Insurance companies spar over ownership of BANKERS LIFE trademark. CDOC v. LIBERTY

Section 2(d) of the Lanham Act provides that the United States Patent and Trademark Office may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is determined using the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The DuPont factors are a list of factors that the United States Patent and Trademark Office and courts in the United States will consider when determining if there is a likelihood of confusion between two trademarks. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services. The likelihood of confusion analysis considers all DuPont factors for which evidence is presented but may focus on the similarity of the marks and categories of products branded with the trademarks.

This means that it is important for a trademark applicant to be prepared to explain how their trademark is different than similar trademarks which are already registered. If a trademark applicant can explain why there is not a likelihood of confusion then it is still possible to register a trademark even when there are other similar trademarks already registered.

CDOC, INC. v. LIBERTY BANKERS LIFE INSURANCE, 20-1643 (C.A.F.C. 2021) is an example of a case where a trademark was granted registration despite an already registered similar trademark.

CDOC is the owner of registered mark BANKERS LIFE Trademark Registration No. 892,222 for use in connection with insurance underwriting services in International Class 36. The BANKERS LIFE mark was registered on June 2, 1970, with an asserted date of first use of the mark in commerce
of July 13, 1968.

On May 3, 2017, Liberty filed U.S. Trademark Application Serial No. 87/435,442,1 seeking to register the
mark LIBERTY BANKERS LIFE INSURANCE COMPANY and design, shown above, for underwriting and administration of life insurance, health insurance, and annuities in International Class 36. The registration application claimed September 15, 2007 as Liberty Bankers’s first use of the mark in commerce.

In 2017, CDOC filed an opposition to Liberty’s application on the grounds it was likely to cause confusion with CDOC’s BANKERS LIFE mark. The Trademark Trial and Appeal Board (TTAB) found that the similarity of the services and the similarity of the trade channels and customers favored a likelihood of confusion, as the services in the BANKERS LIFE registration and the services in Applicant’s trademark application is in part identical. The TTAB found that CDOC’s trademark strong despite several third party registrations that included BANKER and BANKERS LIFE. The TTAB also found that relevant consumers exercised a significant amount of care when purchasing the relevant products and that the trademarks were dissimilar. The TTAB ultimately concluded that there was not a likelihood of confusion between the two trademarks and dismissed the opposition. CDOC appealed the TTAB’s decision the the Court of Appeals for the Federal Circuit.

On appeal, CDOC challenged the TTAB’s findings with respect to 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. With respect to the dissimilarity of the trademarks, the TTAB’s decision evaluated the trademarks in their entireties. The appearance, sound, connotation, and commercial impression were all evaluated. The Federal Circuit found that substantial evidence supported the TTAB’s finding that Liberty was the dominant element of the application and therefore the trademarks were dissimilar. The Federal Circuit also found that substantial evidence supported the TTAB’s finding that purchasing insurance was a discerning process where confusion was unlikely. Finally, the Federal Circuit agreed substantial evidence supported the finding that long concurrent use without actual confusion made confusion unlikely. Based on these findings the Federal Circuit affirmed the TTAB’s decision.

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