Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CENTURY 21 REAL ESTATE CORPORATION
v.
CENTURY LIFE OF AMERICA
August 10, 1992
Issued: June 20, 1991
Hearing: February 20, 1991
Opposition No. 75,090, to application Serial No. 73/586,190, filed March 5, 1986
Michael A. Grow of Ward, Lazarus & Grow for Century 21 Real Estate Corporation
Richard Bushnell of Trexler, Bushnell, Giangiorgi & Blackstone, Ltd. for Century Life of America
Before Seeherman, Hanak and Hohein
Members
Opinion by Seeherman
Member
Century 21 Real Estate Corporation has opposed the application of Century Life of America, d/b/a Century Companies of America and Century Life of America, to register CENTURY LIFE OF AMERICA, with the words LIFE OF AMERICA disclaimed, for insurance underwriting services. [FN1] As grounds for opposition opposer alleges that it is the owner of the mark CENTURY 21 for insurance services, real estate brokerage services, mortgage brokerage services, securities brokerage services and related financial services; that it owns registrations for CENTURY 21 for real estate, mortgage brokerage and insurance brokerage services, for CENTURY 21 and design for mortgage brokerage services and for the sale of securities, for CENGUARD for insurance brokerage services, and for CENTURYNET for leasing access time to a computer data base for mortgage loan information; that it is the prior user of CENTURY 21 for insurance, real estate brokerage, securities brokerage and related financial services, and of CENGUARD for insurance brokerage services; that its marks are well known; that applicant's services are closely related to opposer's, and applicant's mark so resembles opposer's marks, such that applicant's use of its mark is likely to cause confusion or mistake or to deceive; and that applicant failed to use its mark as a service mark prior to the filing of its application.
Applicant has denied these allegations in its answer.
The record includes the pleadings; the file of the opposed application; the testimony, with exhibits, of opposer's witnesses Bruce Oseland, Harold M. George, William P. Murphy, and Louis W. Jenkins, and applicant's witnesses Robert William Bush, Linda Lorraine Tyler and Diana Beschorner, and documents stipulated to have been taken from applicant's business records. Opposer has also made of record, by its notice of reliance, Office Actions from certain of its applications; portions of the discovery depositions, with exhibits, of Robert William Bush, Justin Tolan, Larry Secrist, Irving Burling, James Lyons, Leslie Smith, Richard Landberg and Paul C. Sohm; applicant's answers to certain of opposer's interrogatories; excerpts from telephone directories; and registrations for the following marks owned by opposer:
CENTURY 21 for insurance brokerage services; [FN2]
CENTURY 21 for real estate brokerage services; [FN3]
CENTURY 21 for mortgage brokerage services and assisting lending institutions in the processing of loans; [FN4]
*2 CENTURY 21 and home design, depicted below, for mortgage brokerage services and assisting lending institutions in the processing of loans; [FN5]
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CENTURY 21 and home design for sale of real estate securities on behalf of real estate limited partnerships owned by others; [FN6]
CENGUARD and design, depicted below, for insurance brokerage services, i.e., homeowners', condominium and mobile home insurance and mortgage life insurance; [FN7]
CENTURYNET for leasing access time to a computer data base for mortgage loan information; [FN8]
CENGUARD for insurance brokerage services, i.e., homeowner's, condominium and mobile home insurance and mortgage life insurance; [FN9]
CENTURY 21 MORTGAGE CORPORATION and home design (Mortgage Corporation disclaimed) for mortgage brokerage services and assisting lending institutions in the processing of loan applications; [FN10]
CENTURY 21 SECURITIES CORPORATION and home design (Securities Corporation disclaimed) for providing technical assistance in the establishment and operation of businesses providing brokerage of real estate securities and related consulting services; [FN11]
CENTURY 21 SECURITIES CORPORATION and home design (Securities Corporation disclaimed) for real estate securities' brokerage services; [FN12]
CENTURY 21 and home design for real estate brokerage services [FN13]
CENTURY 21 REAL ESTATE and design, shown below, (Real Estate disclaimed) for real estate brokerage services; [FN14]
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CENTURYWRITER for computer hardware, namely, terminals, printers and central processing units; and computer programs and program manuals sold as a unit for use in the fields of real estate, insurance and mortgages. [FN15]
Applicant has, pursuant to Trademark Rule 2.120(j)(4), relied on additional portions of the discovery depositions made of record by opposer, and has also relied on excerpts from telephone directories and newspapers. The parties have extensively briefed the case, and both were represented at an oral hearing before the Board.
Opposer was formed in 1971, and its primary business is the franchising of independent real estate brokers. These franchisees operate under the name CENTURY 21 and a "doing business as" name, for example, Century 21 Jones Realty. Opposer has been very successful, and since 1978 has ranked Number 1 in terms of the real estate offices affiliated with it, with almost 6,000 such offices in the United States by that year. In 1983 the gross sales volume of residential and commercial properties sold by its franchisees amounted to $30 billion, representing 500,000 transactions, while by 1987 this figure rose to $55 billion and 726,000 transactions, making opposer the highest ranked organization in the country in both categories.
Opposer conducts national advertising with monies contributed by its franchisees and regional offices. In 1988 the national advertising fund amounted to $40 million. Since 1978 network television has been the primary medium for opposer's national advertising efforts; however, the national fund is also used for radio commercials and for print advertisements. The latter are placed in such national publications as "The Wall Street Journal", "Forbes", "Fortune", "Time", "Newsweek", "TV Guide" and "Readers' Digest". Since 1978 almost $300 million has been spent by the national fund on media advertisements. In addition, the franchisees place their own advertisements in local newspapers (classified ads) and homes magazines, in classified telephone directories, and on billboards and radio. These expenditures are approximately three times that spent on opposer's national advertising fund, and can amount to another $125 million annually.
*3 Opposer's CENTURY 21 mark has achieved strong recognition by the American public. In a 1979 survey of homeowners in the United States, 42% named Century 21 as a national real estate organization without any prompting, and 80% said they had heard of Century 21 when shown the name. The latter figure rose to 89% when the survey was repeated in 1989.
Opposer is a subsidiary of Metropolitan Life Insurance Company, which acquired it in 1985. Its sister subsidiaries include Century 21 Insurance Services, Inc., which sells insurance through Century 21 franchisees, Century 21 Mortgage Corporation, which provides access to mortgage funding to Century 21 franchisees, and Century 21 Securities Corporation, which provides training to Century 21 franchisees to obtain securities licenses, and works with other companies to package real estate limited partnerships for sale by Century 21 franchisees.
Beginning in 1978 opposer started to develop full-service franchisees, and today the franchisees provide an array of services, including mortgage and insurance and commercial investment sales, as well as the sale of securities and some automation. Real estate brokerage, however, remains the primary business.
With respect to opposer's insurance services, some time prior to 1982 opposer's subsidiary began offering insurance services through the CENTURY 21 real estate franchisees' offices, under the mark NEIGHBORHOOD PROFESSIONAL INSURANCE AGENCY, INC. This insurance was geared to real estate, and included homeowners', renters' and condominium owners' insurance.
In 1982 the subsidiary's name was changed to Cenguard Insurance Agency, and opposer began using the mark CENGUARD for its insurance services. The extent to which these services could be offered was dependent on the number of CENTURY 21 real estate franchisees who obtained state licenses to sell insurance, and the number of states which approved the sale of opposer's insurance products. By December 1984 CENGUARD insurance services were offered by 828 offices operating in approximately 23 states. Those CENTURY 21 real estate franchisees who chose to participate in opposer's CENGUARD insurance program were permitted to sell only CENGUARD insurance, and this insurance was limited to real estate-related products such as homeowners, renters, dwelling fire and mortgage life.
After opposer was acquired by Metropolitan Life Insurance Company in 1985, the name of opposer's insurance company was again changed, to Century 21 Insurance Services, and the opposer's insurance operation has been marketed under this name since then. (We note that even when opposer's insurance services were sold under the mark CENGUARD, opposer offered a service called CENTURY 21 HOME PROTECTION PLAN, under which opposer warranted the major systems and appliances in a home being sold or purchased. By June 1985 this service was available in 27 states.) Approximately 1400 of opposer's franchisees now are part of its insurance program. Premium income on policies written in 1988 amounted to $16 million, although the income for the preceding year was $1.3 million. CENTURY 21 real estate franchisees who choose to participate in the current program have three options: 1) an account executive, who is an employee of Century 21 Insurance Services, not the franchisee, can run an insurances services desk in the franchisee's office; 2) the franchisee, as a licensee of Century 21 Insurance Services, can sell homeowners' insurance without the help of an account executive, but would refer the sale of complicated insurance products to an account executive; and 3) the Century 21 real estate franchisee can sell insurance in the same manner as an independent insurance agent, with no restriction on which companies he represents as long as one of the lines he sells is from Metropolitan Life. With the first two options the real estate franchisee can sell only Century 21 Insurance Service products, although the account executive can have relationships with other providers. Thus, a customer who goes to a CENTURY 21 insurance representative has access to a multiline of insurance products through Metropolitan Life, including automobile, umbrella liability and life and health. Ninety percent of the franchisees participating in the insurance program choose Option 1.
*4 Opposer has also presented some testimony to the effect that some of its CENTURY 21 real estate franchisees also operate as independent insurance agents. Opposer's witnesses have testified that they were aware of some examples of this occurring through the years, beginning in the 1970's. However, these are independent insurance operations, and not under the aegis of opposer, and their activities cannot be considered part of opposer's business or inure to opposer's benefit.
Applicant was founded in 1879 as the Mutual Aid Society of the German Lutheran Synod of Iowa to serve Lutheran ministers and laymen. In 1917 it changed its organization to that used by old line insurance companies, and changed its name to Lutheran Mutual Aid Society. The name was changed again in 1937 to Lutheran Mutual Life Insurance Company.
In 1970 the company changed its by-laws, so that sales were no longer limited to Lutherans. As a result of opening its customer base, applicant began, in 1975, to consider the possibility of adopting a less limiting name. Beginning in 1981 a number of studies were conducted both internally and by various consultant companies. These studies included determining the characteristics that applicant should project, and ascertaining the images the public associated with particular words. As a result of these rather extensive studies, in June 1984 applicant decided to change its name to Century Life of America, and the changeover was effected on December 28, 1984.
Today, applicant's principal business is the selling of individual insurance policies, primarily life insurance, annuities and security products. Its customers are largely families. Sales amount to approximately $1 1/2 billion a year, with premium income on new policies of about $120 million. Applicant operates throughout the Midwest, from Pennsylvania to Nebraska, and on the West Coast and in Texas, although most of its business in concentrated in the states of Iowa, Minnesota, Wisconsin, Illinois and Indiana. It sells its insurance products through a field force of 500 salespeople, all of whom are employees of the company, and who work out of 35 agency offices. Less than 2% of applicant's business comes from independent brokers, and such brokers are those with whom its field managers have a personal relationship. Applicant does not accept any outside brokerage business.
Applicant's advertising expenditures are normally about $300,000 per year, although in 1985 this figure rose to $1.3 million because of additional promotion of the name change to CENTURY LIFE OF AMERICA. Advertising by individual salespeople and agents represents an additional $60,000-$70,000 annually, with $150,000 being spent by these sources during the year the name was changed. Applicant advertises its services primarily in print media, including newspapers, magazines and brochures, along with some radio and, in connection with the name change, local television.
Before beginning our analysis of the issues, an initial comment. Both parties have submitted extensive evidence and have raised many arguments in their briefs. In order to prevent this opinion from becoming unduly lengthy we will not set forth and address each argument or respond to each point raised, but will concentrate on those which are most germane to our decision.
*5 At the outset, we find that priority is not in issue in view of opposer's various registrations, including its registrations for CENTURY 21 for insurance brokerage and real estate brokerage services, which it has made of record. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We note that applicant has argued that it has made prior use of CENTURY in a trade name and a mark, but in the absence of a counterclaim for cancellation such arguments can have no impact on the issue of priority.
There is also no issue that applicant's insurance underwriting services, as identified in its application, are substantially the same as the insurance brokerage services identified in opposer's registration No. 1.429,531 for CENTURY 21, since both identifications encompass the selling of insurance. Further, the record shows that there is a relationship between real estate brokerage services and insurance services, in that many real estate brokers also provide insurance brokerage services.
Turning to the marks, we begin our consideration with the principle that, while marks must be compared in their entireties, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. See, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). In the case of applicant's mark, CENTURY LIFE OF AMERICA, we find that CENTURY is the dominant element, the descriptive phrase LIFE OF AMERICA having been disclaimed. Opposer's CENTURY 21 mark, on the other hand, must be considered a unitary term, with equal weight given to both elements of the mark. In reaching this conclusion, we have considered the two cases cited by opposer in which other tribunals have found CENTURY to be the dominant part of the CENTURY 21 mark. [FN16] We do not know the evidence before those courts which led to their findings, but the record before us clearly demonstrates that the "21" has an equal significance in the mark as the word CENTURY. For example, in its advertisements opposer frequently uses such phrases as "America's Number 1 Top Seller, Century 21" and "Put your trust in Number One, CENTURY 21", the latter being a jingle used in television commercials. This rhyming and repetition of "Number 1/CENTURY 21 serves to emphasize the presence of "21" in the mark. Further, opposer has advertised the availability of its brochure, "21 Reasons Why CENTURY 21 Should Sell Your House For You", which again emphasizes the 21 portion of its mark. In addition, many of the print advertisements which opposer has submitted show opposer's registered CENTURY 21 and home design mark (see above), in which the numeral 21 is depicted in the largest type. [FN17]
Comparing the marks in their entireties, we find that, despite the presence of the word CENTURY in both marks, the marks convey different commercial impressions. CENTURY LIFE OF AMERICA, with its dominant element CENTURY, suggests something that has been around for a long time, is established, and, in effect, reflects the past, while CENTURY 21 suggests innovation and the future. Accordingly, we find that, in general, confusion is not likely to result from the contemporaneous use of opposer's and applicant's marks even for such substantially identical services as insurance underwriting and insurance brokerage, or for the related services of insurance underwriting and real estate brokerage. [FN18]
*6 Our finding is buttressed, but not dependent on, the third-party evidence submitted by applicant. This evidence includes 183 articles and advertisements which appeared from January through April, 1988 in newspapers throughout the country and which referred to trade names or trademarks which contained the word CENTURY, and approximately 2000 listings consisting of or beginning with the word CENTURY, taken from 184 classified telephone directories covering geographic areas throughout the United States. One of applicant's witnesses telephoned a selection of these directory listings, and reported the manner in which 100 entities answered her calls, finding that approximately 90% answered with the name listed in the telephone directory, i.e., a name beginning with the word CENTURY. While this evidence does not prove that the various companies which were called or were listed in the directories and newspapers actually operate under the particular trade names or marks, it does show that the public has been exposed to references to CENTURY in both trade names and marks. [FN19] From this we can infer that the public would not regard CENTURY as such an unusual term in a trade name or mark that they would expect all companies with CENTURY in their names to be related, or all products or services with CENTURY in their marks to emanate from a single source.
In reaching our conclusion on the issue of likelihood of confusion we have taken into consideration the fame of opposer's mark. Famous marks, of course, may be entitled to a broader scope of protection in order to prevent consumer confusion. Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.Cir.1984). We have no doubt, based on the evidence of record, that opposer's CENTURY 21 mark is famous for real estate brokerage services. (We note that opposer has not demonstrated that the mark is similarly well known for insurance brokerage services. That is, while opposer has shown that its CENTURY 21 insurance services are advertised in various media, opposer has not provided any information as to the amount of money it has spent on such advertising. Further, in many of the examples of the insurance advertising the real focus of the advertising is opposer's CENTURY 21 real estate brokerage services and the references to CENTURY 21 insurance, which are subsidiary, are not likely to be noted or remembered. In addition, the new premium income generated from sales of opposer's insurance policies--$1.3 million in 1987 and $16 million in 1988--does not support a conclusion that CENTURY 21 is famous for insurance brokerage services. This is particularly apparent when these figures are compared with those of opposer's parent company, Metropolitan Life Insurance Company, which opposer's witness described as a leading insurance company with 40 million policyholders and assets of more than $114 billion, or even when they are compared with applicant's new policy premiums of $120 million.)
*7 In any case, the fame accruing to opposer's mark is to CENTURY 21, not the word CENTURY alone. As the Federal Circuit said in B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed.Cir.1988):
The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference. BVD has that well-known quality which would trigger the observer to notice at once that BAD, with or without the periods in either mark, is a different symbol.
Just as in that case, we think that consumers, who are used to seeing and treating opposer's mark as the unitary CENTURY 21, would immediately recognize that applicant's mark does not contain the "21".
This brings us to another factor which must be considered in determinations of likelihood of confusion: the care that the prospective purchaser will take in making his purchase. Because insurance is a thought-out, rather than an impulse purchase, the purchaser would be aware of the mark of the company rendering the insurance services, and thus would be aware that CENTURY LIFE OF AMERICA differs from CENTURY 21. Moreover, if, as indicated above, the prospective purchaser had any question about a connection between CENTURY LIFE OF AMERICA and CENTURY 21, this same careful purchaser would be likely to ask that question. In this regard, we note that both opposer and applicant sell their insurance by direct, one-on-one contact with their customers, so the customers would certainly have an opportunity for such questions.
With respect to trade channels and purchasers, we agree with opposer that the parties' target audience is the same, and that both parties' insurance products are sold by agents who are licensed to do so. Here, however, the similarity ends. Opposer's CENTURY 21 insurance is sold only by its real estate franchisees, and opposer's scenario of independent brokers handling both companies' insurance products is not supported by the record. We agree that there is a theoretical possibility that 1) a CENTURY 21 real estate franchisee who participates in the CENTURY 21 insurance program under Option 3, so that he is permitted to handle other companies' insurance lines, could also sell applicant's CENTURY LIFE OF AMERICA insurance, or 2) that a CENTURY 21 real estate franchisee who also operates an independent insurance agency could sell applicant's insurance in an office filled with CENTURY 21 advertising. [FN20] However, the opposer must prove likelihood of confusion, not mere theoretical possibilities. [FN21] Opposer has submitted no evidence whatsoever that either of these events has ever occurred. Further, opposer has not provided any evidence as to either the number of CENTURY 21 insurance program participants who sell other companies' insurance products or the number of real estate franchisees who also have independent insurance operations, the companies they represent or the kind of insurance that they sell, from which we can conclude that there is any likelihood of this theoretical possibility's occurring. Thus, we find that the extent of potential confusion is de minimis. See, In re duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
*8 Finally, opposer argues that applicant adopted its CENTURY LIFE OF AMERICA mark in bad faith, seeking to trade on opposer's good will. Opposer bases its position largely on the fact that applicant knew of opposer and opposer's registrations for CENTURY 21 at the time it adopted the mark, and knew, from the survey it had taken (see footnote 18) that real estate or Century 21 real estate was one of the responses to the images associated with the word Century.
We are not persuaded that the record supports opposer's position. In 1979 applicant began offering a new line of insurance policies under the mark CENTURY II, which was chosen to indicate that applicant had entered its second century of business. Applicant also had formed, in 1980, a subsidiary called Century Life Insurance, which was created to get the benefit of certain tax rules. [FN22] In view of these uses of CENTURY in applicant's business, which occurred before any date on which the record shows that opposer itself began offering insurance services, [FN23] we do not think it odd that CENTURY names were among the initial candidates applicant considered in connection with its name change.
As for applicant's knowledge of opposer, the record shows only that applicant knew of opposer in connection with real estate services. There is no evidence that applicant knew that opposer was engaged in insurance brokerage activities at the time applicant began using its mark. The search report does not reveal an application or registration for CENTURY 21 for insurance brokerage services; indeed, the application for this registration was not filed until July 7, 1986, and the registration did not issue until February 17, 1987 (applicant voted to adopt CENTURY LIFE OF AMERICA as its mark in June 1984, effective December 1984).
Applicant has explained that despite the word association between Century and real estate/Century 21 shown by the survey it did not believe there was a conflict because of applicant's experience in the marketplace, and because the additional words LIFE OF AMERICA in applicant's mark sufficiently distinguished it from CENTURY 21. We find this explanation to be credible and, as to the latter point, to coincide with our own view.
We must confess that this case has been very difficult to resolve. Opposer, in particular, has vigorously argued its case, citing portions of the record and various principles of trademark law which, superficially, would militate toward sustaining the opposition. However, determinations of likelihood of confusion cannot be made on a formalistic application of trademark principles. Upon a close examination of the entire record, and a consideration of all the applicable DuPont factors in light of that record, we are convinced that confusion is not likely.
This brings us to the second ground of the opposition, namely, that applicant had not used its mark at the time it filed its application on March 5, 1986. Among the documents of record is a form for application of insurance or annuity. This form depicts CENTURY LIFE OF AMERICA in large capital letters, next to a stars and stripes design, centered at the top of the first page. (The relevant portion of the form is shown below.)
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*9 We find that the phrase CENTURY LIFE OF AMERICA is used as a service mark on this application form. There are three such completed forms, two bearing signature dates of January 2, 1986, and one dated January 27, 1986. [FN24] Clearly, the forms were signed before the filing of the application.
Opposer argues that there is no evidence that the customers applying for insurance saw the mark on the dates they signed the forms because the mark appears on the front of the form and the insurance applicant's signatures appear on the back and, thus, there was no valid service mark use. While it is correct that applicant's agents could not testify that the customers did, in fact, review the forms, the evidence shows that the applications, including all the information on the first page, were filled out in front of them. We note from the forms that much of the information required must be provided by the customer, and the customer's signature is a "represent[ation] that the statements and answers in all parts of this application consisting of Parts I and II are true and complete to the best of my knowledge and belief." In such circumstances, we find it difficult to believe that the customer would not, either prior to signature or while the information was being entered, at the very least notice the first page of the document.
Moreover, opposer's position is entirely too rigid. By the use of the mark on its insurance application form, and the offering of insurance services to the public through the mechanism of that form, applicant made actual use of its service mark in a public manner. There is no specific requirement that a service mark must be seen to be considered to be in use. Radio advertising, for example, can constitute acceptable service mark use.
We find that CENTURY LIFE OF AMERICA is depicted on the insurance application form in the manner of a mark, and that this form was used in a public manner in connection with the offering of insurance underwriting services, prior to the filing date of applicant's application for service mark registration. Accordingly, we need not discuss any of the other documents on which applicant relies to show service mark use prior to March 5, 1991.
Decision: The opposition is dismissed as to both grounds.
E.J. Seeherman
E.W. Hanak
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/586,190, filed March 5, 1986 and asserting first use and first use in commerce on or about December 31, 1984.
FN2. Registration No. 1,429,531, issued February 17, 1987.
FN3. Registration No. 1, 063,488, issued April 12, 1977; Section 8 affidavit accepted.
FN4. Registration No. 1,304,095, issued November 6, 1984; Section 8 affidavit accepted; Section 15 affidavit received.
FN5. Registration No. 1,312,599, issued January 1, 1985; Section 8 affidavit accepted.
FN6. Registration No. 1,377,553, issued January 7, 1986.
FN7. Registration No. 1,330,015, issued April 9, 1985. The computerized records of the Patent and Trademark Office do not reflect at this point whether a Section 8 affidavit has been filed.
FN8. Registration No. 1,350,065, issued July 16, 1985.
FN9. Registration No. 1,441,447, issued June 2, 1987.
FN10. Registration No. 1,307,407, issued November 27, 1984; Section 8 affidavit accepted; Section 15 affidavit received.
FN11. Registration No. 1,353,228, issued August 6, 1985.
FN12. Registration No. 1,381,766, issued February 4, 1986.
FN13. Registration No. 1,085,040, issued February 7, 1978; Section 8 affidavit accepted.
FN14. Registration No. 1,071,592, issued August 16, 1977; Section 8 affidavit accepted; Section 15 affidavit received.
FN15. Registration No. 1,551,675, issued August 15, 1989. Two other registrations submitted with opposer's notice of reliance, No. 1,164,917 for CENTURY 21 and design for real estate brokerage services, and No. 1,227,831 for CENTURY 21 INVESTMENT SOCIETY and 21 design (Investment Society disclaimed) for educational services--namely, training real estate brokers and sales associates, were cancelled pursuant to Section 8 of the Trademark Act.
FN16. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 6 USPQ2d 2034 (9th Cir.1988); Century 21 Real Estate Corp. v. Century Resorts Int'l, Inc., 211 USPQ 227 (N.D.Ill.1981).
FN17. We note that opposer owns registrations for two "CENTURY" marks which do not include the element "21", namely CENTURYNET and CENTURYWRITER, but they are for, respectively, "leasing access time to a computer data base for mortgage loan information" and "computer hardware, namely, terminals, printers and central processing units; and computer programs and program manuals sold as a unit for use in the fields of real estate, insurance and mortgages." From these identifications it appears that the services are directed to brokers, rather than customers, and we cannot assume any familiarity with these marks, let alone fame, by the general public.
FN18. We would point out that the results of the survey commissioned by applicant in connection with the choosing of a new name does not affect our conclusion. In that survey respondents were asked "What ideas or impressions does the word Century suggest to you when used in a company name?" While the impression most often communicated by the word is the image of "old/established/been around for a long time" (78% of the responses), 17% of the responses were real estate or the real estate company Century 21. Aside from the fact that the latter responses constitute a relatively small percentage, we cannot consider the responses to have a real bearing on the commercial impressions conveyed by the parties' marks, or on the issue of likelihood of confusion. This deliberately open-ended question, which in effect asks respondents to give all the images which they associate with the word "Century," really elicits nothing more than word associations (10% of the responses were 100 or 100 years). We cannot extrapolate from this survey how people would react in the marketplace when viewing the mark CENTURY LIFE OF AMERICA in connection with insurance underwriting services. To do otherwise, and assume that people make a connection between every mark containing the word CENTURY and opposer's mark CENTURY 21 would, in effect, give opposer a monopoly in the word CENTURY.
The limited scope of the survey, i.e., to determine word image association, and therefore the limited value of the survey in terms of determining likelihood of confusion, is further emphasized by another question asking respondents "Are there any companies you can think of that use this word [Century] in their name?" The fact that 88% of the respondents could name such companies, and that the main companies mentioned were Century 21 Real Estate, Century Insurance and 20th Century Fox, does not show that the respondents think these companies are related.
FN19. We reiterate that we have not treated applicant's telephone-check activities as a scientific survey from which an extrapolation can be made that 90% of all the directory listings made of record reflect businesses which answer their phones under a CENTURY trade name, or that all of the listings are currently operational. Indeed, on rebuttal opposer has shown that some are not currently listed or in service. Our treatment of this evidence is solely as indicated above.
FN20. There is also a theoretical possibility that, because opposer's registration is for CENTURY 21 for insurance brokerage services per se, opposer could render its insurance brokerage services separate from its real estate brokerage services, and that, theoretically, a CENTURY 21 insurance broker could sell CENTURY LIFE OF AMERICA insurance. Opposer has not provided any evidence demonstrating that such a situation has occurred or is likely to occur.
FN21. Opposer has also raised arguments relating to the possibility of confusion in connection with the parties' investment services and in connection with applicant's conceivably turning to real estate services. Neither of these services are at issue in this proceeding. Applicant's application is for insurance underwriting services, and the question of confusion relating to a possible future real estate business or to investment services is not before us.
FN22. Opposer had objected to applicant's citing inadmissible evidence from the discovery depositions of its own officers as to applicant's motives in choosing its mark. Applicant had originally filed a notice of reliance on all those portions of the discovery depositions taken by opposer on which opposer did not rely. Opposer moved to strike this material because applicant had failed to provide a statement explaining why it needed to rely upon the additional portions, as required by Trademark Rule 2.120(j)(4). The Board granted opposer's motion, but allowed applicant to file an amended notice of reliance. Opposer has objected to the amended notice on the basis that it, too, does not comply with the rule.
We agree with opposer that some of the material on which applicant now seeks to rely is not appropriate for submission under Rule 2.120(j)(4). Although applicant has provided an explanation as to why it needs to rely on the material, in many cases the explanation is that the material is relevant to a particular issue, or that it rebuts part of opposer's case. The purpose of this rule, however, is to provide that where a party relies on only part of a discovery deposition, the adverse party may introduce any other part of the deposition which should be considered so as to make not misleading what was offered by the submitting party. If the additional material is not necessary to make the original portion of the deposition not misleading, the fact that it may be relevant to an issue in the case, or that it serves to rebut certain arguments, is of no moment. It is not appropriate for submission under Rule 2.120(j)(4).
While we have not considered the portions of the discovery depositions about which opposer's objection is well taken, the information regarding applicant's use of CENTURY II and Century Life Insurance is not taken from such depositions.
FN23. We note opposer's testimony that some of its real estate franchisees also had insurance businesses in the 1970's, but such insurance operations cannot be considered part of opposer's activities. Even assuming, arguendo, that these independent insurance agencies were operated under the CENTURY 21 name (a position that would be antithetical to opposer's interests since it would indicate that opposer had acquiesced in unlicensed third-party use of its mark), any such use by independent agents of CENTURY 21 for insurance services would not inure to the benefit of opposer.
FN24. Opposer has objected that applicant "should not be allowed to rely on these documents since its vice president testified that the documents existed in files located at the companies (sic) headquarters but had not been produced by the company in response to document requests that asked for them." Brief, p.25, ftnt. 13. Aside from the fact that opposer has not provided a copy of the relevant document production request, we note that the applications were produced during the discovery depositions taken by opposer of Messrs. Landberg and Sohm, and were submitted by opposer with its notice of reliance.