The opinion
THIS OPINION
IS CITABLE AS
PRECEDENT OF
THE TTAB
Hearing:
February 25, 20051
Mailed: October 21, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
First Niagara Insurance Brokers, Inc.
v.
First Niagara Financial Group, Inc.2
_______
Opposition Nos. 91122072, 91122224, 91122193, 91122450,
91122712, 911502373
_______
George Gottlieb and Barbara Loewenthal of Gottlieb, Rackman
& Reisman for First Niagara Insurance Brokers, Inc.
Paul I. Perlman and David L. Principe of Hodgson Rush for
Niagara Bancorp.
_______
Before Sams, Walters and Walsh, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
1
The oral hearing, which was held in New York City during a Practising
Law Institute program, was held before Judges Sams and Walters, with the
oral consent of the parties’ attorneys. An audiotape of the hearing was
available to the third panel member herein, Judge Walsh.
2
The heading has been changed to reflect applicant’s change of name
from Niagara Bancorp, Inc. The name change was executed on May 12,
2000, and was recorded at the USPTO on July 24, 2000.
3
These six oppositions were consolidated by the Board’s order of June
12, 2002, addressing the parties’ stipulated motion to consolidate,
filed March 7, 2002.
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
First Niagara Insurance Brokers, Inc. filed its
opposition to the applications of First Niagara Financial
Group, Inc. listed below.
Application No. 75890902
Opposition No. 91122072
Mark: FIRST NIAGARA
Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance services,
namely, insurance brokerage, insurance
agencies, insurance administration and
insurance consultation, in the fields of
life, property and casualty, accident, health
and other insurance; credit insurance
services; financial services, namely,
financial and investment consulting,
management and advisory services; investment
and securities brokerage services; providing
information on investment and securities
performance; annuities services; charitable
fund raising services
IC 037: leasing of construction equipment and
building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST
Application No. 75891547
Opposition No. 91122224
Mark: FIRST NIAGARA FINANCIAL GROUP
Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance services,
namely, insurance brokerage, insurance
agencies, insurance administration and
insurance consultation, in the fields of
life, property and casualty, accident, health
and other insurance; credit insurance
services; financial services, namely,
financial and investment consulting,
management and advisory services; investment
and securities brokerage services; providing
information on investment and securities
performance; annuities services; charitable
fund raising services
2
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
IC 037: leasing of construction equipment and
building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST and FINANCIAL GROUP
Application No. 75890903
Opposition No. 91122193
Mark:
Services:
IC 035: leasing of office equipment
IC 036: banking services; insurance services,
namely, insurance brokerage, insurance agencies,
insurance administration and insurance
consultation, in the fields of life, property and
casualty, accident, health and other insurance;
credit insurance services; financial services,
namely, financial and investment consulting,
management and advisory services; investment and
securities brokerage services; providing
information on investment and securities
performance; annuities services; charitable fund
raising services
IC 037: leasing of construction equipment and
building machinery
IC 039: leasing of motor vehicles
Filing Date: January 7, 2000
Basis: 1b
Disclaimer: FIRST
Application No. 76004229
Opposition No. 91122450
Mark: FIRST NIAGARA ONLINE
Services:
IC 036: banking services, namely, providing
electronic banking services to customers via
a global computer network
Filing Date: March 20, 2000
Basis: 1b
3
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Disclaimer: ONLINE
Application No. 76029614
Opposition No. 91122712
Mark: FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE
Services:
IC 036: retail banking services
Filing Date: April 18, 2000
Basis: 1b
Disclaimer: BANK’S and LINE
Application No. 76005479
Opposition No. 91150237
Mark: FIRST NIAGARA E-CD
Services:
IC 036: banking services, namely, providing
electronic banking services to customers via a
global computer network
Filing Date: March 20, 2000
Basis: 1b
Disclaimer: E-CD
As grounds for opposition, opposer asserts that
applicant’s marks, when applied to applicant’s services, so
resemble opposer’s previously used marks FIRST NIAGARA and
FIRST NIAGARA INSURANCE BROKERS, in standard character
format, and FIRST NIAGARA INSURANCE BROKER’S INC., in the
design format shown below, for “insurance brokerage services
and other financial services” (notice of opposition,
paragraph no. 1) as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
4
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Applicant, in each of its answers, denies the salient
allegations of the claim and asserts as an affirmative
defense that “opposer has not ‘used’ FIRST NIAGARA, FIRST
NIAGARA INSURANCE BROKERS, FIRST NIAGARA INSURANCE BROKERS,
INC. & design or FIRST NIAGARA INSURANCE BROKERS, INC. in
commerce as that term is used in 15 U.S.C. §1127 or related
statutes and common law” (answer, paragraph 10). In
Opposition No. 91122072 only, pertaining to the standard
character mark FIRST NIAGARA, applicant admitted that “to
the extent that opposer uses FIRST NIAGARA as a trademark,
FIRST NIAGARA is identical to” the mark FIRST NIAGARA that
applicant seeks to register.
The Record
The record consists of the pleadings; the files of the
involved applications; and both parties have made evidence
of record by notices of reliance and testimonial
depositions, with accompanying exhibits. Both parties filed
briefs on the case4 and an oral hearing was held.
Opposer
Based on the evidence of record, we make the following
findings of fact with respect to opposer. Opposer is a
4
Both parties filed consented motions to submit briefs that exceeded
the page limits set forth in 37 CFR §2.128(b), arguing that it is
warranted by the size of the record and the number of proceedings
consolidated. These motions were granted by the Board due to the
compelling circumstances of this consolidated proceeding. We hasten to
point out that the instances in which the Board will grant such motions,
whether or not consented to by the other party, are extremely limited.
5
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Canadian insurance brokerage agency5 with offices, employees
and assets in two locations in Ontario, Canada: Niagara
Falls and Niagara-on-the-Lake. Opposer adopted its present
name in 1984 and has used it continuously from that date as
a mark in connection with its insurance services.6 Opposer
is licensed in Ontario and acknowledges that “it initiates
all of its brokerage services in Canada” (reply brief, p.
8); and that it is not licensed in any state in the United
States, any other province in Canada, or any other country
to provide insurance brokerage services. Opposer has no
property, offices or employees in the United States, nor
does it pay any United States or individual state taxes.
Opposer operates a website that includes information
about its history, business and employees. An Internet user
cannot purchase insurance, make payments on a policy, or
access information about a specific account through this
website. An Internet user can click on a broker’s name on
the website to bring up an email screen to send an email to
that broker. Opposer’s web address is firstniagara.com,
whereas applicant’s web address is first-niagara.com.
5
To a lesser extent, opposer also offers financial services in the form
of insurance premium payment plans, segregated funds and annuities.
6
In 1973, one of opposer’s present principals, Mr. Wayne Arthur “Bart”
Maves, purchased the business, operating since 1886, and, as noted,
changed the name in 1984 to First Niagara Insurance Brokers Inc.
6
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Opposer received, at the time of trial, approximately six to
ten e-mails per day intended for applicant.7
Opposer brokers insurance that is actually issued by
underwriting companies. The types of insurance opposer
brokers include commercial insurance, municipal insurance,
athletic bonus insurance, home insurance, boat/yacht
insurance, life insurance, broadcast liability insurance, as
well as travel, health travel, and travel insurance for
individuals living in Canada for travel both within and
outside of Canada, including to the United States.8
Processing claims for these policies is a large part of
opposer’s business. Claims processed may involve incidents
occurring in the United States or incidents involving U.S.
citizens in Canada.
Most of opposer’s clients are Canadian individuals or
companies and its policies cover real property located in
Canada and personal or commercial property registered or
located in Canada or in transit. One of opposer’s
principals, Michael Maves, stated that opposer also has
clients in the United States, United Kingdom, Azores,
7
Applicant contacted opposer soon after opposer obtained its web
address in 2000 and several times thereafter in an attempt to purchase
the web address from opposer.
8
By Canadian law or regulation, opposer’s health travel insurance may
be issued only to Canadian residents who are covered by Canadian
provincial medical insurance; further, to obtain an annual travel health
policy, the insured must reside in Canada for a prescribed period of
time. Opposer issues between thirty and seventy travel health policies
per year.
7
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Luxembourg, Germany, Japan and Australia; however, there is
no evidence as to whether these clients are Canadians or the
nature of the clients’ business or insurance with opposer.
Opposer has provided evidence of several situations where
Canadian insurance coverage extends to incidents in, or
otherwise involves, the United States, which are noted
below.9 The underwriters used by opposer include Canadian,
U.S., and/or international companies, often through Canadian
branch offices.
Opposer provided testimony and evidence about the
insurance policies of several of its commercial and
individual clients. Some of this evidence pertains to
policies issued many years ago. However, the testimony of
Bart and Michael Maves confirms that many of these policies
have been renewed continuously to the time of the respective
depositions.
Opposer works with several U.S. brokerage agencies,
which are not licensed in Canada, that have U.S. clients
with property located in Canada. The U.S. broker contacts
opposer, who puts together an insurance proposal from an
underwriter and sends it to the U.S. broker. The U.S.
9
Opposer provided specific evidence about Mr. Bart Maves’ involvement
in a fraternal organization, the Kentucky Colonels, with headquarters in
Kentucky. Clearly, this is irrelevant to opposer’s business except to
the extent that opposer issued travel or other liability insurance to
the local Ontario chapter of this organization. Also, evidence of Mr.
Bart Maves’ personal involvement in and sponsorship of a golf tournament
in the United States is not relevant to the issue of whether opposer’s
services are rendered in commerce.
8
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
broker will review the policy with its client and obtain
required signatures. It appears from the record that
opposer will share its commission with the U.S. broker, but
it is not clear under what circumstances. To obtain
liability insurance for its Canadian travel and tour
business clients that take tourists to the United States,
opposer works with a U.S. insurance brokerage agency that is
authorized by the National Tourism Association, an
organization located in the United States, to broker
liability policies to its members.
Opposer has brokered life insurance policies to a few
Canadian residents in Canada who subsequently moved to
various states within the United States and maintained their
Canadian life insurance policies. Opposer has brokered
homeowners insurance for individuals living in various
states within the United States,10 for property located in
Ontario, Canada. The individual client files submitted as
exhibits and the testimony of Mr. Michael Maves show that,
with respect to a client’s insured Canadian property, in
some cases opposer or the client in the United States
directed their correspondence through U.S. brokers in
geographic proximity to the client in the United States;
10
Several of the individuals so insured originally lived at the insured
Canadian property addresses when they obtained the insurance and
subsequently moved to the United States, but retained the Canadian
properties for rental or vacation use.
9
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
whereas in other cases it appears that opposer communicated
directly with its client in the United States.
Opposer has brokered “contingency” or “athletic bonus”
insurance for Bell Canada, a Canadian company, in connection
with its endorsement contract with a golfer, Michael Weir,
on the PGA Tour, although opposer noted that such
“insurance” is more a financial product than an insurance
product. Opposer obtained proposals from underwriters and
financial companies in the United States, Canada and the
United Kingdom, and Bell Canada chose a policy from SCA
Promotions, a Texas company.
Opposer brokers both individual and commercial Canadian
auto insurance policies on vehicles registered in Ontario,
Canada; however, such insurance covers incidents involving
the insured vehicles that occur in either Canada or the
United States and may include a rider extending coverage to
a client’s rental of cars in the United States and Canada.
The Province of Ontario regulates the coverage required by
auto policies.11
Similarly, opposer brokers boat/yacht insurance
policies. Most of the policies in the record are riders on
homeowner policies relating to Canadian property, while a
few are independent yacht policies. The record includes
11
If, in addition to commercial vehicle coverage for Ontario, a
business will be transporting goods into the United States, Mr. Michael
Maves stated that opposer will broker a second policy through a U.S.
underwriter for the travel in the United States.
10
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
copies of such policies issued to clients with addresses in
the United States. It is clear that at least some of the
insured boats/yachts are docked or stored in Canada.
Coverage extends to incidents involving, in most cases, the
boats or yachts on land or in the water in the territory
defined as “inland lakes and streams in North America” (M.
Maves Deposition, p. 391), which is limited by definition in
the policies to the United States and Canada.
Opposer brokers approximately 300 commercial liability
policies annually, which usually pertain to buildings and
their contents at specified locations. However, such
policies often contain riders covering, for example, goods
in transit. These policies generally extend coverage to
incidents arising while the goods are in transit in the
United States. For example, opposer submitted evidence of a
Canadian manufacturer, Automation Devices, for whom it has
brokered commercial general liability and auto liability
policies. Automation Devices designs, builds and installs
assembly lines for large factories. Automation Devices has
manufactured and installed equipment for U.S. companies. In
such a case, it sends its own workers to the site in the
United States to install the machinery. Automation Devices’
insurance covers liability arising from this work; however,
opposer has had to change underwriters for Automation
Devices at least once due to the underwriter’s unwillingness
11
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
to underwrite Automation Devices’ “U.S. exposure.”12
(Opposer’s Exhibit 21G.)
Another example wherein opposer has brokered commercial
liability insurance that extends to incidents occurring in
the United States involves Stewart Deliveries, a Canadian
delivery service whose trucks and drivers deliver materials
and commercial shipments to southern Ontario and to several
states in the United States. Stewart Deliveries’ trucks
carry certificates of insurance as required of common
carriers traveling through states in the United States, and,
upon a client’s request, opposer has faxed copies of such
certificates to, for example, the New Jersey Bureau of Motor
Carriers, for their records. An example of a claim
administered by opposer involved one of Stewart Deliveries’
trucks hitting and damaging a barrier on the New York State
Thruway in December 2001. The New York authority presented
its damage claim to Stewart Deliveries, who forwarded it to
opposer. Opposer forwarded the claim to the underwriter,
who dealt directly with the New York authority to settle the
claim.
Opposer has brokered a general commercial liability
policy, with coverage for goods shipped in transit and
stored off premises in Canada, for Dewgooders WeatherWear
12
Mr. Michael Maves stated that this was the result of post-9/11/01
changes and the new underwriter is Cross Border Underwriting Services in
Canada.
12
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Inc., a Canadian manufacturer of leisure outerwear and
waterproof rainwear. This coverage extends to finished
goods in transit to the United States.
Opposer has also brokered a general commercial
liability policy for the Niagara Historical Museum, in
Canada, including a fine arts rider to cover a special
exhibit from the United Kingdom and transit of the exhibit
to its next stop in South Carolina.
Opposer has brokered insurance from Canadian
underwriters for Canadian municipalities, including Niagara
Falls and Niagara-on-the-Lake, both located in Ontario.
This insurance includes coverage for injuries and other
damage incurred by tourists, including those from the United
States, while visiting these municipalities.
The Niagara Falls Bridge Commission (“NFBC”)13 owns and
operates three bridges between the United States and Canada.
These bridges also have businesses located on their
13
The Niagara Falls Bridge Commission was created in 1938 under a
joint resolution of the U.S. Congress, with corresponding legislation in
Canada. As amended, the U.S. law authorizes the Niagara Falls Bridge
Commission to build, maintain and operate bridges between the United
States and Canada, with each bridge being in part in the United States
and in part in Canada; and to charge tolls and issue bonds in connection
therewith. The law provides that, for the purpose of exemption from
taxes, “[t]he bridge constructed under the authority of this joint
resolution shall be deemed to be an instrumentality for international
commerce authorized by the Government of the United States” (Section 4).
A recent amendment to Section 6 of the Joint Resolution states: “(c)
TREATMENT OF COMMISSION – the Commission shall be deemed for purposes of
all Federal law to be a public agency or public authority of the State
of New York, notwithstanding any other provision of law.” The
Commission consists of four members appointed by the Governor of New
York and four members appointed by the Canadian government or the
government of Ontario.
13
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
premises. Opposer has issued commercial liability insurance
to businesses leasing this space. Additionally, opposer has
brokered a general commercial liability and auto liability
policy for the Indian Defense League of America, an
organization with a Canadian address, in connection with an
annual parade starting on one of the bridges operated by the
NFBC between the United States and Canada. The parade
begins in the middle of the bridge and continues into
Canada, ending at a park.
Wayne Arthur “Bart” Maves, opposer’s founder, stated
that in 1973 opposer’s gross premiums were approximately
$728,000; that today its gross premiums are approximately
$7,250,000; and that opposer’s annual advertising budget is
approximately $30,000, all in Canadian dollars. Opposer
advertises its services by word-of-mouth; in Internet phone
directories; in several local Ontario papers in Niagara and
Niagara-on-the-Lake; by advertising on a local Ontario radio
station that may be heard in the nearby United States; by
sponsoring local Ontario sports teams, some of whom play
games in the United States; and by distributing, in
opposer’s local Ontario area, various promotional items with
opposer’s marks upon them.
Applicant
Based on the evidence of record, we make the following
findings of fact with respect to applicant. Applicant’s
14
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
business includes banking, investment and related services
and, of most relevance herein, applicant is an insurance
brokerage agency licensed to do business as a resident in
New York State and as a non-resident in forty-five other
states. Applicant has never had offices in Canada.
Applicant’s insurance business is located in Northpointe,
New York; and applicant, in the past, has had offices in
Buffalo and Niagara Falls, New York, as well as several
other towns in western New York State. In January 1999,
applicant was acquired by Lockport Savings Bank; in November
2002, applicant changed its name from Warren Hoffman
Associates, Inc. to First Niagara Risk Management, Inc., for
which it obtained approval from the New York Department of
Insurance.
Applicant is licensed by the New York Department of
Insurance, a state government agency, to offer insurance
brokerage services in New York. The New York Department of
Insurance specifies the types of insurance applicant is
authorized to sell; requires annual license renewal for a
fee; and requires continuing education of license holders.
Applicant does not presently hold a non-resident license to
sell insurance in Ontario, Canada.
Applicant offers its insurance services primarily in
western New York state and the types of insurance it brokers
include the following: commercial property and casualty,
15
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
surety, employee benefits, life, accident and health
(personal and commercial), personal property and casualty,
including homeowners, auto, personal umbrella, watercraft,
and other recreational vehicles, and annuities. Applicant
admits that it has sold yacht insurance for yachts
registered in New York or another state, but not for yachts
registered in Canada, and that the yachts it insures may be
docked in either the United States or Canada. Additionally,
applicant admits that it has sold life and personal property
insurance policies to individuals who are residents, at the
time of the policy sale, of New York or another state, but
not to individuals who are residents only of Canada.
Applicant has sold real property insurance to residents
of Canada for property located in New York or another state,
but not for property located in Canada. (Response to
Opposer’s First Request for Admissions.) If a New York
resident policyholder changes his or her residence to
Canada, the policy, for example, life insurance, remains
valid and applicant communicates with the policyholder in
Canada. (Applicant’s Response to Opposer’s First Set of
Interrogatories.) Applicant admits that it offers these
services to persons resident outside of New York or in
Canada, but only in cooperation with insurance agents from
the respective state or Canada. Applicant also offers
financial services.
16
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
When applicant’s non-commercial U.S. customers want
insurance for a Canadian risk, such as a property located in
Canada, applicant refers them to a Canadian broker, who
writes the policy. Applicant does not write such policies
because there would be a premium tax to the customer if the
policy is not written by a Canadian insurance agency and,
further, applicant is not expert in Canadian insurance.
Applicant’s witness, John Hoffman, one of applicant’s
principals, stated that while it is rare, if circumstances
arose whereby a Canadian citizen sought to purchase a life
insurance policy from applicant, the customer would be
required to, at least, apply for and accept delivery of the
policy in New York state and pay the premium in New York
State in U.S. funds.
Mr. Hoffman confirmed that its various individual
personal, as well as corporate commercial, insurance
policies cover incidents occurring in either the United
States or Canada. In the few instances where applicant has
insured its U.S. commercial clients for projects or
manufacturing that have taken place in Canada, applicant has
used a Canadian broker and a Canadian underwriter, and has
not accepted a commission for the policy. Applicant could
only accept such a commission if it had a non-resident
license in Ontario, which it has not had for many years.
17
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Applicant belongs to a professional insurance
organization, Intersure, with approximately thirty members
in the United States, Canada and the United Kingdom, each
representing a specific geographic area. The organization
provides professional education and the members avail
themselves of the assistance and advice of other members
regarding insurance practice in different geographic areas.
Both applicant’s Mr. Hoffman and opposer’s Mr. Bart
Maves acknowledge that they met before this proceeding on
several occasions as part of various groups at golf clubs;
and that they each knew the other was involved in the
insurance business, although Mr. Hoffman stated that he did
not previously know the name of Mr. Maves’ business.
Applicant admitted, in its Response to Opposer’s First
Request for Admissions, that it knew of opposer’s Internet
domain name, firstniagara.com, at the time it adopted its
domain name, first-niagara.com. The record shows that, from
the time applicant changed its name to First Niagara,
opposer began receiving emails that were intended for
applicant; although Mr. Hoffman stated that applicant never
received emails intended for opposer. Applicant contacted
opposer seeking to purchase opposer’s domain name, but
opposer declined to sell it.
Opposer acknowledges that it advertises in printed
periodicals and on radio stations in Canada; applicant
18
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
acknowledges that it advertises in the same media in New
York; and both parties acknowledge that, given their
proximity to the United States/Canadian border, and their
proximity to each other, each of their respective
advertising likely spills over into the other’s country and
business area.
New York State Insurance Law
Opposer offered the trial deposition of Michael
Giordano, an attorney at the law firm of LeBoeuf Lamb in New
York City, as expert testimony on the subject of insurance
regulatory law.14 Mr. Giordano stated that any person or
entity acting as an insurance broker in New York State must
be licensed by the New York Department of Insurance. Mr.
Giordano stated that, based on this record and his
familiarity with New York state insurance law, opposer is
not licensed as either a resident or non-resident broker
under New York insurance law; opposer’s activities are not
in violation of New York insurance law; and opposer has not
acted as an insurance broker in New York.
The excerpts submitted by applicant from the laws of
the State of New York, Chapter 28, Insurance Law, make the
following points clear, broadly speaking:
14
While applicant’s attorney objected to Mr. Giordano’s being accepted
as an expert witness during the deposition, the objection was not
renewed in applicant’s brief. In fact, in its brief applicant referred
to Mr. Giordano as “opposer’s own insurance law expert.” Therefore, any
objection is deemed to have been waived.
19
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
• Insurance brokerage services of the type rendered by
the parties in this case would be considered “doing an
insurance business” (Article 11, Sec. 1101(b)(1));
• “Doing an insurance business” in the state of New York
requires licensure by the state insurance licensing
authority (id., Sec. 1102(a));
• If, at the time an insurance policy properly issued
outside the state, such policy covered subjects of
insurance or risk not resident or located in the state,
then subsequent “acts or transactions [regarding such
policies] … shall not constitute doing an insurance
business in this state” (i.e., the broker’s actions
shall not require licensure) (id., Sec. 1101(b)(2)(D));
and
• “Transactions with respect to policies of insurance on
risks located or resident within or without this state
… which policies are principally negotiated, issued and
delivered without this state in a jurisdiction in which
the insurer is authorized to do an insurance business”
shall not constitute doing an insurance business in the
state (id., Sec. 1101(b)(2)(E)).
The law includes specific prohibitions against doing an
insurance business in the state by a person or entity not
licensed by New York state (including persons or businesses
so licensed in another state or country but not in New
20
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
York); and provides specific jurisdiction in New York state
with provisions for service of process in actions against
unlicensed (in New York) persons or entities for claims
involving business conducted within the state. For
licensure, the law requires approval by the New York
Department of Insurance of the name under which a licensed
brokerage will do business. The law prohibits the licensure
of any broker “proposing to do business under a name
identical with, or so similar to as to be likely to deceive
or mislead the public, the name of any insurer then licensed
or authorized to do any kind of insurance business within
this state, or of any proposed domestic insurance
corporation” (id., Sec. 1102(g)(1)).
Analysis
Opposer, as plaintiff in this proceeding, has the
burden of establishing by a preponderance of the evidence
that it is the owner of the pleaded marks and that it has
priority such that it can prevail on its likelihood of
confusion claim. Sanyo Watch Co. v. Sanyo Electric Co.,
Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982).
That is, likelihood of confusion cannot be recognized where
one claimed to be aggrieved by that confusion does not have
a right superior to the opponent's right. Otto Roth & Co.,
Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981); and BellSouth Corp. v. Planum Technology Corp.,
21
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
14 USPQ2d 1555 (TTAB 1988).
Opposer did not plead or establish ownership of a
federal trademark registration for its asserted marks.
Applicant contends that opposer, a Canadian insurance
brokerage company, has not established any use of its mark
in connection with services rendered in commerce lawfully
regulated by Congress, as required under Section 45 of the
Trademark Act, 15 U.S.C. §1127. Applicant argues that
opposer has no offices in the United States; that it has no
state licenses to conduct insurance brokerage services in
any state in the United States; and that the facts are
insufficient to support a conclusion that opposer has used
its marks in connection with its services in commerce in or
with the United States.
Opposer contends that its services “carried out within
the various states and between the United States and Canada,
by the mails, telephone, fax and internet, are in both
interstate commerce and foreign commerce with the United
States [and] are thus rendered in commerce that Congress may
regulate” (brief, p. 3). Opposer argues that the insurance
policies that it places, the negotiating and settling of
claims related to covered activities, and engaging the
services of U.S. brokers “all profoundly affect commerce
both within the United States as well as commerce between
Canada and the United States” (brief, p. 32).
22
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Clearly, opposer’s claim of prior use can succeed only
if it has proveduse of its marks in connection with services
rendered in commerce lawfully regulated by Congress, as
required under Section 45 of the Trademark Act, 15 U.S.C.
§1127.15
We begin by noting that there is nothing in this record
upon which we can base a conclusion that, as applicant
contends, opposer has violated New York state law and,
therefore, that any services opposer may have rendered in
commerce were “unlawful.” Moreover, the Board will not
delve further into the insurance law and relevant precedent
of New York State to determine whether, as applicant
contends, any actions by opposer violate such provisions of
law so as to constitute “unlawful commerce.” Any specific
concerns applicant has in this regard should be brought
before the proper New York State authority.
There is no evidence or quoted provision of law in this
record that contradicts the aforementioned conclusions
stated by opposer’s insurance law expert, Mr. Giordano,
which applicant does not contest. Therefore, we begin our
analysis with the findings that opposer is not licensed as
either a resident or non-resident broker under New York
insurance law or any other state law (which opposer
15
An opposer claiming priority under Section 2(d) may rely on use that
is strictly intrastate and not regulable by Congress, but opposer here
is not relying on intrastate use.
23
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
acknowledges), and opposer has not acted as an insurance
broker in New York or in any other state in the United
States. However, we do not, as applicant would urge us to
do, end our inquiry here. State insurance law is relevant
to the question of opposer’s rendering of services in
commerce, but it is far from determinative of federal
trademark rights. We must consider all of the relevant
facts and law to determine whether opposer has established
that it renders insurance brokerage services under its
pleaded marks in commerce regulable by Congress.
Section 45 of the Trademark Act (15 U.S.C. §1127)
includes the following definitions of “commerce” and “use in
commerce”:
Commerce. The word “commerce” means all commerce
which may lawfully be regulated by Congress.
Use in commerce. The term “use in commerce” means
the bona fide use of a mark in the ordinary course
of trade, and not made merely to reserve a right
in a mark. For purposes of this Act, a mark shall
be deemed to be in use in commerce—
. . .
(2) on services when it is used or displayed in
the sale or advertising of services and the
services are rendered in commerce, or the services
are rendered in more than one State or in the
United States and a foreign country and the person
rendering the services is engaged in commerce in
connection with the services.
“Commerce” under the Trademark Act is coterminous with
that commerce that Congress may regulate under the Commerce
24
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Clause of the United States Constitution.16 International
Bancorp, L.L.C. v. Societe des Bains de Met et du Cercie des
Etrangers Monaco, 329 F.3d 359, 66 USPQ2d 1705 (4th Cir.
2003). See also, United We Stand America, Inc. v. United We
Stand, America, NY, Inc., 128 F.3d 86, 92-93, 44 USPQ2d 1351
(2nd Cir. 1997); and Planetary Motion v. Techsplosion, 261
F.3d 1188, 1194, 59 USPQ2d 1894 (11th Cir. 2001). The case
before us is analogous to the case of Buti Fashion World
Company v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d
1985 (2nd Cir. 1998), wherein the Court stated the following
about the scope of “commerce” as defined by the Trademark
Act:
In the trademark context, the limits of Congress's
Commerce Clause authority are manifested by the
cases that define the extraterritorial reach of
the Lanham Act. . . . [W]e are concerned here not
with the extraterritorial force of our trademark
laws to regulate or redress the conduct of a
foreign citizen in a foreign land, but with the
ability of that foreign citizen to gain the
protection of our trademark laws, and the degree
of interaction with our nation's commerce that is
required of him to receive that protection.
It is well established that prior use of a mark in a
foreign country does not entitle its owner to claim
exclusive rights in the United States as against one who
used a similar mark in the United States prior to entry of
the foreigner into the United States market. Person's Co.
16
“The Congress shall have Power ... to regulate Commerce with foreign
nations, and among the several States, and with the Indian Tribes[.]”
U.S. Const. art. I, §8, cl. 3.
25
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed.
Cir. 1990). Thus, opposer’s insurance brokerage services
rendered under its mark in Canada are clearly insufficient
to establish use of the mark in connection with services
rendered in commerce under the Trademark Act.
Similarly, advertising and promotion of a mark in
connection with goods or services marketed in a foreign
country (whether the advertising occurs inside or outside
the United States) creates no priority rights in said mark
in the United States as against one who, in good faith, has
adopted the same or similar mark for the same or similar
goods or services in the United States prior to the
foreigner's first use of the mark on goods or services sold
and/or offered in the United States, at least unless it can
be shown that the foreign party's mark was, at the time of
the adoption and first use of a similar mark by the first
user in the United States, a "famous" mark. Mother's
Restaurants Inc. v. Mother's Other Kitchen, Inc., 218 USPQ
1046, 1048 (TTAB 1983). See also Linville v. Rivard, 41
USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d
1374 (Fed. Cir. 1998); Buti Fashion World Company
v. Impressa Perosa S.R.L., supra; All English Lawn Tennis
Club (Wimbledon) Ltd. v. Creations Aromatiques, Inc., 220
USPQ 1069 (TTAB 1983); and Vaudable v. Montmartre, Inc., 123
USPQ 357 (NY Sup. Ct. 1959).
26
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Opposer does not rely solely on advertising and
promotion in the United States. Further, opposer’s
advertising is clearly directed to Canadian purchasers. Any
spillover advertising is minimal and insufficient to
establish that opposer renders its services in commerce
under its marks. To the extent opposer is arguing that
applicant acted in bad faith in adopting its mark,
applicant’s prior knowledge of the existence of opposer’s
marks is not, in itself, sufficient to constitute bad faith.
See Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989). Knowledge of a
foreign use does not preclude good faith adoption and use in
the United States. Person's Co. Ltd. v. Christman, supra.
A finding of bad faith is warranted where (1) the foreign
mark is famous in the United States or (2) the use is a
nominal one made solely to block the prior foreign user's
planned expansion into the United States. There is no
evidence that opposer’s mark is known in the United States
by more than a few brokers and a handful of former Ontario
residents and current Ontario landowners. Moreover, any
such knowledge is incidental to opposer’s rendering of its
Canadian-based insurance brokerage services.
There is also no evidence that applicant intentionally
sought to trade on opposer’s good will or reputation. While
there is evidence that the parties’ principals were
27
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
acquainted through golf outings and tournaments and Mr. Bart
Maves and Mr. Hoffman each knew the other was in the
insurance business, there is no evidence to belie Mr.
Hoffman’s statement that he did not know the name of Mr.
Maves’ business. Applicant learned of opposer’s Internet
domain name registration when it adopted its mark and sought
to register it as a domain name and, thus, presumably
learned the name of opposer’s business and the nature of its
services at that time. But there is no evidence in the
record that applicant had any reason to believe that opposer
used its name as a mark in connection with insurance
brokerage services rendered in commerce in or with the
United States. None of the circumstances for establishing
bad faith adoption by applicant is present based on the
facts in this case.
We consider now whether opposer’s actions, as described
herein and taken as a whole, constitute use of its marks in
connection with insurance brokerage services rendered in
commerce, in this case either interstate commerce or foreign
commerce between the United States and Canada.
Because opposer cites the Supreme Court decision of
United States v. South-Eastern Underwriters Ass’n, 322 U.S.
533 (1944), in support of its statement that “the insurance
business is one that squarely falls within the Commerce
Clause” (brief, p. 47), we begin by noting that
28
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Congressional passage of the McCarran-Ferguson Act (15
U.S.C. §§1011 to 1015) was prompted by the South-Eastern
Underwriters decision. While not disputing Congress’
inherent power under the Commerce Clause to regulate the
business of insurance, the Act expressly grants to the
states the power to regulate the insurance industry.17 See
Owens v. Aetna Life & Casualty Co., 654 F.2d 218, 224-226
(3rd Cir. 1981).
In Aetna, supra, the Court specified certain activities
that were to be considered “the business of insurance” and,
thus, subject to state regulation, including “authorizing
agents to solicit individual or group policies” and
“accepting or rejecting coverages tendered by brokers.” See
also SEC v. Variable Annuity Life Insurance Co., 359 U.S.
65, 79 S.Ct. 618, 3 L.Ed.2d 640 (1959); Anglin v. Blue
Shield of Virginia, 693 F.2d 315 (4th Cir. 1982); and 43 Am
Jur 2d §30.
17
Section 2(b) of the McCarran-Ferguson Act provides:
No Act of Congress shall be construed to invalidate, impair, or
supersede any law enacted by any State for the purpose of regulating the
business of insurance, or which imposes a fee or tax on that business,
unless such Act specifically relates to the business of insurance:
Provided, That after June 30, 1948, the Act of July 2, 1890, as amended,
known as the Sherman Act, and the Act of October 15, 1914, as amended,
known as the Clayton Act, and the Act of September 26, 1914, known as
the Federal Trade Commission Act, as amended, shall be applicable to the
business of insurance to the extent that such business is not regulated
by State law.
29
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
There is no precedent that concludes that the McCarran-
Ferguson Act limits, or otherwise affects, the applicability
of the federal Trademark Act to the business of insurance;
or that it prohibits entities properly engaged in the
business of insurance under the laws of the appropriate
state or states from obtaining federal trademark protection
or availing themselves of the rights and remedies provided
under the federal Trademark Act. It is, however, relevant,
given the express power of the States to regulate the
business of insurance, that the cases interpreting the
McCarran-Ferguson Act specifically include brokerage-type
services as part of the “business of insurance” covered by
that Act and reserved to the states by law. Consistent
therewith, we note, for example, New York state insurance
law, which reiterates that brokerage services are part of
the “business of insurance.”
As previously noted, to render insurance brokerage
services in the United States, one must be licensed in the
state in which such services are to be rendered. As opposer
admits, it has no state license to conduct insurance
brokerage services in any state in the United States, nor
has opposer provided evidence that it has rendered brokerage
services in the “business of insurance” under the laws of
30
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
any state in the United States.18 Rather, opposer is
licensed in Ontario, Canada, conducts its insurance
brokerage services under its marks in Ontario, and its
services are regulated by Ontario law. The nexus of its
services is Ontario and the activities opposer undertakes in
communicating with U.S. brokers and clients are simply a
necessary part of its Canadian business.
The activities with any connection to the United States
that opposer has established in this record are de minimis
and merely incidental to opposer’s rendering of its
insurance brokerage services in Canada. Not only are the
insurance policies or riders brokered by opposer that extend
certain coverages to the United States or U.S. citizens in
Canada merely part and parcel of opposer’s rendering of its
services in Canada, but these policies and riders reflect
the rights and liabilities of the underwriter, not those of
the broker. Such activities do not constitute rendering of
insurance brokerage services in either interstate or foreign
commerce. Based on the facts of this case and the relevant
trademark law and precedent, we find that opposer has not
used its marks in connection with insurance brokerage
services rendered in commerce regulable by Congress. It
would be antithetical to common sense to permit opposer, who
18
We are not suggesting that failure to comply with state law would
necessarily negate trademark rights which were otherwise properly
established.
31
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
is not engaged in any brokerage services subject to U.S.
state regulation, to rely upon the “use in commerce”
provisions of the Trademark Act to establish priority over a
New York state-licensed insurance brokerage business while
itself avoiding the same state laws requiring, inter alia,
licensure, name approval, and payment of taxes. Opposer
cannot have it both ways.
Opposer draws distinctions between interstate commerce
and foreign commerce, and which particular “categories” of
commerce pertain to its activities. However, we need not
address each of opposer’s points in this regard. We have
looked at the facts of this case and found that none of
opposer’s incidental activities in evidence herein
constitutes a brokerage service rendered in any type of
commerce regulable by Congress.
Furthermore, the trademark cases cited by opposer in
support of its position are distinguishable on their
facts.19 For example, in the case of Koffler Stores, Ltd.
v. Shoppers Drug Mart, Inc., 434 F.Supp. 697, 193 USPQ 165
(E.D. Mich. 1976), plaintiff, a Canadian corporation,
adopted its mark in Ontario, Canada in 1962 and was engaged
in the retail drug business in Windsor, Ontario; obtained a
19
Particularly in its reply brief, opposer cited a number of Supreme
Court decisions addressing the Commerce Clause of the U.S. Constitution.
These cases, however, do not support opposer’s conclusion that opposer’s
activities in this case are rendered in “commerce.”
32
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Canadian trademark registration in 1969; obtained a U.S.
trademark registration in February 1974; and opened a store
in Florida in 1974, followed by other stores in the United
States. Defendant's first use of the same mark did not
occur until April or May, 1974, which was subsequent to the
United States registration and use of Plaintiff's trademark.
The court also concluded that defendant’s adoption of the
identical mark was not innocent, as plaintiff's advertising
was extensive, circulated throughout the eastern portion of
Michigan, as well as throughout other states adjacent to the
Canadian-American border, and a significant amount of
plaintiff’s advertising originated in the United States.
These facts of prior use and registration and extensive U.S.
advertising differ significantly from the facts herein.
Also, because of the very nature of insurance brokerage
services, it is unlikely that a U.S. resident hearing
advertising for opposer’s services that spills over into,
for example, New York state would leave either the state or
the country to obtain insurance for property in, or another
insurable risk whose nexus is, New York.
The plaintiff in the case of Morningside Group Ltd. v.
Morningside Capital Group L.L.C., 182 F.3d 133, 51 USPQ2d
1183 (2nd Cir. 1999), was a Hong Kong-based company with
offices and licensees located in the United States, and
engaged in various financial activities in the United States
33
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
through its offices and licensees. The issue reviewed by
the Second Circuit was whether plaintiff provided a service
and whether a mark had been used to identify a particular
service, which the Second Circuit answered in the
affirmative. The question before us is not whether opposer
renders a service in connection with its marks, but whether
such services are rendered in commerce.
Opposer cited the case of International Bancorp, L.L.C.
v. Societe des Bains de Met et du Cercie des Etrangers
Monaco, supra, for the principle that services rendered in a
foreign country (in this case Monaco) to United States
citizens were rendered in foreign commerce which satisfies
the use in commerce requirement in the Trademark Act.
However, the Court in International Bancorp stated (66
USPQ2d at 1713) that “the use of an unregistered mark in
foreign trade does not in any way assure its owner that the
mark will merit [Trademark] Act protection; it only makes
such protection possible. For an unregistered mark that is
used in foreign trade to merit [Trademark] Act protection,
that mark must be distinctive among United States
consumers.” Thus, it was not insignificant to the Court
that defendant had operated a casino in Monaco under the
"Casino de Monte Carlo" trademark since 1863; that the
casino is well known, if not famous worldwide; and that, for
many years, defendant had maintained an office in New York
34
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
with a $1 million promotional budget. The Court stated (66
USPQ2d at 1717) that “where the mark is both used in
advertising and displays in the United States and attached
to services rendered in qualifying commerce overseas
defendant has met the use in commerce requirement of the
Trademark Act” and went on to state (66 USPQ2d at 1721 –
1722) the following:
The proper inquiry in such circumstances is to
evaluate first whether the commerce to which both
parties claim their mark is attached may be
regulated by Congress, and then to evaluate at
what point in time the mark owners began to use or
display the mark in the advertising and sale of
those qualifying services to the qualifying
consumers. … Indeed, that it is not enough for a
mark owner to engage in qualifying commerce to
create rights in his mark, and that it is not
enough for a mark owner to use or display the mark
in the advertising or sale of services to create
rights in his mark, is critical.” (Emphasis in
original.)
When we apply the principles enunciated in
International Bancorp v. Monaco to the facts in the case
before us, we find, as previously stated, that the nexus of
opposer’s business is Canada; its activities in the United
States are minimal and incidental to its Canadian business;
its advertising is directed to Canadian purchasers; and
there is only minimal spillover into New York of its
advertising on a single local radio station. These facts
are insufficient to reach the conclusion that services under
the marks are rendered in foreign commerce.
35
Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712,
91150237
Opposer also relies on Larry Harmon Pictures Corp. v.
The Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292
(Fed. Cir. 1991), and Penta Hotels, Ltd. v. Penta Tours, 9
USPQ2d 1081 (D. Conn. 1988). However, these cases involved
services that were actually rendered in the United States,
i.e., a restaurant located in Tennessee in the first case,
and, in the second case, a hotel in New York that attracted
interstate travelers and also engaged in extensive
advertising and had a New York office that booked
reservations. Similarly, the cases of In re Gastown, Inc.,
326 F.2d 780, 140 USPQ 216 (1964), and In re Silenus Wines,
Inc., 557 F.2d 806, 194 USPQ 26 (CCPA 1977), pertain to
intrastate activities that were found to have a direct
affect on, respectively, interstate commerce and foreign
commerce, which is not the situation herein.
In conclusion, we find that opposer has not established
use of its pleaded marks on insurance brokerage services
rendered in a type of commerce regulable by Congress.
Therefore, opposer cannot establish its priority and cannot
prevail on its claim of likelihood of confusion.
Decision: The oppositions are each dismissed.
36