Thursday, January 07, 2010

Precedential No. 1: TTAB Yawningly Affirms 2(d) Refusal of "MAX & Design" Over "MAX" for Overlapping Insurance Services

The first precedential decision of 2010 presents this question: Why is this decision precedential? The Board affirmed a Section 2(d) refusal to register the mark MAX & Design for various insurance services, including "writing property and casualty insurance," finding it likely to cause confusion with the registered mark MAX for "underwriting of property and casualty insurance." In re Max Capital Group Ltd., 93 USPQ2d 1243 (TTAB 2010) [precedential].

The Board began by observing that the legally identical nature of the services involved was a factor weighing "heavily" in favor of a finding of likely confusion.

What about the marks? A "major issue" was the strength of the cited mark. Applicant tried to to show that the registered mark is weak by submitting numerous third-party registrations and third-party Internet uses of MAX marks. However, the Board pointed out that the registrations "do not prove that the marks depicted therein are in use." The Internet evidence was mostly "unhelpful," being duplicative or displaying names the included "Maximum" rather than "Max," Many pages referred to people with the given name "Max," and others involved different business fields.

The Board chastised Applicant for its submission of redundant and nonprobative materials: "it is important that applicants and examining attorneys carefully consider the materials retrieved by their internet searches and make a judicious submission of the results." Moreover, Applicant failed to point out in its brief "the specific Internet evidence that it believes is most probative."

The Board did acknowledge that Applicant's evidence contained a few instances in which MAX is used in connection with insurance services, but these uses also included "other strong identifying elements." [E.g., H-E-B Max Pet Insurance].

Based on the third-party registrations and a dictionary definition of "max," the Board concluded that MAX has a suggestive meaning, and therefore the cited registration is not entitled to a broad scope of protection.

As for the evidence of third-party use, the evidence is insufficient for us to find that consumers are so used to seeing marks containing the word MAX for insurance services of the types identified in applicant’s application and the cited registration that, when a design element (as opposed to a house mark or additional word or company name) is added to the word MAX, consumers will look to the design element to distinguish the marks.

Applicant loftily contended that its mark suggests "longevity, stability, and reliability, along with intellectual prestige associated with classical architecture and culture," while the cited mark is merely an acronym for the name of the registrant, "Mutual Aid Exchange." The Board was not impressed.

The Board found that the MAX portion is dominant in Applicant's mark and is entitled to greater weight, opining that "the column design is not so unusual that consumers would find it an arresting or eye-catching feature."

Finally, the Board noted that purchasers of insurance are careful, but here "the marks are so similar that even careful consumers who note the design element in applicant's mark are likely to believe ... that the mark is a variation of the registrant's mark, identifying insurance services that emanate from the same source."

And so the Board affirmed the refusal.

TTABlog comment: I find this decision to be run-of-the-mill and in no way surprising. Consequently, I don't think it's worthy of the elevated status of "precedential." What do you think?

Text Copyright John L. Welch 2010.


At 10:12 AM, Anonymous Alex said...

You said "The Board chastised Applicant for its submission of redundant and nonprobative materials." I think that's why the Board wanted to publish this opinion - to spread that message. Maybe the Board feels it is getting too many frivolous appeals?

At 12:20 PM, Anonymous Dave said...

I have in mind to cite this case to an Examining Attorney who has filled a record with redundant and non-probative articles he found in an Internet search.

At 12:09 PM, Anonymous Anonymous said...

Has ANY Precedential decision of the TTAB been reversed on Federal Appeal??


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