Friday, June 15, 2007

TTAB Decides "FIRST NIAGARA" Oppositions After CAFC Reversal on Issue of Use

Readers will recall that early this year, the CAFC reversed the TTAB's decision in First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005). [TTABlogged here]. The Board had dismissed six Section 2(d) oppositions because Opposer failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress" (and therefore could not establish priority). The CAFC held that the Board had applied too stringent a test because Section 2(d) uses the terminology "previously used in the United States by another." It does not state that the use must be "in commerce lawfully regulable by Congress." Opposer "unquestionably" met the more lenient test. First Niagara Ins. Brokers, Inc. v. First Niagara Financial Group, Inc., 81 USPQ2d 1375 (Fed. Cir. 2007). [blogged here].

The Board has now considered the Section 2(d) issues on remand from the CAFC, and has sustained three of the oppositions in part and dismissed the other three (decision here).

Reviewing the three marks relied upon by Opposer [FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS, INC., and the logo mark shown above] and the six FIRST NIAGARA marks of Applicant [FIRST NIAGARA, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, FIRST NIAGARA E-CD, and FIRST NIAGARA in the design form shown below], the Board found that the dominant portion of all the marks is the term FIRST NIAGARA, that the overall impressions of the marks are substantially similar, and that the additional wording and/or design elements in the marks "does not mitigate this similarity." The Board concluded that this factor weighed "strongly in opposer's favor."

As to the services, the record showed that both parties render identical insurance brokerage, agency, administration, and consultation services. It was then unnecessary for the Board to consider any other class 36 services in the three applications that include insurance services, and this factor favored Opposer as to the class 36 services in these three applications.

Certain leasing services included in these three applications (classes 35, 37, and 39) were not offered by Opposer, nor was there any evidence of a relationship between insurance services and leasing services. This factor favored Applicant as to these classes.

Turning to the remaining three applications, all were directed to banking services only. Opposer contended that banking services are related to insurance services but the Board found insufficient evidence in the record to establish a connection. The Board noted that the fact that Applicant itself offered both banking and insurance services does not require, without more evidence, a finding that these services are related.

Opposer pointed to evidence of actual confusion: 2600 misdirected e-mails intended for Applicant. Applicant argued that the misdirected e-mails resulted from the similarities in the parties' e-mail addresses ( versus and not from confusion as to source. In light of the fact that both parties are small local businesses, the Board found this number of incidents to be "significant." But all the e-mails were addressed to specific individuals and none were from "individuals or businesses in search of insurance policies." No policies were written as a result of the e-mails; in fact, Opposer is not licensed to render insurance services in New York. Thus "the opportunity for more than even initial interest confusion is extremely limited." Therefore the Board found this evidence to be of "limited probative value."

The Board also found no intent on the part of Applicant to trade on the good will of Opposer, and concluded that the services involved would be purchased with some degree of care.

Balancing the du Pont factors, the TTAB ruled that the marks used with insurance services are likely to cause confusion, but not the others. Therefore, it sustained three oppositions in part (as to the class 36 services) and dismissed as to the three banking services applications.

TTABlog follow-up: On September 9, 2008, the CAFC affirmed the TTAB's decision, without opinion (here).

Text Copyright John L. Welch 2007.


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