Continuing with WYHA? Week (TM) …. The Board affirmed a Section 2(d) refusal of the mark OPTIMUM BENEFITS PACKAGE for “insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance” [BENEFITS PACKAGE disclaimed], finding the mark likely to cause confusion with the registered mark OPTIMUM for “underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services.” Applicant argued that Examining Attorney Howard Smiga improperly focused on the word OPTIMUM while discounting the significance of BENEFITS PACKAGE. The Board disagreed. In re John M. Fickewirth Associates Insurance Services, Inc., Serial No. 87026036 (August 15, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).
The Services: both the application and the cited registration encompass life insurance underwriting and brokerage, and are therefore the involved services are identical in part.
Trade Channels and Purchasers: Since there are no restrictions in the application or cited registration, the Board must presume that the involved services, to the extent they overlap, travel in the same channels of trade to the same classes of consumers.
The Marks: The only difference between the marks is the inclusion of the disclaimed phrase BENEFITS PACKAGE in applicant’s mark. Applicant contended that the examining attorney’s analysis was faulty and that the addition of BENEFITS PACKAGE suffices to distinguish the marks. Not so, said the Board. There is nothing wrong in giving more weight to a particular feature of a mark, provided that the ultimate conclusion rests on a consideration of the marks in their entireties. The disclaimed term is less likely to make an impact on the minds of consumers.
The Board noted that likelihood of confusion has often been found when the applicant’s mark incorporates the cited mark. Moreover, the first part of a mark is the part most likely to be remembered by consumers when making their purchasing decisions. And the degree of similarity between marks needed to support a finding of likely confusion is diminished where, as here, the involved services are in part identical.
The Board concluded that the marks are substantially similar.
Decision: The Board found confusion likely and so it affirmed the refusal.
Read comments and post your comment here.
TTABlog comment: Would you have?
Text Copyright John L. Welch 2018.