which held that in order to find a
`likelihood of confusion between parties’ marks sufficient. to
`
`support a claim of unfair competition,
`
`that confusion “must be
`
`based on the confusion of some relevant person; i.e., a customer or
`purchaser,” id; at 1206 (emphasis added). Because “Plaintiff ha[d]
`
`not established that the [allegedly confused] entities and persons
`. are [] consumers of the product,” §§aggg_L, 290 F. Supp. 2d
`at 246, this Court concluded that Plaintiff failed “to demonstrate
`that the confusion it identifies is connected in any way to its
`
`commercial
`
`interests," id; at 252,
`
`as
`
`required to maintain an
`
`unfair competition claim.
`
`.On appeal,
`
`the First Circuit reversed." Bgacgn Mug, Lgs, gg.
`
` , 376 F.3d 8
`
`(1st Cir. 2004) (“&eA_9.n_._CI ”).
`
`Without addressing its earlier holding in Astra that the relevant
`confusion must be shown to exist in customers or purchasers,
`the
`
`First Circuit implicitly abdicated the Astra standard by concluding
`
`that evidence of actionable commercial
`injury in a case such as
`this was “not
`restricted to the loss of sales to ‘actual and
`prospective buyers of
`the product
`in question.”
`_;g;_ at 10.
`
`Instead,
`
`the First Circuit enunciated a new standard for what
`
`

`
`Case'1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page3of 31
`
`constitutes actionable confusion: “Confusion is relevant when it
`
`exists in the minds of persons in a position to influence the
`
`purchasing decision 9; persons whose
`
`confusion presents
`
`a
`
`significant risk to the sales, goodwill, or reputation of
`
`the
`
`trademark owner.”
`
`Lg;
`
`(emphasis added).
`
`Further,
`
`“relevant
`
`commercial injury includes not only loss of sales but also harm to
`
`the trademark holder's goodwill and reputation.”. Lg‘
`
`As a result of the First Circuit's decision,
`
`the case returned
`
`to this Court and a bench trial was held from February 28, 2005, to
`
`March 4, 2005, with final arguments on March 9, 2005. What follows
`
`are the Court's findings of fact and conclusions of law.
`
`II.
`
`Fi d’
`
`o
`
`a
`
`clusion of Law
`
`The marks that Plaintiff seeks to protect are not registered.
`
`“Therefore the present claim is based upon § 43(a) of the Lanham
`
`Act which covers unregistered trademarks.”
`
`Eosggn Beer Co. v,
`
`§le§§r Bros. Brewing gg,, 9 F.3d 175,130 (1st Cir. 1993). Section
`
`43(a) of the Lanham Act forbids persons from using,
`
`any word,
`_
`in connection with any goods or services .
`term, name, symbol, or device, or any combination thereof
`.
`.
`. which -—
`-
`'
`(A)
`is likely to cause confusion, or to cause
`mistake, or to deceive as to the affiliation,
`connection, or association of such person with
`another
`person,
`or
`as
`to
`the
`origin,
`sponsorship, or approval of his or her goods,
`services, or commercial activities by another
`person.
`
`15 U.S.C. § 1125(a)(1)(A).
`
`

`
`Case1:0_1-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page4of 31
`
`To make out
`
`a
`
`claim under
`
`§ A43(a),,
`
`the owner of
`
`an
`
`unregisterad mark must establish that
`
`its mark is
`
`(1) either
`
`inherently distinctive or has acquired secondary meaning, and (2)
`
`is likely to be confused with the defendant's mark.
`
`Two
`
`e
`
`Lng. v. Taco Cabana, Igc., 505 U.s. 763, 769-70 (1992).
`
`A.
`
`_ The Spectrum of Distinctivengss
`
`In analyzing whether a mark is distinctive, marks are divided
`into four categories:
`(1) generic,
`(2) descriptive,
`(3) suggestive,
`
`and (4) arbitrary or fanciful.
`
`ercrombi
`
`Fitch C . v. H
`
`t’
`
`ugrig. Igc., 537 F.2d 4, 9 (2d Cir. 1976).
`
`Suggestive, arbitrary
`
`and fanciful marks are considered inherently distinctive, while
`
`descriptive marks are deemed distinctive only upon a showing that
`they have acquired secondary meaning.
`I.P. Lund Trading Apg v.
`Kohler Co., 163 F.3d 27, 39 (1st Cir. 1998). Generic marks are
`generally not protected.
`ggr Whether" a mark is inherently
`distinctive is a question of fact. Boston Beer,
`9 F.3d at 180..
`
`To be classified as “fanciful,” terms will usually have to
`
`been
`have
`Abergrombie,
`
`“invented solely _for
`537 F.2d at 11 n.12.
`
`trademarks.”
`their use’ as
`.Arbitrary marks are “common
`
`word[s]
`
`.
`
`.
`
`. applied in an unfamiliar way.” Lg; Suggestive marks
`
`“require imagination,
`
`thought and perception to reach a conclusion“
`
`as to the nature of goods.”
`
`537 F.2d at 11 (quoting Stix'Progs.,
`
`Inc
`
`v.
`
`0 ited Merch.
`
`& Mfrs.
`
`I c.,
`
`295 F. Supp.
`
`479,
`
`488
`
`(S.D.N.Y.
`
`1968)).
`
`Finally,
`
`“[a]
`
`term is descriptive if
`
`it
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page5of 31
`
`forthwith conveys an immediate idea of the ingredients, qualities
`
`or characteristics of the goods.” ;g‘ (quoting §§;§_E;QQ§;L_LgQLr
`
`(295 F. Supp. at 488).
`
`Beacon’s mark is most appropriately deemed descriptive.
`The
`word “beacon” in the mark is meant
`to suggest
`that Beacon will
`
`serve
`
`as
`
`a
`
`good guide
`
`to consumers.
`
`ggg Miriam-Webster's
`
`(defining “beacon” as a
`Collegiate Dictionary 98 (10th ed. 2002)
`“signal for guidance” and “a source of light or inspiration”): geg
`alsg Platin
`H m
`ort a
`r . v
`P
`‘n 9
`‘n. Gr
`, 149
`
`F.3d 722,
`
`728
`
`(7th Cir.
`
`1998)
`
`(“In this instance,"platinum’
`
`describes the quality of plaintiff's mortgage services and suggests
`
`that it provides a superior service .
`
`.
`
`.
`
`.”); Amgrigag_fl§;i;§gg
`
`Life Ins. Cg, v. Heritage Life Ins. go,, 494 F.2d 3, 11 (5th Cir.
`
`the word
`(upholding a district court's conclusion “that
`1974)
`‘heritage’
`is'generic or descriptive of life insurance”);
`fiiggm
`Walker & Sons,
`Inc. v, Penn-Maryland Corp,, 79 F.2d 836, 838 (2d
`Cir. 1935)
`(holding that “imperial” was descriptive of quality of
`
`whiskey).
`
`The descriptive nature of the mark is confirmed by the
`
`widespread use of the term “beacon” with a lighthouse logo by many
`
`other companies around the country.‘
`
`ggg American Heritage Life
`
`
`
`1 For example, Sara Soubosky, a paralegal for the Defendant's
`law firm, Ropes & Gray, LLP,
`testified at trial that a search of
`the internet revealed 289 businesses in Massachusetts used the name
`Beacon,
`with
`ten
`of
`those
`businesses
`being
`in
`the
`financial/insurance industry,
`and five of
`those employing a
`lighthouse logo as well.
`(Tr. of 3/3/05 at 119.)
`
`5
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page6of31
`
`Ins,, 494 F.2d at 11 (“The industry itself evidently recognizes the
`
`truth of the district court's finding because the word_‘heritage”
`
`is used in the corporate names of insurance companies all over the
`
`Finally, Beacon itself has capitalized upon the
`country.”).
`descriptive significance of its mark by putting out a newsletter in
`the past entitled “Guiding Light.”
`(Tr. of 2/29/05 at
`85
`
`(testimony of Michael Lynch, Vice President of Legal Services at
`
`Beacon).)
`
`B.
`
`Proving Secnndary Meaning
`
`Because Beacon's mark is descriptive,
`
`and ‘therefore not
`
`inherently distinctive, Beacon must show secondary meaning to avail
`
`itself of the protection of the Lanham Act.
`A mark that is not
`inherently distinctive is protected under the Lanham Act only upon
`
`the
`by a fair preponderance of
`showing by the mark owner,
`a
`evidence,
`that the mark has acquired secondary meaning.
`gen 2 J.
`
`Thomas McCarthy, McCarthy On Trademarks And Unfair Competition §
`
`15:33
`
`(4th ed.
`
`2005)
`
`(hereinafter,
`
`“McCarthy”).
`
`A. mark has
`
`acquired secondary meaning only if its primary significance in the
`
`minds of the public is to identify the source of the product or
`service.
`ggg ;.P. Lnnd,
`163 F.3d at 41. Market surveys have
`
`“become a well—recognized1neans of establishing secondary'meaning.”
`
`"Boston Beer Co.,
`
`9 F.3d at 182. 0ther factors a court may look to
`
`“in determining whether a term has acquired secondary meaning are:
`
`(1)
`
`the length and manner of its use,
`
`(2)
`
`the nature and extent of
`
`

`
`Case1:01—cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page7of 31
`
`advertising and promotion of the mark and (3)
`
`the efforts made in
`
`the direction of promoting a conscious connection .
`
`.
`
`. between the
`
`name
`
`.
`
`.
`
`.
`
`and a particular product
`
`.
`
`.
`
`.
`
`.”
`
`gg.
`
`(citation
`
`omitted).
`
`Beacon retained the services of Dr. Jacob Jacoby as an expert
`
`witness on secondary meaning. Dr. Jacoby produced a written report
`
`which concludes
`
`that
`
`the phrase “The Beacon,” has acquired a
`
`substantial degree of secondary meaning among individuals in Rhode
`
`Island
`
`responsible
`
`for
`
`selecting their 'company’s workers’
`
`compensation insurance and/or commercial or industrial insurance.
`
`(Pl.’s Ex. 406.)
`
`This conclusion is based upon the results of
`
`three surveys conducted in Rhode Island in the Fall of 2001.
`
`In
`
`“these surveys,
`
`a total of 237 targeted respondents
`
`(persons who
`
`choose, or help to choose,
`
`the provider of workers’ compensation or
`
`commercial/industrial insurance for their company) were asked what
`
`they thought of when they heard or
`
`saw the term “The Beacon.”
`
`According to Jacoby,
`
`69% of the respondents who heard and 79% of
`
`the respondents who
`
`saw the term “The Beacon”
`
`said that
`
`it
`
`signified a workers’ compensation insurance company.
`
`Dr.
`
`Jacob Jacoby’s
`
`survey supports
`
`the conclusion that.
`
`Beacon’s marks have acquired secondary meaning.’
`
`Dr.
`
`Jacoby’s
`
`2 OneBeacon challenges Dr. Jacoby’s methodology in conducting
`the survey on a number of grounds. However, after an extensive
`Daubert hearing on this matter,
`this Court concluded Dr. Jacoby’s
`survey evidence constitutes admissible expert
`testimony.
`Bgagon
`Mut. Ins. Co. v. 0 e ea on Ins Grou , 253 F. Supp. 2d 221 (D.R,I.
`
`7
`
`

`
`(i3ase1:01-cv-00354-S Document113 0 Filed 07/15/2005
`
`Page8of31
`
`survey demonstrates that individuals in Rhode Island responsible
`
`for,
`
`or
`
`influential
`
`in,
`
`selecting their
`
`company's 'workers‘
`
`compensation insurance and/or commercial or industrial insurance
`are familiar with Beacon’s name and lighthouse logo, and that they
`
`associate it with a particular source of workers’ compensation
`
`insurance.
`
`OneBeacon argues that since Beacon has surveyed a narrower
`population of persons
`for _purposes of establishing ‘secondary
`meaning
`(those
`individuals
`likely’
`to ‘influence ‘purchasing
`
`decisions)
`than that
`in which it
`is looking to establish a
`likelihood of confusion (the general public), Beacon should be
`
`in the‘
`precluded from relying on‘ its survey evidence -or,
`alternative, the evidence of confusion among the general population
`
`should be accorded less probative value.
`
`In support of
`
`this
`
`contention, counsel for Defendant,
`in his closing argument, stated '
`that
`a (highly respected commentator,
`J. "Thomas McCarthy, has
`
`written that the respective universes “must” match.
`
`(Tr. of 3/9/05
`
`
`
`2003). OneBeacon also challenges Dr. Jacoby’s survey on the ground
`that it only tested the term “The Beacon,” while Plaintiff here is
`claiming infringement of “The Beacon,” “Beacon Insurance,” and “The
`Beacon Mutual
`Insurance Company.”
`(§gg Def.’s Mot.
`to Exclude
`Evidence Relating to Marks other than “The Beacon.”)
`The Court
`concludes Dr. Jacoby’s explanation for constructing the surveys as
`he did makes sense and denies Defendant's motion.
`(§§§ Pl.’s Ex.
`406 at 6
`(“Because the entire name, The Beacon Mutual
`Insurance
`Company, actually tells the respondent
`that it refers (1)
`to a
`company,
`and (2)
`that
`that company is an insurance company, no
`effort was made
`to test whether
`the _full
`name effectively
`communicates that it is the name of an insurance company.”).)
`
`8
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page9of31
`
`at 89.) However, a reading of the cited source discloses no such
`
`assertion.
`
`Rather, McCarthy nerely recognizes
`
`that
`
`there is
`
`_“interdependence between buyer confusion and secondary meaning.”
`
`2 McCarthy § 15:11. Thus,
`
`the “basic principle is that if there is
`
`no secondary meaning,
`
`there is no mark to protect and confusion is
`
`not possible.” Lg; This has been understood to mean that “proof
`
`of secondary meaning is a condition precedent to any discussion of
`
`likely confusion.” Universal Frozen Fgods, C9. 1. Lamb-flgstgn,
`lag‘, 697 F. Supp. 389, 394 (D. Or. 1987).
`‘This is a far cry from
`
`requiring that
`the
`respective populations
`for
`establishing
`secondary meaning and likelihood of confusion must.be identical.
`
`OneBeacon acknowledges that it knows of no case that expressly
`endorses its position on this point. OneBeacon does, however, cite
`
`to one case that seemingly advances the proposition.
`
`In Landscape
`
`Forms,
`
`lng, v, golumbia gascade Cg., 113 F.3d 373 (2d Cir. 1997),
`
`the Second Circuit recognized that “[t]he likelihood of confusion
`test concerns not only potential purchasers but also the general
`
`public,” id; at 382.
`
`The court went on to note, however,
`
`that
`
`“such third parties are only relevant if their views are somehow
`
`Ilg& at
`related to the goodwill of the aggrieved manufacturer.”
`382-83.
`The court concluded that “where there is no showing that
`
`the general public is aware of handscape's ‘dress,7 the district
`
`court erred in giving this factor great weight.”
`
`lg; V This
`
`language could possibly be read to imply that secondary meaning
`
`

`
`Case1:O1—cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page10 of 31
`
`must be demonstrated as to the particular population in which
`
`likelihood of confusion is to be shown.
`
`Nonetheless,
`
`the most generally accepted law is that:
`
`(1)
`
`secondary meaning
`
`is determined on
`
`the basis of purchase;
`
`perception, gee Am. Assoc. fgr the Advancement of Science v. Hearst
`
`gQ;E&] 498 F. Supp. 244, 257 (D.D.C. 1980)
`
`(“The question is not
`
`whether the general public, but the ;glgxagt_puyg;_gla§§_associates
`
`a name with a product or its source.”)
`
`(citing 1 McCarthy S 15:11)
`
`(emphasis in original), and (2) non-purchasers are relevant for
`
`purposes of finding an actionable likelihood of confusion, ggg
`
`Beacon II,
`
`376 F.3d at
`
`10
`
`(including anyone
`
`“whose confusion
`
`presents a significant risk to the sales, goodwill, or reputation
`
`of the trademark owner”). Thus, Plaintiff may establish secondary
`
`meaning via a survey of those individuals “likely to influence
`
`purchasing decisions,” while establishing likelihood of confusion
`
`among a broader population.
`
`§ee Perigi Corp. v. Perini Constr,,
`
`139;,
`
`915 F.2d 121, 125,
`
`128
`
`(4th Cir. 1990)
`
`(recognizing that
`
`likelihood of confusion may be demonstrated via a group made up of
`
`“the public,
`
`but
`
`not‘
`
`typical purchasers,” while describing
`
`secondary meaning
`
`as
`
`based
`
`upon
`
`“the
`
`consuming public's
`
`understanding")
`
`(emphasis added). This Court has found nothing to
`
`suggest that the 1962 amendment of the Lanham Act, which broadened
`
`actionable confusion beyond that of purchasers was
`
`intended to
`
`change the standards for proving validity of a descriptive mark
`
`10
`
`

`
`C»3ase1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page11 of 31
`
`(i.e., establishing secondary meaning in the consuming public).
`
`ggg Pa les
`
`Sho s urc
`
`In
`
`Reebok Int’l Lt
`
`., 998 F.2d 985,
`
`989 (Fed. Cir. 1993)
`
`(“Section 32 of the Lanham Act was amended in
`
`1962 to include "confusion of nonpurchasers as well as direct
`purchasers by striking out language limiting its scope to confusion
`of
`‘purchasers as
`to the source of origin ‘of
`such goods or
`
`services.’”).
`
`Even if this Court did not find secondary meaning by virtue of p
`
`the Jacoby market
`
`survey evidence, Beacon would be able to
`
`establish secondary meaning on the basis of its promotion efforts
`
`and market share.
`
`Sge Boston Beer gg,,
`
`9 F.3d at 182 (“Among the
`
`factors this court generally looks to in determining whether a term
`
`the length and manner of
`(1)
`has acquired secondary meaning are:
`its use,
`(2)
`the nature and extent of advertising and promotion of
`
`the mark and (3)
`
`the efforts made in the direction of promoting a
`
`in the public's mind, between the name or
`conscious connection,
`mark and a particular product or venture.”). Here,
`the Beacon name
`
`and lighthouse logo have been used by the company for over a decade
`
`as the primary designator of its workers’ compensation product.
`Beacon was formed in 1990 as the State Compensation Insurance Fund
`
`to write workers’
`compensation
`insurance
`for Rhode
`Island
`employers.
`To better compete, Beacon adopted its current name and
`
`lighthouse logo in June 1992.
`
`Since then, Beacon has been using
`
`“The Beacon Mutual
`
`Insurance Company,” “Beacon Insurance," “The
`
`11
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page12 of 31
`
`Beacon” and a lighthouse logo as its marks. Beacon has extensively
`
`promoted its name and logo, and has acquired substantial market
`
`share in Rhode Island.
`
`(§eg;ggng;§lly Tr. of 2/28/05 at 60-108
`
`(testimony of Michael Lynch, setting forth various promotional
`
`efforts).)
`
`Beacon immediately began to promote its new name and
`
`‘logo through advertising,
`
`sponsorships and civic participation
`
`throughout Rhode Island.
`
`Beacon increased its advertising and
`
`promotional expenditures between 1992 and 2001 from $4,000 to over‘
`
`$1 million per year, spending nearly $5 million during that period
`
`overall.
`(Lg; at 101-04.)’ In 2001, Beacon’s share of the Rhode
`Island market for workers’ compensation insurance was approximately
`66%, having peaked at 84.45%.
`(_;;1,_ at 1205.)
`Beacon’s "drop in
`
`market share reflects the success of the company in that it brought
`
`competition back
`
`into the market
`
`for workers’
`
`compensation.
`
`insurance. As’a result of this long term use, extensive and broad-'
`
`based promotional efforts, and large market share,'it is reasonable.
`
`to infer that
`
`a significant percentage of Rhode
`
`Islanders are
`
`familiar with the Beacon name and logo and associate it with a
`
`specific source for workers’ compensation insurance. See President
`
`an Trs. of olb C 11 v Colb C
`
`.-New am s lre, 508 F.2d 804,
`
`808
`
`(1st Cir. 1975)
`
`(“[W]hi1e secondary meaning is shown by the
`
`success rather than by the mere fact of an enterprise’s promotional
`
`efforts,
`
`the normal consequence of substantial publicity may be
`
`inferred.”). Thus, based on Dr. Jacoby’s survey evidence and the
`
`12
`
`

`
`Case1:01-cv-00354-S Document113
`
`Filed 07/15/2005
`
`Page13 of 31
`
`circumstantial evidence regarding length of use, promotion, and
`
`market share, the Court concludes that Beacon’s marks have acquired
`
`secondary meaning.
`
`C.
`
`Likelihood of Qonfgsigg
`
`Likelihood of confusion is “an essential element of a claim of
`
`trademark infringement.” Pignons §.A, de Mecanigue de Precisign v,
`Polargid Co;p,, 657 F.2d 482, 486-87 (1st Cir. 1981);
`A plaintiff
`
`must prove that
`
`there exists “a substantial
`
`likelihood that the
`
`public will be confused as to the source” of the relevant goods or
`
`services.
`
`Fisher Stoyes, Lnc. v. All flightgr Stove Wggks,
`
`Igg.,
`
`626 F.2d 193,
`
`194
`
`(1st Cir.
`
`1980).
`
`The First Circuit has
`
`enumerated eight
`
`factors
`
`to be used as guides
`
`in assessing
`
`‘likelihood of confusion as
`
`to source or affiliation: “(l)
`
`the
`
`similarity of the marks;
`
`(2)
`
`the similarity of the goods;
`
`(3)
`
`the
`
`relationship between the parties’
`
`channels of
`
`trade;
`
`(4)
`
`the
`
`relationship between the parties’ advertising;
`
`(5)
`
`the classes of
`
`prospective purchasers;
`
`(6) evidence of actual confusion;
`
`(7)
`
`the
`
`defendant's intent in adopting its mark; and (8)
`
`the strength of
`
`plaintiff's mark.” Ast
`
`Pharm. Prods., 718 F.2d at 1205.
`
`“No one
`
`factor is necessarily determinative, but each must be considered.”
`
`lg;
`
`In this case, application of the eight factor test favors
`
`finding a substantial likelihood of confusion.
`
`13
`
`

`
`.Case1:01-cv-00354-S - Document113
`
`Filed 07/15/2005
`
`Page14 of 31
`
`l.
`
`Similarity gf Marks
`
`The fonts Beacon and-OneBeacon use in their marks are not
`
`identical.3 '(§ee Pl.’s Ex. 411, 412 (setting forth OneBeacon’s and
`
`Beacon's marks).)
`
`Beacon uses a standard typeface font
`
`in a
`
`stylized orientation with the text placed to the right of
`
`the
`
`illustration. OneBeacon uses a modern-looking, rounded font, with
`
`the text centered below its illustration. Beacon uses a realisticv
`
`depiction of
`
`a
`
`traditional
`
`lighthouse ‘on land.
`
`OneBeacon’s
`
`illustration is a suggestion of a lighthouse illuminating the sky,
`
`drawn in negative space and contained in an oval centered above the
`text.
`In Beacon's designation, the lighthouse ap

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