Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal
In a 63-page decision, the Board dismissed a Section 2(d) opposition to registration of the mark BENCHMARK RELIANCE for the "issuance and administration of annuities," finding it not likely to cause confusion with the registered mark RELIANCE STANDARD for insurance underwriting and issuing and administering annuities. Despite a partial overlap in the involved services, the Board was persuaded to rule in Applicant's favor by the high degree of care exercised by consumers, the lack of any reported instances of confusion, and the differences in the marks. But the Board denied Applicant's counterclaim for fraud predicated on false statements made by Opposer to the USPTO to overcome a refusal to register. Reliance Standard Life Insurance Company v. American National Insurance Company, Opposition No. 91178996 (April 30, 2012) [not precedential].
Fraud counterclaim: During prosecution of its application to register RELIANCE STANDARD, Opposer sought to overcome a Section 2(d) refusal by stating that it offered its annuity services to employers. But it failed to state that it also sells annuities to individuals through independent agents and brokers. In short, Opposer told a "half-truth."
Opposer did not contest the fact that it knew it rendered its annuity services to individuals. Although the false statements at issue were attorney argument, a client is bound by the actions of its attorney. In any case, Opposer's officer advised counsel in preparing the argument.
The statements were material because they formed "the basis of opposer's contention that its services and the services in the cited registration move in different channels of trade and are sold to different classes of consumers." The false statements "presumably led the examining attorney to withdraw the likelihood of confusion refusal and approve opposer's application for publication."
The Board, however, had doubts as to whether Opposer intended to deceive the PTO. Although "our experience tells us that opposer intended to mislead the examining attorney" by its statements, Opposer did submit a specimen of use that stated that it "offers a complete portfolio of fixed rate annuity products to individuals." The Board must presume that the Examining Attorney was aware of that statement in the specimen of use. Consequently the Board could not "logically find that there was a willful withholding of facts which, if transmitted and disclosed to the examining attorney, would have resulted in the disallowance of the registration sought by opposer." In short, Applicant failed to prove fraud by clear and convincing evidence.
Likelihood of confusion: Opposer attempted to rely on its common law rights in the stand-alone mark RELIANCE, but it failed to meet its burden to prove priority of use. The Board then focused on Opposer's registered mark RELIANCE STANDARD.
The Board found that, based on the nature of an annuity, the personal interaction between the buyer and seller, and the cost of the premium, annuities are purchased "only after careful consideration by the relevant consumers with specific consideration give to the identity and reputation of the annuity underwriter."
The involved marks have been in concurrent uses for nearly seven years for individual annuity services sold in the same channels of trade to the same classes of consumers. The sales and marketing expenditures of the two companies was "substantial enough" for the Board to concluded that there has been a reasonably opportunity for confusion to have occurred. The lack of actual confusion therefore weighed in Applicant's favor.
Finally, as to the marks, the Board found that, despite the fact that the marks have similar meanings and engender similar commercial impressions, the differences in the marks outweigh their similarities. In sum, the Board found the marks "not similar."
Balancing the du Pont factors, the Board ruled that there is no likelihood of confusion between the marks at issue.
TTABlog comment: Note that even if Opposer's registration had been cancelled, it still had common law rights in the RELIANCE STANDARD mark.
Text Copyright John L. Welch 2012.