Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA179573
`ESTTA Tracking number:
`12/10/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`94002236
`User
`The Beacon Mutual Insurance Company
`Lalitha Rao
`Partridge Snow & Hahn LLP
`180 South Main Street
`Providence, RI 02903
`UNITED STATES
`lr@psh.com
`Motion to Suspend for Civil Action
`Lalitha Rao
`lr@psh.com
`/lalitha rao/
`12/10/2007
`Beacon-Motion.pdf ( 3 pages )(72220 bytes )
`ExhibitA.pdf ( 44 pages )(2717832 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA179573
`ESTTA Tracking number:
`12/10/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`94002236
`User
`The Beacon Mutual Insurance Company
`Lalitha Rao
`Partridge Snow & Hahn LLP
`180 South Main Street
`Providence, RI 02903
`UNITED STATES
`lr@psh.com
`Motion to Suspend for Civil Action
`Lalitha Rao
`lr@psh.com
`/lalitha rao/
`12/10/2007
`Beacon-Motion.pdf ( 3 pages )(72220 bytes )
`ExhibitA.pdf ( 44 pages )(2717832 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ONEBEACON INSURANCE COMPANY
`-
`Apphcant
`
`V_
`
`CONCURRENT USE NO.: 94002236
`
`I hereby certify that this correspondence, along with any
`referred to as being attached or enclosed, is being deposited
`With the U. S. Patent and Trademark Office, Trial and
`Appeal Board Via electronic filing through their Website at
`http://estta.uspto.goV/ on
`
`THE BEACON MUTUAL INSURANCE
`COMPANY
`
`Deeemeee 10
`(Date)
`
`2007
`
`Exce ted User
`
`.__.~~
`
`e:__e.~,-,
`
`/lalitha rao/
`
`Lalitha Rao
`
`THE BEACON MUTUAL INSURANCE COMPANY’S
`
`MOTION TO SUSPEND PROCEEDINGS.
`
`Now comes The Beacon Mutual Insurance Company (“Beacon”), the Excepted
`
`User, and pursuant to 37 CFR §2. l l7(a), moves to suspend the within concurrent use proceeding
`
`on the grounds that the Applicant’s rights and obligations with respect to the use of the
`
`OneBeacon name and lighthouse logo, the Very marks that the Applicant is seeking to register in
`
`this proceeding, are the subject of an action in the United States District Court for the District of
`
`Rhode Island seeking, among other things, a declaration as to the Applicant’s use of the mark in
`
`Rhode Island.
`
`By way of background, on July 15, 2005, the United States District Court for the
`
`District of Rhode Island enjoined the Applicant from using the OneBeacon name and lighthouse
`
`logo in Rhode Island. In its order, the Court found that the Applicant’s use of the OneBeacon
`
`name and lighthouse logo was fundamentally similar to the marks used by Beacon since the early
`
`
`
`1990s and that there was a substantial likelihood of confusion amongst Rhode Island employers,
`
`employees, vendors, doctors, court personnel and others as to the relationship between the
`
`Applicant and Beacon and the source of their respective insurance products and services. The
`
`Court entered judgment against the Applicant on July 19, 2005.
`
`In contravention of the Court’s injunction order and judgment, since July 2005,
`
`the Applicant has continued to use the name OneBeacon and/or the lighthouse logo in Rhode
`
`Island. As a result, Beacon has filed a second complaint against the Applicant in the United
`
`States District Court for the District of Rhode Island (the “Federal Court Action”) to find the
`
`Applicant in contempt of the 2005 order and seeking a further declaration of the parties’ rights
`
`and obligations under that order that specifies precisely what the Applicant must do or refrain
`
`from doing in order to comply with the injunction previously issued. A true and accurate copy of
`
`the complaint filed in the Federal Court Action on December 7, 2007 is attached hereto as
`
`Exhibit A.
`
`In addition to the Applicant’s continued use of the OneBeacon name and
`
`lighthouse logo in Rhode Island, it is evident fiom the Applicant’s pending concurrent use
`
`application that the Applicant does not acknowledge the full extent of Beacon’s trademark rights
`
`to the Beacon name and logo as declared by the United States District Court in July 2005. The
`
`Applicant also fails to propose a mode of use of the requested marks in its application, creating
`
`additional likelihood that the Applicant’s use of the marks will continue to cause confusion as to
`
`the source of the goods and services provided by Beacon.
`
`For all of these reasons, it is necessary for the United States District Court to
`
`revisit the restrictions imposed on the Applicant’s use of the marks. The outcome of the Federal
`
`
`
`Court Action will have a direct bearing on whether and under what circumstances the Applicant
`
`can use the marks it is seeking to register. It is in the interests of this Board and the parties
`
`hereto to have clarity concerning the Applicant’s use of the mark in Rhode Island before
`
`proceeding with the pending concurrent use application.
`
`Beacon requests that this matter be suspended until resolution of the Federal
`
`Court Action.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing motion was transmitted by U. S.
`Postal Service first-class mail, postage prepaid, on this 10th day of December, 2007 to the
`attorney for Applicant at said attomey’s usual place of business as follows:
`
`Susan Progoff
`Fish & Neave IP Group, Ropes & Gray LLP
`1211 Avenue of the Americas
`
`New York, NY 10036-87043
`
`/lalitha rao/
`
`Lalitha Rao, as Excepted User’s Attorney
`
`944568_3
`
`
`
`UNET7E§} STATES BESTRECT CGURT
`
`FGR "E.‘H.E §HS"§‘REC"E"‘ GE? RHGBET; XSLANB
`
`THE BEACON MUT‘{I.e&L }.°NS{}’RA;NCE
`
`C01\'fi’A7NYL,
`
`Piainiiff
`
`V.
`
`ONE-BEACON EN-S-URANCE GROUP Ll;-C9
`Defendant
`
`;(_;‘(}1Vi}?L.+§iEfi.‘*€’i“
`
`
`
`1. Plaintiff, The Beacam Mutual Ingurance Company, is a Rhada island domsstic.
`
`mu.tua1 insurance company that n1ai11tai11s its primzipai place of ‘ousiness at One Beacnn
`
`Centre, Warw‘i.ck, Rhode. Island.
`
`2. Defendant, ()neB<:a.c0n I11suran«;:e Group LLC, f0nin€:r.Ey krmwn as CGU, is a
`
`foreign c0rpo1'a'i'.i<m.‘thatmaintains its prixicipai place of business at One Beacon La:1‘:‘:9
`
`Canton, Massacililsetts. Def5:m'ia.nt (1065 Business tinder ‘aha name “0neBeac0n Insurance
`
`Company” and is Iiicensed by the Rhode lsianci Depa1'£:m<:nE.' of Business Regu1a‘i:ion as a.
`
`properiy‘ and casualty insursr.
`
`JURESiPEfC'I’§GN
`
`J. The Court has jurisdiction over this action under 23 U.S.C. § 1338 as a case
`
`arising tmder federal trademark law‘.
`
`
`
`.§.»,(...
` .§ axanees>->---mmmn
`Use of Trade Nannies and Service Marlis
`
`§‘.1£!~;_C"lI_e‘S;
`
`4. Both Plaintiffancl Defendant acl.verE;i.se and promote, offer for sale, and sell
`
`in.s‘urs..noe products and services, including workers’ eonrpensation insurance, in the State
`
`of Rhode Island.
`
`5. Since 1992, Plain.tlff has sdoptecl and used oorltlnuously the service xnarks and
`
`trade names of “The Beacon Mutual lnsuralree Conrpany,” “Beacon Insurance” ancl “The
`
`Beacon” together with a ligluhouse logo as part of its sdVem'si.r1g and promotion,
`
`ofi‘erin.g for sale, sale, and mlnqinistretlon of its msnranee produefis and services in the
`
`State of Rhode Island.
`
`6. Since 1992, Plaintiff has expended a significant anrount of money, tlxne, and
`
`effon: in actively promoting its insurance products and services under its service nrarks
`
`and trade names, as a. result of which it has acquired a sulsstarrtlal share o.‘fRl1.ooe lsland’s
`
`workers’ compensation insurance rnarket.
`
`7. Plaintiff exclusively used its servioe marlcs and trade mines in Rhode Island
`
`for almost nine years from 1992 to June of2{lGl.
`
`8.
`
`In June of 2081, Defendant, which name had changed their sanne year from
`
`CGU Insurance to 0n.eBeaeon Insurnaree Group LLC, began advertising and pronrorirlg,
`
`(flexing for sale, selling, and adnrinistering its insurance products and services in Rhode
`
`Island under the name 0neBeaeon Insurance one employing a lighthouse logo.
`
`9. Defe-n.da;rs.t’s use of deceptively silnilar marks to that of Pleinriff to advertise
`
`and promote, offer for sale, sell, and ednnnister insurance products ancl services sinrilar to
`
`that of Piéainriff eausecl confusion :.nnongstRl1o4:le Island employers, employees, vendors,
`
`
`
`doctors, court personnei and others as to whether there existed a retationship between
`
`Piaintiff and Defendant and led those persons to heiieve that Defendanfs insurance
`
`products and services were somehow sponsored by or eonneeted with Piaintift‘ 3 business
`
`when in fact there was no such eonneetion.
`
`10. As a result of the confusion engendered by Defenda:nt’s use of the OneBeaeon
`
`name and iighthonse logo, the association between iE’1aintitt"’s products and services and
`
`its marks and trade names was weakened, eausing Piaintiff to suffer dantage to its
`
`husiiiess, goodwill, reputation, andprofits.
`
`¥;}‘nrte2*}n'in 1'» n..et.i%o:r to Iii1'§:':‘t_:-1
`
`
`
`
`of {}t1eE‘;e:t.co.:1 Name and Ligrhthouse Lo so
`
`
`
`11. in order to put an end to the apparent eonfusion arn.ongst Rhoda island
`
`eonsnrners and ‘beneficiaries of i’1aintiff’s insurance products and services and other third
`
`parties, on or about July 5, 2001, Piaintiff fiied a complaint in Rhode island Superior
`
`Court against Ifiefendant asserting eiaiins of federal and state unfair eornpetition, and
`
`service mark infringernent and diiuti on of trademark under state iaw {the “Underlying
`
`Action”).
`
`12 In the Underlying Action, Plaintiff requested, among other things, that the
`
`Defendant he enjoined frorn using the name Oneiieaeon and the tighthouse logo, or any
`
`eoiorabie imitation thereof, in Rhode island.
`
`13. Defendant removed the Underlying Action to this Court where it was
`
`doeketed as (I3.A.. No. 01-354 S.
`
`14. After a bench trial, this Court issued a Decision and Grater in favor of Ptaintift
`
`a2
`on July 15, 2605 (the “Order”:
`
`A true and accurate copy of the Order is appended
`
`hereto as Exhibit A.
`
`
`
`i5, As part of the Order, the Ceurt found that Piaintiffs use of its descriptive
`
`trade marks and ieges had aequ” ed seeendary meaning in the Rhede island niarket such
`
`that individueis respeiisihie fer, er influential in, seieeting their eeinpany’ s w0rl<:ets’
`
`eempensatieri insurance anti/er commercial/ind.usttiai insurance asseeiated the Beaeen
`
`name and [lighthouse logo with P1a.iuE,it‘f.
`
`16. As part of the Grder, the (feuit found that Defericiamfs use ef the Onefieaeen
`
`name and iightiieuse iege was fundamentally similar to the merits used by Plaintiff and,
`
`theretbte, erea.te<l a. substantial ii_i*C€iiilO0(i of confusion amongst Rhede lisia.ud empi_eye1‘s,
`
`employees, vendors, tiecters, court personnel and others as to the i'eiatiensiiip between
`
`the two patties and the source of the relevant insurance products and services.
`
`17. Based upon its findings and pursuant to its equitahie powers to issue
`
`injuneti‘ve reiiefuhdei: the Laniiem Act, the Court enj eined Onefieaeen from using the
`
`tllneiieaeeii name and iighthouse iego in Rhede island.
`
`18. On or about Iuly iii, 2065, the Court issued an Amended iudginent in favor of
`
`Plaintiff pursuant to the ()i'ciei:: A true and accurate copy of that Amended Judgment is
`
`appendecl hereto as Exhibit B.
`
`}}et‘en{‘£ant:~‘s filemimtt Feiitiwiii
`
`Iissuzzmee of-ti1e{).riier in the Ur_:uieri in I ...%u:t:ieii_
`
`19. Upon ihforzrnetien and belief, since the issuance of the Greer in 20053
`
`Defendant has continued te use the heme “fliiefieaeen” and/er the iightheuse loge in
`
`Rhetie island, in addition tie the name OBiit1s11rance.
`
`20. Upeh infermatien and heiief, for its claims and hiiiirig correspondence with. its
`
`Rhede Island poiieyheldezts, Det‘entiant1ises envelepes dispiaying the “0ueBeaeen” name
`
`
`
`on the rear of the envelope and instructs its policyholders to tender their premium
`
`payments to OneBeaeen<
`
`2}. Defendant is currently registered with the Rhode Isiaad Depa1'tmem: ef
`
`Business Regulation as “Onei?ieaeen insurance C.ompany” and is iisted by the Na.§i.enaE
`
`Association of Insurance Cammxissioners {“NAEfC”) as iieensed in Rhode island as
`
`“OneBeacen Insurance Cempaa1y."‘
`
`22. The website currently arvaiiable for use by Rhode Island. peiieyhoiders is that
`
`ef OneBeaee11. That website, v\r*.>y"»x\:'.c1:1;e.E>mme,m:'_1_q>__:_3;._g:__gj;;[:_;_, is net segregated for Rhede Isiand
`
`pe1i.eyh0Ed.e:fs and dees not make available a separate web page fer (381 information and
`
`forms.
`
`23. The website currently used. by Onefieaeen lists autherized agents in Rhode
`
`Island under the name “flnefieaeen” and a depiction of a Eightheuse.
`
`24. Emtry of the web address ofwww.obiinsurancecom, directs the browser to the
`
`
`
` s~:ais:._aas 9.111 Website.
`
`25. The claims and biiiing telephone mm1‘be1's currently offered for use by
`
`Defendanfs Rhode Island policyholders indicate that the eailer has reached “Onefieaeea
`
`insurance.”
`
`26. Defenders‘: currently advertises the QneBeaeer1 “OnePae” program, designed
`
`fer small ‘businesses, as availabie in Rhede Isiand.
`
`27. Many of the websites currently used by Defendanfs autheriaed agents
`
`identify “QneBeaeen”, not 031, as the insurance company they represent.
`
`
`
`228. Since the issuance efthe Order through 2.t)()7, Defendant has brought
`
`numerous actions against third parties in Ritede Isiand Superior Court identifying itself as
`
`“OneBeaeen insurance” or “()neBeaeen Insurance G1'eup.”
`
`29. The infe1'm.atien detailed in paragraphs 20-28, above, evidence ifietendanfs
`
`continued use efthe OneBeaeen name and iightheuse iege iK'1.i§i10d€:iSi3,i‘3d.
`
`30. As a result of Defencianfs continued unpemiitted use of the name Oneifieacen
`
`and iighthense logo in Rhede Isiand, confusion remains among Rhone Island employers,
`
`entpieyees, vendors, doctors, and others about the (iietineti.en between Ptaititiffs
`
`i.nsu1‘a.n_ee precincts and services and that ef Defendant.
`
`31. As a. resuit efDe.t’e11dant”s continued and U.11_pf31'1I1ifi€.3(i'l1.S6 ef the name
`
`€I}neBeaeen insurance and/er the iigtittieuse iege in Rhede Esiand, Piaintift’ S trademar.ks
`
`and names have been weakened, thereby damaging Plaintif 5 business, gecmiwill,
`
`reputation, and profits.
`
`Det'entiant’s Cenenrrent Use Aggiieatien te the Unitefi States Patent anti
`Trademark Gffiee.
`
`32. On er about June 26, 2336, Defendant filed: eenentrent use applieatien No.
`
`78916566 with the United States Patent and Trademark Gffiee (“Concurrent Use
`
`Appi.iea:tien”).
`
`33. In its Ceneurrent Use tAppiEicatien, Defendant seeks to register its mark
`
`“ONEBEACON” for its €‘1}£Cit‘.tSiVe'3 use in eenneetien with insurance nndeiswriting services
`
`in the fields of property: casualty, accident, liahiiity, health, reinsurance, and surety, and
`
`insurance agency services in the area. eemprising the entire United States except for the
`
`State of Rhntie Island.
`
`
`
`in its Concurrent Use Application, Det‘end.a.nt (lees not acknowledge the full
`
`extent of Plaintiff’ s trademark rights under federal law and as delineated. by the Order‘
`
`35. The geographic restriction prepesetl by Defendant in its Concurrent Use
`
`Application is n<_it suflieieiitly protective of Piai.t1tift’s tratlemark rights because, irzter
`
`aiia, l?’laintiff has used and is using its marks in areas eutside of Rltede Island, smelt as
`
`Massachusetts and Cermeetieut.
`
`36., Det‘emia.nt dees not propose a mode of use of the GNEBEACQN mark in its
`
`Concurrent Use Application, which may be required in order to preteet Pleititiitk
`
`tre.demarl<s rights.
`
`37. If the Ceiieurrent Use Application is granted,tl1ere is a iikelihoett that
`
`Det‘endant’s C011Cu1T€I1i;l1Sf3 of the ONEBEACQN
`
`in eeimeetien with its geetls and
`
`services will cause eonfitsien as to the seuree ef the geeds and services currently
`
`pmvided by P'la.ih‘tiff.
`
`CQUNT 1
`
`(Civil Ctmtemgtt)
`
`38. The ailegatiehs efParagrapl1s 1 through 37 are iheorperatetl by reference as if
`
`fully set ferth herein.
`
`39. Defemiant, as a petty to the Underlying Action, has had notice eat" the Order shall
`
`its erij hinder of Defehdantfs use of the Oi1eBeeeen name anti lighthouse logo in Rhede
`
`island.
`
`46. The Order is elearg definite, and unambigueits that as of July 15, 2065,, the
`
`Defendant is prohibited from using the name QheBeaeet1 insurance and the lighthouse
`
`legs in Rhede Island.
`
`41. Defendant has been at all times able to eentply with the Order’s enj einder.
`
`
`
`42. i‘tefendant has failed to take reasorinhle steps to comply with or irnplenient
`
`ad1n.in.istrative or operational changes to adhere to the terms of the Order.
`
`43. In violation of the clear, definite and nnnrnhignons tenns ofthe Order,
`
`l)efend.ant has continued, to use the name OneBeac.on and lighthouse logo in Rhode
`
`island.
`
`44. As a result offlefendanfs violation ofthe Order, Plaintiff traclernnrlrs and
`
`names have been Wealrenetl, thereby clanisging Plaintiff s business, goodwill, reputation
`
`and profits.
`
`45. As a beneficiary of the injunction imposed by the Order, Plnin.tifl’ is entitled to
`
`sanctions for Defendant’s COI}.0l1lCli11 violation of the i.njnnetion and a. further order from
`
`this Court requiring that ifiefentlant, including its officers, agents, servants, employees
`
`and representatives, nliicle by the terms ofthe Order.
`
`WHER}'<’OR.'lE£, the Plaintiff, The Beacon Mutual lnsnranee Company, dernanrls
`
`jmlgrnent against Defendant £)neLt:”iee.oon lnsuranee Group LLC for civil contempt of the
`
`Conrt’s July l5, Ztltlfi Order and Decision, and for tiarnages caused ‘by and sanctions for
`
`Defendants conduct, together with interest, costs and expenses, including reasonable
`
`a:ttorney’s fees, incurred in bringing and. pursuing this action, and for such other relief as
`
`this Court rleerns just and proper.
`
`gC{)‘UN’l_‘ Eli
`(Deelnrartnry Jnrigment)
`
`46. The allegations of Paragraphs 1 through 45 are incorporated by reference as if
`
`fully set forth herein,
`
`47. A. snhstaritial controversy exists between Plaintiff and Defeiidarit in that the
`
`i")efen.dant has not and is not shitting hy the injunction hnposeci by the Order and has tiled
`
`
`
`the Concurrent Use Appticatien which threatens Violation of the Order, the purpose of
`
`which is to preteet the trademark rights of P£ain.tit‘f by restraining Defendant from the use of
`
`Si_II1itaT'ETEt<‘16tT1?lTkS in eennection with its ntarkenng and pmtnetion, otter for sale, sale, and
`
`administration. of insurance pteducts and services in the State Of Rhede Island,
`
`48. Plaintiff has a right te ensure eempiianee with the injunction and that
`
`Detendant’s proposed eoneuntent use registration does not have the effect et"vie1attng the
`
`injunction and weaken its trade names and service tnarks.
`
`49. Ptéttilttffifi entitled t0 pmtect its trade names and service tnarks to the maximum
`
`extent pnavided fer under the Order.
`
`50, Defendant has an emigatien under the (Erder te refrain from eonduet that would
`
`negatively affect Ptanttit‘f’s use of its trade names and service marks in the State of fitthode
`
`{stand
`
`51. If Defendant does not eease use of the OneBeaeen name and 1i.ghth.ense tags) in
`
`Rhede island and appropriately resttt at its concurrent use registration, eenfusten about the
`
`distinetien between the parties’ instnance predueta and services will be perpetuated, the
`
`association. between Pteintiff’ marks and its own insurance products and services wit} be
`
`weakened, and ?1a1?ntit‘f’s business, reputation, profits wit} be negativeiy impacted, and
`
`darnaged.
`
`52. In order to tesetve the controversy, it is necessary for the Conn’; to declare the
`
`respective tights and ebtigations of the Plaintifi‘ and Defendant under the Order and in
`
`particular to specify precisely what Defendant must do or t*et‘ra.in from doing in erder to
`
`eornpty with the Order.
`
`
`
`XVI-EEERIESFOTRE, the PEai21tif£, The Bea.cm1.Mut11aE Binsurancrs Ccmpany, demands
`
`judgment deiimatingz 1) its rights under the: {)rde:r to ensure protctction of its trade. names
`
`and service. marks; and 2) Dcfendam‘.’s 0‘bEigaii011s 1,111d§:r ‘ihfi Order to mfra.ir1 from the use
`
`of the QI1€B63.§.‘-011 name and ligh.th0u€».<: Rage in C£3I111€CfiOT1 with its advertising and
`
`promotion, offer for sale, sale, and adrninistxatiarz of insurance producis and services in
`
`the State 0fR}10de island.
`
`"1’E-IE; L§3}EiA(_‘..ON IVf{UT{_.TAL
`
`INSURANCE CQI‘v’fiE’ANY
`
`By its Attmneys,
`
`PARTRIDGE SNOW & HAHN
`
`Sieveli E. Snow (#i7?4)
`Jennifer Cervenka (#6343)
`188 South Main Street
`
`fiovidenca, R1 029(33
`(#31) 8618209
`(401) 861-8210 FAX
`
`‘fix
`DATED: December ix
`,2<>{>7
`
`9s4em__:x12.2.2-253
`
`
`
`ELXEBH A
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF RHODE ISLAND
`
`THE BEACON MUTUAL INSURANCE
`
`COMPANY,
`
`Plaintiff,
`
`V.
`
`ONEBEACON INSURANCE GROUP,
`
`Defendant.
`
`
`
`We...-\.,.,...,..~«.,..-W...»-...«‘~....e-....»«.._,».<,v
`
`
`
`
`
`C.A. NO. Ol~354S
`
`QE£E§£QEi§§EmQB§E§
`
`WELLIAM E. SMITH, United States District Juflge.
`
`I. .
`
`l.1_"J,l£n<2.£i_‘;‘1._黑_‘1.l'_3:-_<2£l
`
`The Beacon Mutual Insurance Company (“Plaintiff” or “Beaeen”}
`
`is the largest writer of workere’ eempensation insurance in the
`
`state of Rhede Island.
`
`It has used the name “The Beacon Mutual
`
`Insurance Company”
`
`(along with a
`
`lighthouse loge)
`
`since 1992.
`
`Meanwhile, OneBeecon Insurance Greup (“Defendant” or “OneBeaeon”),
`
`formerly known as CGU Insurance, adapted its current name,
`
`and
`
`began using a
`
`lighthouse logo as well,
`
`in June 2001.
`
`Following
`
`this‘ name
`
`change, Beacon brought
`
`this
`
`lawsuit claiming that
`
`Defendent’s edeption of the name “OneBeacon” and a lighthouse loge
`
`vieietefl federal and state unfair competition law.
`
`Beeeen also
`
`asserted claims
`
`tor
`
`service mark
`
`infringement
`
`and trademark
`
`dilution under state law!
`
`QneBeaeon responded to Beac0n’e euit with a Motien fer Summary
`
`Judgment, which this Ceurt granted.
`
`Beacon Mut.
`
`Ins. Ce..v.
`
`
`
`OneBeacon Ins. Grqgg, 290 F. Supp. 2d 241 (D.R.I. 2003)
`
`(“Beacon
`
`,,
`
`geyjgi 376 F.3d 8
`
`(let Cir. 2004).
`
`In granting summary
`
`judgment,
`
`this Court
`
`relied primarily on
`
`the First Circuit’s
`
`opinion in Astra Pharm. E¢gg§.z Inc. V. Beckmagmgnstruments,
`
`inch,
`
`718 F.2d 1201 (1st Cir. 1983), which held that in order to find a
`
`iikeiiheod 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,” ig*_at 1206 (emphasis added}. Because “Plaintiff he[d}
`
`not esteblisned.tnet the [allegedly confused] entities and pereons
`
`. are [} consumers of the product,” §§a§gQ_;, 290 F. Supp. 2d
`
`at 246,
`
`this Court concluded that Plaintiff failed “to demonstrate
`
`that the confusion it identifies is connected in any way tc its
`
`commercial
`
`interests,” id. at 252,
`
`as
`
`required to maintain an
`
`uniair ccmpetition Claim.
`
`On appeal,
`
`the First Circuit reversed.
`
`§e§ggn*flgtLW;ng¢%§g$
`
`V. Cneaeaccn Ins. Greu , 3?6 F.3d 8 (let Cir. 20G4}(“Beecon 11”}.
`
`Witheut addressing its earlier holding in ggtga that the relevant
`
`cenfusicn fleet be shcwn to exist
`
`in custcmers or purchasers,
`
`the
`
`First Circuit implicitly abdicated the 5§trg_standard by concluding
`
`that evidence of actionable commercial
`
`injury in a case such as
`
`this was “net ‘restricted to the less of sales ‘to actual
`
`and
`
`prospective buyers of
`
`the prcduct
`
`in questioni"
`
`iggn at 10.
`
`Instead,
`
`the Eirst Circuit enunciated a new standard for what
`
`
`
`constitutes actionable confusion: “Confusion is relevant when it
`
`exists in the minds of persons in a position to influence the
`
`purchasing
`
`decision or
`
`persons whose
`
`confusion presents
`
`a
`
`significant
`
`risk to the sales, goodwill, or
`
`reputation of
`
`the
`
`‘trademark owner.”
`
`15L“ (emphasis
`
`added}.
`
`Further,
`
`“relevant
`
`commercial injury includes not only loss of sales but also harm to
`
`the trademark holder’s goodwill and reputation.” ;g¢
`
`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, 20GB. What follows
`
`are the Court's findings of fact and conclusions of law.
`
`II.
`
`..}§f..'__lZ1.§;i§L5,flEI..§...‘£2.f Fact and
`
`The marks that Plaintiff seeks to protect are not registered.
`
`“Therefore the present claim is based upon § 43(a) of the Lanhem
`
`Act which covers unregistered trademarks.” Boston Beer Co. V.
`
`Slesar fires. Brewin Co.,
`
`9 F.3d 175, 180 (1st Cir.
`
`i993). Section
`
`43(e) 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 4w
`
`is likely to cause confusion, or to sense
`{A}
`mistake, or to deceive as to the affiliation,
`connection, or association of such person with
`another
`person,
`or
`as
`to
`the
`origin,
`snonsorship, or approval of his or her goods,
`services, or commercial activities by another
`nerson.
`
`is U.S.C. s l125{e){l){A).
`
`£42.‘!
`
`
`
`To make out
`
`1
`3
`
`claim under
`
`§
`
`43{a),
`
`the
`
`owner of
`
`an
`
`unregistered mark: must establish that
`
`its mark is
`
`(1) either
`
`inherently distinctive or has acquired secondary meaning, and (2)
`
`is likely te be confused with the defendant's mark.
`
`§3QmPeeos,
`
`Inc. V. Ease CabanaLmIhc., 505 U.S. 763, 7o9~7O (1992).
`
`A,
`
`The Sgegtrgmwef Distinctiyegeee
`
`In analyzing whether a mark is distinctive, marks are divided
`
`into four categeriee:
`
`(1) generic,
`
`(2) descriptive,
`
`(3) suggestive,
`
`and (4) arbitrary or fianciful. Abercromgie & Fitch ggymy. Huntigg
`
`World,_lQ§L, 537 F.2d 4,
`
`9
`
`{Zd 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. Lend Tradingmggg V.
`
`Kohler_Co.,
`
`163 F.3d 27,
`
`39
`
`(let Girl 1998). Generic marks are
`
`generally Imfi: protected.
`
`Id. Whether
`
`a mark is inherently
`
`distinctive is a questien of feet. Boston Beer,
`
`9 F.3d at 180.
`
`To be classified as “fanciful,” terms will usually have to
`
`have
`
`been
`
`“invented
`
`solely for
`
`their
`
`use
`
`as
`
`trademarks.”
`
`Abererombie,
`
`537 F.2d at 11 n.i2. Arbitrary marks are “cemmen
`
`word{s)
`
`.
`
`5
`
`. applied ih an unfamiliar way.” lg; Suggestive marks’
`
`“require imagination,
`thought and perception to reach a conclusion
`as t0 the eatere of goede.”
`537 F;2d at 11 {quoting Stix Predsf,
`
`Inc; V.
`
`flnited March.
`
`& Mfre,,
`
`Ine.,
`
`295 F. Supp.
`
`4?9,
`
`488
`
`(S;D.N.Y.
`
`1968)).
`
`‘ Finally,
`
`“[a)
`
`term is descriptive if
`
`it
`
`
`
`forthwith conveys an immediate idea of the ingredients, qualities
`
`or characteristics of the goods.”
`
`;g;_(queting §ti§mProas.,
`
`luck,
`
`295 F. Supp. at 488).
`
`Beaoon’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.
`
`gge Miriam~Wehster’s
`
`Collegiate Dictionary 98
`
`(10th ed. 2002)
`
`(defining “beacon” as a
`
`“signal for guidance” and “a source of light or inspiration”);
`
`see.......,....
`
`
`
`F.3d 722,
`
`728
`
`
`.,“ ..,\
`....,,......“~ .,.. ‘
`V»-W.-.~w-.»w.x....».“a.;..:...
`also P —t::i~.:iis:: it %~‘~‘:1»a
`fin. QrQQ§&%£fi§&, 149
`
`(“In this instance,
`
`(7th Cir.
`
`1998)
`
`‘platinum’
`
`describes the quality of plaintiff's mortgage services and suggests
`
`that it provides a superior service .
`
`.
`
`.
`
`:
`,"E; gmegicsn Heritsf
`
`Life figs; Co. Vw Heritagemhife Ins. Co., 494 F.2d 3, 11 (5th Cir.
`
`’1974}
`
`(uhholding ea district ceurt’s conclusion “that
`
`the word
`
`‘heritage? is generic or descriptive of life insurance”); giryg
`
`Walker & sgnsfi
`
`Inc. V, Penh~Maryland CQ;Q$, 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 hy many
`
`other companies around the country.‘
`
`.i...«“...
`._..«»-..-.-u-..-.-..
`See gmerican Heritsge Life
`
`
`
`1 For example, Sara souhosky, a paralegal for the Defendant's
`law firm, Ropes & Grey, LLB,
`testified at trial that a search cf’
`the ihternet revealed 28% businesses in Massachusetts used the name
`Beacon,
`with
`ten
`sf
`those
`businesses
`being
`in
`the
`financial/ihsuranoe industry,
`and
`five of
`those
`employing a
`lighthouse logo as well.
`(Tr. of 3/3/05 at 119.)
`
`5
`
`
`
`;g§L, 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
`
`country.”).
`
`Finally, Beacon itself has capitalized upon the
`
`descriptive significance of its mark by putting out a newsletter gr.» :5
`
`the past entitled “Guiding Light.”
`
`(Tr.
`
`of 2/28/05 at
`
`63 U’!
`
`(testimony of Michael Lynch, Vice President of Legal Services £1: E’?
`
`Beacon).)
`
`B.
`
`figggihc Secondary_fle§§iflg
`
`Because Season's mark is descriptive,
`
`and therefore not
`
`inherently distinctive, Beacon must Show secondary meaning to avail
`
`itself cf the protection of the Lahham Act.
`
`A mark that
`
`is not
`
`inherently distinctive is protected under the Lenham Act only upon
`
`a
`
`showing by’
`
`the »mark owner,
`
`by a
`
`fair preponderance of
`
`the
`
`evidence,
`
`that the mark has acquired secondary meaning.
`
`fiee 2 J.
`
`Thomas McCarthy, McCarthy Oh 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.
`
`fige 1.P; Lend,
`
`163 F.3d at 41. Market surveys have
`
`“become e wellwrecegnized means of establishing secendery meaning.”
`Beeten Beer Co.,
`9 F.3d at i82. Other factors a court may look re
`
`“in determining whether a term has acquired secondary meaning are:
`
`(1)
`
`the length and manner of its use,
`
`(2)
`
`the nature and extent of
`
`
`
`advertising and prometion of the mark and (3)
`
`the efforts made in
`
`the direction sf prnmeting a conscious connection .
`
`.
`
`. between the
`
`name
`
`.
`
`.
`
`.
`
`and aa particular product
`
`.
`
`.
`
`.
`
`.”
`
`Id. {citation
`
`omitted).
`
`Beacon retained the services of Dr. Jacob Jacoby as an expert
`
`witness on secondarv meaning. Dr. Jaooby 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
`
`eompany’s workers’
`
`compensation insurance and/or commercial or industrial insurance.
`
`(Pl.’s Ext 406.)
`
`This conclusion is based upon the results of
`
`three surveys Conducted in Rhode Island in the Fall ef 2001.
`
`In
`
`these surveys,
`
`e total of 237 targeted respendents
`
`(persons who
`
`cheese, or help to ehoese,
`
`the provider sf workers’ eempensatien or
`
`commercial/industrial insurance for their company) were asked what
`
`they thought of when they heard or
`
`saw the term “The Beacon.”
`
`According te Jaceby,
`
`6§% ef the respondents who heard and ?9% of
`
`the respondents whe
`
`saw the term.
`
`“The Beesen”
`
`said that
`
`it
`
`signified a workers’ eempensatien insurance company.
`
`Dr.
`
`Jacob Jeeehy’s
`
`survey supperts
`
`the eenclusien that
`
`Eeseon’s marks have acquired secondary meaning.”
` x-9:-:«xann.-nun.-c«~
`
`Dr.
`
`Jaooby’s
`
`? Onefieaeen ehallenges Dr. Jeeohy’s_methedelegy in conducting
`the survey on a number of grounds. Hewever, after an extensive
`Daubert hearing en this matter, this Court concluded Sr. Jssoby’s
`survey evidence eenstitutes admissible expert
`testimeny.
`Beacon
`
`Mnt._Ins. Ce. V. Oneaeacon Ins. Gro up, 253 F. Supp. 2d 221 {D.R,E.
`
`
`
`eurvey demonstrates that
`
`individuals in Rhode Island responsible
`
`for,
`
`er
`
`influential
`
`in,
`
`selecting their
`
`company's workers’
`
`comeensation 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.
`
`OneBeaoon argues that since Beacon has surveyed a narrower
`
`pope ation of persons
`
`for purpeses ef establishing secondary
`
`meaning
`
`(those
`
`individuals
`
`likely
`
`to
`
`influence
`
`purchasing
`
`decisions)
`
`than that
`
`in which it
`
`is
`
`leaking te establish a
`
`likelihoed or confusion {the general public), Beacon should be
`
`nrecluded from relying on‘ its
`
`survey evidence or,
`
`in the
`
`alternative, the evidence of confusion among the general population
`
`should be accorded lees prebative value.
`In euppert of
`this
`contention, counsel for Defendant,
`in his elesing argument, stated
`
`that
`
`a highly respected commentator,
`
`J. Thomas McCarthy,
`
`has
`
`written that the respective univereee “must” match.
`
`_(Tr. of 3/9/05
`
`wm §e.x
`
`2003}. Oneaeacon also challenges Br. Jacohy’s survey on the ground
`that it enly_tested the term “The Beacon,” while Plaintiff here is
`claiming infringement of “The Beacon,” “Beacen Insurance," and “The
`Beacen Mutual
`Insurance Company.”
`{gee Def.’a Met.
`to Exclude
`Evidence Relating to Marks ether than “The Beaeon.”}
`The Court
`eeneludea Dr. Jaceby’s explanation fer eenatrueting the surveys as
`he did makes sense and denies Defendant's motion,
`(fiee Pl.’s BX.
`406 at
`6 {“Because the entire name, The Beacon Mutual Insurance
`Company, actually tells the reependent
`that it refers (1)
`te a
`eompany, and {2}
`that
`that eempany is an insurance company, no
`effort was made
`to test whether
`the
`full
`name effectively
`eemmunieatea that it is the name of an insurance company.”).)
`
`8
`
`
`
`at 89.) However,
`
`a reading of the cited source discloses no such
`
`assertion.
`
`Rather, McCarthy merely recognizes
`
`that
`
`there is
`
`“inter
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