As we know, when the involved services are identical, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion. The parties agreed that the term LINCOLN, opposer’s house mark, is arbitrary, but they disagreed “on the effect of this element on Opposer’s mark as a whole.”
Lincoln provided evidence regarding its revenues and advertising expenditures. There was no evidence of third-party use of marks containing “TERM” and “ACCEL,” but the Board found the evidence insufficient to allow a finding as to commercial strength of Lincoln’s mark, and so the Board considered this factor neutral.
As to conceptual strength, both parties agreed that “TERM” may refer to “term life insurance,” but they disagreed on the meaning of “ACCEL” in the life insurance field. However, there was evidence of life insurance policies referring to provisions that may “Accelerate” their “Term.” such as “Accelerated Death Benefit for Chronic Condition.” And so the Board found that LINCOLN TERMACCEL is “suggestive of life insurance policies that may include term acceleration provisions.” Nevertheless, Lincoln’s mark is inherently distinctive and entitled to a normal scope of protection.
Opposer Lincoln argued that Applicant Kansas City merely transpose the elements “TERM” and “EXCEL” and omitted the house mark. [That begs the question, doesn’t it? ed.]. Kansas City argued that LINCOLN is the dominant portion of opposer’s mark.
The Board concluded that the order of the words “TERM” and “ACCEL” does not affect the meaning of the combined term: the suggestion of an acceleration provision on the term of a policy. “In this regard, Applicant’s ACCELETERM gives a very similar commercial impression to Opposer’s LINCOLN TERMACCEL, as applied to life insurance services.”
Board precedent dictates that the addition of a house mark (LINCOLN) does not necessarily avoid a likelihood of confusion. Instead, the Board found that “consumers are likely to perceive Applicant’s mark as a variant on LINCOLN TERMACCEL.”
The Board concluded that the similarities in connotation and commercial impression outweigh the differences in sight and sound. And so the first du Pont favored Lincoln.
Kansas City contended that purchasers of life insurance will exercise care in buying insurance policies that are a “fairly substantial investment.” The Board agreed that, in light of the cost and long-term commitment involved, consumers are likely to exercise “a somewhat heightened level of care,” and it found that this fourth du Pont factor weighed “somewhat against a finding of likelihood of confusion.”
Balancing the relevant factors, the Board concluded that the purchaser care factor was outweighed by the use of similar marks on identical services, and so the Board sustained the opposition.
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Text Copyright John L. Welch 2019.