Tuesday, March 22, 2011

TTAB Sustains 2(d) Opposition to LIFE FOR THE LIVING over LIFE INSURANCE FOR LIVING, Rejects Genericness and Abandonment Counterclaims

In a 43-page decision, the Board sustained a Section 2(d) opposition to registration of the mark LIFE FOR THE LIVING for "insurance agency services in the field of life insurance," finding it likely to cause confusion with the registered mark LIFE INSURANCE FOR LIVING for "universal life insurance underwriting that prepays the death benefit for long-term care." The Board found no evidence supporting Applicant LifeVentures Corp.'s affirmative defense of genericness, and Applicant's abandonment defense likewise kicked the TTABucket. Lincoln National Life Insurance Company v. LifeVentures Corp., Opposition No. 91179205 (March 14, 2011) [not precedential].

Evidentiary issues: The Board first dealt with several procedural/evidentiary issues. It chastised the parties for their over-designation of material as confidential, and decided to treat as confidential "only testimony and evidence that we find to be truly confidential and commercially sensitive." It then dealt with a number of objections to Applicant's Notice of Reliance, overruling various objections to Internet webpages and official publications, and sustaining objections to several documents that did not meet the Safer requirements [Internet documents are admissible via notice of reliance if they include a date and URL].

Genericness: Judge Bergsman, in trademark fashion, systematically plowed through Applicant's proofs of genericness, concluding that "[t]here is simply no evidence demonstrating that the term LIFE INSURANCE FOR THE LIVING is perceived as a generic term for life insurance underwriting services."

Based on the evidence before us, we find that the term LIFE INSURANCE FOR LIVING is suggestive when used in connection with “universal life insurance underwriting that prepays the death benefit for long-term care” because the mark is incongruous and, therefore, it takes a multiple-step reasoning process to make the connection between the services and the mark. The mark LIFE INSURANCE FOR LIVING is incongruous because life insurance is not for living; it provides a death benefit for the insured’s survivors. As demonstrated by opposer’s use of the mark, applicant’s use of its mark, and the third party use of the mark, or similar terms, LIFE INSURANCE FOR LIVING suggests that a life insurance policy may do more than just pay a death benefit; it may have benefits during the owner’s life, hence, LIFE INSURANCE FOR LIVING.

Abandonment: Applicant contended that Opposer had abandoned its mark because the use of the mark "is so limited that it does not function as a trademark and ... its limited use is not consistent with the ordinary course of trade." The Board did not buy it.

The problem with applicant’s argument is that it is based on the mistaken premise that the bona fide commercial use of a mark is based on the effectiveness of opposer’s use, on some unspecified minimum quantity of use, or on a comparison with how opposer uses other marks or advertising materials. As indicated above, we must determine whether opposer’s use of its mark is a legitimate commercial use in the ordinary course of business. There is nothing in applicant’s evidentiary showing that persuades us that opposer’s use of LIFE INSURANCE FOR LIVING in the Client Program Guide is anything other than a legitimate commercial use. There is no minimum quantity of use so long as the use is legitimate commercial use.

The Board concluded that "applicant has failed to prove that there has ... been any [nonuse] of the mark by opposer, let alone nonuse of the mark for three consecutive years."

Likelihood of confusion: Opposer contended that its mark is famous based on sales and advertising figures and use since 1997. However, the Board noted that the mark has always been used as a "secondary mark" in connection with Opposer's "MoneyGuard" service mark. That was the death knell for the fame argument.

As to the marks, the Board found them to be similar in appearance, sound, meaning and commercial impression: they share the same structure and both "suggest life insurance policies providing living benefits."

As to the services, the Board concluded that "the conditions and activities surrounding marketing of life insurance agency services and underwriting universal life insurance policies are such that they would be or could be encountered by the same persons under circumstances that could ... give rise to the mistaken belief that they originate from or are in some way associated with the same source."

Finally, although purchasers of the services "are likely to be well-to-do and will exercise a high degree of care," the Board observed once again that "even sophisticated consumers are not immune to trademark confusion especially, where as here, the marks are similar and the services are related."

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.


Post a Comment

<< Home