Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number 78/670857

REQUEST FOR RECONSIDERATION DENIED

The Office has reassigned this application to the undersigned trademark examining attorney.

Registration is refused in this matter under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion in connection with the mark PEGASUS ADVISORS in U.S. Reg. No. 2,623,438. The undersigned trademark examining attorney has carefully reviewed the request for reconsideration and is not persuaded by applicant’s arguments.  No new issue has been raised and no new compelling evidence has been presented with regard to the points at issue in the final action, namely, likelihood of confusion and improper evidence in support of applicant’s request that the refusal be withdrawn.  TMEP §715.03(a). 

Specifically, applicant argues that there is no likelihood of confusion because the term “PEGASYS” or “PEGASUS” is weakened by widespread use in the relevant field and, thus, merits only a narrow scope of protection because customers allegedly would not be confused as to the source of the services (Request for Reconsideration, page 2).  In support of the argument that the registered mark is weak, applicant has provided information concerning two service mark registrations, alleged pending U.S. trademark applications for various goods and services, as well as information concerning alleged common law use of the term “PEGASYS” or “PEGASUS” in the insurance field.  In addition, applicant has argued that there is no likelihood of confusion because the services of the parties are unrelated and are directed to different customers (see applicant’s response, pages 3-4, submitted May 5, 2006).[1] 

Based on the evidence of record provided by the previous Examining Attorney, and new evidence attached to this Office action under TBMP § 1207.04, the undersigned Examining Attorney disagrees that registrant’s mark is weak and merits a narrow scope of protection.  Two registrations for marks used in different fields (i.e. providing medical services and underwriting annuities) do not support a finding that a branded term is “weak” for the services recited in the application and in the cited registration.  In addition, applicant’s list of pending applications (see applicant’s response, pages 4-6, submitted May 5, 2006) and printouts regarding alleged common law use of the term “PEGASUS” (or the like) in the insurance field (provided with the Request for Reconsideration) are not proper evidence of third-party use. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); TMEP § 713.03.  Even if such evidence were to be considered, the general rule is that while third-party registrations may be useful to show relatedness of goods/services, third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third-party registrations and, by analogy, pending trademark applications, are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. v. Record Chem. Co., 185 USPQ 563 (TTAB 1975); TMEP §1207.01(d)(iii).  In addition, the alleged evidence of common law use of the term “PEGASUS” (or related terms) is not persuasive that registrant’s mark is entitled to narrow protection.  In this ex parte review, the Examining Attorney is unable to determine actual ownership rights in or actual use of any of the alleged marks shown in the evidence provided by applicant.  Cf. TMEP § 1207.03.[2]  For these reasons, the evidence of record neither supports a finding that registrant’s mark is weak, nor does it provide a basis for withdrawing the refusal under Section 2(d) of the Trademark Act.  In addition, the Examining Attorney continues the objection to applicant’s unsupported evidence (made by the previous Examining Attorney), including the evidence of “use” of the term “PEGASUS” from websites for companies in Canada and in New Zealand. 

Finally, contrary to applicant’s averments, the evidence of record shows that the same parties provide services related to risk management, reinsurance, insurance claim processing and administration (including health insurance claim administration), and insurance claims auditing in connection with the same or related marks.  The evidence also shows that these services are directed to the same parties, such as a wide variety of self-insured employers.  

Therefore, based on the evidence of record, including the highly similar appearance of the parties’ marks, the request for reconsideration is denied. When the marks of the respective parties are virtually identical, as in this matter, the relationship between the services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a). Accordingly, the final refusal under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), is continued.  37 C.F.R. §2.64(b); TMEP §715.04.  

This application will be returned to the Trademark Trial and Appeal Board for resumption of the appeal.  TBMP § 1204.

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113