By Cheryl Beise, J.D.
Despite the similarity of the parties’ services, confusion was unlikely because the commercial impression of the marks was not similar, the relevant purchasers were sophisticated, and there was no actual confusion.
The Trademark Trial and Appeal Board did not err in concluding that consumers were not likely to confuse insurance services sold under the registered mark BANKERS LIFE and the applied-for marks LIBERTY BANKERS LIFE INSURANCE COMPANY and design and LIBERTY BANKERS LIFE THE CAPITOL LIFE and design, the U.S. Court of Appeals for the Federal Circuit has held. Substantial evidence supported the Board’s finding that despite the similarity of the services and trade channels, confusion was not likely because purchasers of the parties’ insurance services were discriminating; there was no evidence of actual confusion despite a long period of concurrent use; and the parties’ marks conveyed different overall commercial impressions due to the additions of the word "Liberty" and a stylized American flag in the applicants’ marks (CDOC, Inc. v. Liberty Bankers Life Insurance Co., February 23, 2021, Chen, R.).
CDOC, Inc., owns the registered mark BANKERS LIFE, in standard characters, for use in connection with insurance underwriting services in International Class 36. The BANKERS LIFE mark was registered in 1970 and currently is used by CDOC’s wholly owned subsidiary, Bankers Life and Casualty Company.
In May 2017, Liberty Bankers Life Insurance Company and The Capitol Life Insurance Company (collectively, "Liberty") filed applications to register two marks for use in connection with underwriting and administration of life insurance, health insurance, and annuities in International Class 36: LIBERTY BANKERS LIFE THE CAPITOL LIFE and design and LIBERTY BANKERS LIFE INSURANCE COMPANY and design. CDOC filed oppositions to both applications on the ground of likelihood of confusion with its BANKERS LIFE mark. The Trademark Trial and Appeal Board dismissed the oppositions, concluding that consumer confusion was not likely. CDOC appealed.
On appeal, CDOC challenged the Board’s findings regarding the (1) dissimilarity of the marks, (2) conditions under which sales are made and buyers to whom such sales are made, and (3) length of time during which there has been concurrent use of the marks without evidence of actual confusion. The Federal Circuit evaluated the Board’s factual finding relating to the relevant DuPont likelihood of confusion factors for substantial evidence.
Similarity of marks. The Board determined that "Liberty Bankers Life" was the dominant element of Liberty’s marks. In each mark, the "Liberty Bankers Life" literal portion was placed above and separated from the "Insurance Company" and "The Capitol Life" portions. To the right of both marks was a square image of a waving American flag. The Board observed that "the stylized design of the American flag reinforces or highlights the word ‘Liberty’ by engendering the commercial impression of freedom, thereby implying financial freedom or freedom from a financial problem." Based on the additions of the word "Liberty" and the stylized American flag, the Board concluded that the parties’ marks conveyed different appearances, wording, and commercial impressions.
CDOC argued that the Board ignored its own determination that CDOC’s BANKERS LIFE mark was strong when assessing the similarity of the marks at issue. The Federal Circuit disagreed. In this portion of its opinion, the Board was not evaluating the strength of CDOC’s mark but instead was specifically analyzing the "Bankers Life" portion of Liberty’s overall marks. Given the multiple elements of Liberty’s marks, it was appropriate for the Board to weigh the marks’ different portions when assessing similarity, the court said. The Board also reasonably found that Liberty’s marks, in their entireties, conveyed a comparatively different meaning related to freedom and liberty, and thus created a different commercial impression than CDOC’s registered mark.
Purchaser sophistication. The Board determined that purchasers of the parties’ insurance products were sophisticated, making confusion unlikely. DOC contended that the Board did not properly consider all potential customers of the insurance services offered by the parties or the nature of the services themselves.
The Federal Circuit was not persuaded. The Board observed that life and health insurance and annuities purchases are "unusual and complex" and made with "care and deliberation" after researching the products and "underwriters to some degree." The Board explained that potential customers typically learned about Liberty’s products through an agent, as the company generally did not use advertising. Additionally, the agent sales presentations often occurred in a customer’s home or over the phone and were "tailored to the customer and the product." To market its services, CDOC also employed sales agents and disseminated personalized advertisements to customers. The court found that substantial evidence supported the Board’s determination that the appropriate customer standard was the discriminating purchaser standard.
Actual confusion. The Board determined that the conditions of sale factor weighed against finding a likelihood of confusion. On appeal, CDOC argued that record did not establish there was a reasonable opportunity for actual confusion to have occurred. According to CDOC, a likelihood of confusion arose only after Liberty entered the Medicare supplement insurance market in 2016. Prior to 2016, there was very little competition or overlap between the parties’ insurance offerings.
The Board, however, found that while Liberty did not start selling Medicare supplement insurance until 2016, Liberty began using the marks in connection with the sale of life insurance and annuities in September 2007. CDOC also sold life insurance and annuities during this time period, and targeted the same consumers. Both parties employed over 15,000 agents, selling services throughout the United States. Despite both the parties’ significant marketing and sales in the insurance and annuities industries, there was not one reported case by any agent of actual confusion. The Federal Circuit determined that the absence of actual confusion, despite offering similar products to the same customers in overlapping markets over a long period of time, supported the Board’s finding that this factor weighed against finding a likelihood of confusion.
The Federal Circuit affirmed the Board’s dismissal of CDOC’s oppositions to registration of Liberty’s marks.
This case is No. 20-1643.
Attorneys: Edward C. Flynn (Eckert Seamans Cherin & Mellott LLC) for CDOC, Inc. Timothy J. Zarley (Zarley Law Firm, PLC) for Liberty Bankers Life Insurance Co. and The Capitol Life Insurance Co.
Companies: CDOC, Inc.; Liberty Bankers Life Insurance Co.; The Capitol Life Insurance Co.
MainStory: TopStory Trademark FedCirNews GCNNews
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