Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ALLSTATE INSURANCE COMPANY
GEORGE DELIBRO, D.B.A., ALLSTATE TRACTOR TRAILER TRAINING
January 29, 1988
Hearing: September 16, 1987
Opposition No. 69,872, to application Serial No. 419,606 filed April 1, 1983
Richard C. Browne and Julie A. Strauss for Allstate Insurance Company
Laurence R. Brown for George DeLibro d.b.a., Allstate Tractor Trailer Training
Before Rice, Rooney and Seeherman
An application was filed by George DeLibro, d.b.a. Allstate Tractor Trailer Training to register the mark shown below (design of a truck disclaimed) for professional training of tractor-trailer truck drivers claiming first use as of July 5, 1975.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
An opposition to registration was filed by Allstate Insurance Company on the ground that applicant's mark so resembles the marks ALLSTATE, [FN1] and ALLSTATE LIFE (LIFE disclaimed [FN2] for insurance underwriting services and ALLSTATE MOTOR CLUB (MOTOR CLUB disclaimed [FN3] for services to motorist members, including assistance on planning auto trips, emergency road service benefits, legal service benefit in event of traffic violation charges, accident insurance and arranging for world-wide tours, previously used and registered by opposer and used by opposer's related and affiliated companies as to be likely to cause confusion, mistake or deception.
Admitting the existence of the registrations relied on by opposer and the allegation that applicant has not used the mark prior to its claimed use date, applicant denied the remaining allegations of the notice of opposition and affirmatively pleaded that ALLSTATE is a weak mark as evidenced by the existence of certain enumerated third-party registrations and that applicant is guilty of laches and estopped from bringing this suit as a result thereof.
The record consists of stipulated testimony and exhibits [FN4] on behalf of both parties, each of which was represented at the oral hearing held on this matter.
The following facts appear in the stipulated testimony of Ralph J. Jackson, opposer's Director of Corporate Advocacy; Bruce W. Clements, Vice-President and Asst. General Counsel and John J. Flieder, Asst. Vice-President for Corporate Advertising.
Opposer is a general lines casualty insurance company founded as Allstate Insurance Co. by Sears Roebuck & Co. in 1931. Other Sears companies have used the ALLSTATE name since that time subject to the control of Allstate Insurance Co. The mark has been used and advertised over the years in connection with a broad range of consumer and financial services through the Sears organization network. Advertising expenditures between 1950 and 1985 have been from 5 to 30 million dollars per year. For each year since 1973, opposer has had more than 250 million dollars of credit insurance in force. Allstate Motor Club, founded in 1960, has issued membership to large numbers of individuals, collecting dues in amounts from 7 million dollars in 1970 to 35 million dollars in 1985. From 1953 to the early 1960's, opposer's charitable and community services foundation sponsored high school teacher driver training programs. Between 1960 and 1974, opposer produced and developed driver education training films for classroom use in connection with driver training equipment manufactured and distributed by other companies. Beginning in the 1970s through the present, opposer has financially supported a variety of driver education and safety programs including production of printed materials and films related to education of the public and for commercial and high school driving schools and driver education students in the areas of drunk driving, driving and drugs, court approved rehabilitation programs for chronic drunk driving offenders and in connection with auto safety programs including promotion of passive restraint systems for automobile crash protection.
*2 Applicant's facts are set forth in a statement signed by George DeLibro, Arnold J. De Maio, Vincent J. Mazzacca, Marion DeLibro and Frank DeFilippo.
According to that statement, applicant has operated a driving school under various names, all of which have included the term ALLSTATE, since July 25, 1957. Since January 1, 1964, applicant has used the name ALLSTATE TRACTOR TRAILER TRAINING.
On August 19, 1975, applicant registered the name Allstate Tractor Trailer School in Bridgeport, Conn. Applicant incorporated in 1981 in Connecticut as Allstate Driving School, Inc. On April 20, 1982 a name change, to Allstate Tractor Trailer Training School, Inc., was registered in the state of Connecticut. Applicant was listed in the Yellow Pages classified directory in Boston, Mass as early as 1977 as Allstate Tractor Trailer Training. Applicant has worked with public and private firms in connection with traffic safety and professional training of tractor trailer drivers as well as students in various states. A number of third-party ALLSTATE marks exist in various fields of activity.
The question of priority does not arise in this case because of opposer's reliance on its valid and subsisting registrations. See Black and Decker Mfg. Co. v. Bright Star Industries, Inc. 220 USPQ 890 (TTAB 1983). Apart from the foregoing, the evidence supports opposer's continuous use in connection with insurance services since 1931, and in connection with various driver education programs since 1953.
As to the services performed by each party, it is well settled that the goods or services involved in an opposition proceeding need not be the same or even competitive in order to support a finding of likelihood of confusion. It is sufficient if the products or the services are related in some manner such that their marketing under the same or a similar mark would lead purchasers or ultimate consumers to believe that they emanate from the same source or that there is an association between their respective sources. See Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 (TTAB 1986). Thus, contrary to applicant's arguments, a likelihood of confusion is not precluded simply because applicant does not sell insurance or opposer does not train drivers of tractor-trailers.
Apart from its substantial insurance services, which include automobile, business and fleet insurance, opposer has been involved for many years in driver education and safe driving programs. These are extended to teachers, to high schools and commercial establishments. Exhibit 8 concerns a number of programs sponsored by opposer including "auto body repair training". Opposer's services also include "motor club activities" in connection with which dues paid in 1985 were in excess of 41 million dollars. [FN5] In 1977 almost 20 million dollars was spent for advertising and promotion of opposer's services. These expenditures have been consistent and exceeded 29 million dollars in 1985.
*3 It is our opinion that opposer's activities, in particular its motor club services, driver education and safety programs, are sufficiently related to training of tractor trailer drivers as to be likely to cause confusion if the latter were offered under the same or a similar mark.
Turning to the marks, we note that although marks must be judged in the final analysis, in their entireties, it is nonetheless true that more or less weight may be 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 before us, there can be no question that ALLSTATE is the dominant portion of applicant's mark. There are numerous cases which state that, as between a design and a word mark, the word portion is dominant. See In re Carriage, Inc. 189 USPQ 648 (TTAB 1975). That is even more true where the design describes the services to some extent, as the truck in applicant's mark does. It would serve only to inform viewers of the nature of these particular services and, because of the identical word portion, would, in our view, indicate opposer as the source.
Applicant has argued that ALLSTATE is an exceedingly weak mark. But, that cannot be seriously contended of a mark which has been in use since 1931 and has been as extensively promoted as this one has. Even the court in the case cited by applicant, Sears, Roebuck and Co. and Allstate Insurance Company v. Allstate Driving School, Inc., 163 USPQ 335 (EDNY 1969) recognized that ALLSTATE has secondary meaning as did the court in Sears, Roebuck and Co. v. Johnson et al d.b.a. ALL-STATE School of Driving, 219 F2d 590, 104 USPQ 280 (CA 3 1955).
The alleged-third party state registrations listed in applicant's Exhibit 14 are of absolutely no probative value to the issue before us. Exhibit 15 includes copies of twenty third-party federal registrations. Apart from the fact that not one is for related services, it is well settled that third-party registrations have little, if any, probative value on the question of likelihood of confusion since in the absence of evidence relative thereto, we do not know the extent of their use, if any, and cannot assess the extent to which they may have made an impression on the public.
Applicant argues that opposer is estopped from bringing this opposition in view of its earlier involvement in the case of Sears, Roebuck and Co. and Allstate Insurance Co. v. Allstate Driving School, Inc., supra. Apart from the fact that applicant was not a party to or in privity with a party to that case and therefore cannot claim estoppel based thereon, the decision in that case was made on a different evidentiary record and an important factor entering therein was the applicant's innocent adoption of the mark.
Concerning its laches defense, applicant asserts that in about 1965 a stockholder of Allstate Insurance Company objected to applicant's use of ALLSTATE and referred his objection to opposer and that applicant was subsequently notified to cease using the name by an attorney representing opposer. It is stated further that at that time, applicant was also using the phrase "You're in Good Hands" on a sign in his office window. As a result of the notification, applicant states, the sign was changed to read, "You're in Safe Hands" which was used for many years but was recently discontinued. Applicant, continuing to use ALLSTATE, heard nothing more from opposer until this opposition was filed. Applicant argues that because of opposer's silence, he assumed he had opposer's consent and he has since openly and notoriously continued to use the mark ALLSTATE for his driving school. It is applicant's position that opposer is guilty of laches and should, for that reason, be further estopped from pursuing this opposition.
*4 In support of this defense, applicant has submitted a copy of a letter, dated January 17, 1985, written by his wife, Marion DeLibro, to applicant's attorney of record herein, relating her visit to a Doctor Granger in "1965 or 1966", who said he was a stockholder of Allstate Insurance Company and expressed annoyance on learning that the name of her employer (her husband) was Allstate Driving School. She stated that he said he had reported Allstate Driving School to Allstate Insurance Company and that her husband had previously received notification from Allstate Insurance Company to cease use of the name. Also relative to this defense, applicant submitted a statement of Frank DeFilippo to the effect that "(B)ack about 20 years or more ..." Mr. DeLibro had mentioned to him receiving a letter from a New York law firm representing Allstate Insurance Company asking him to cease using the name ALLSTATE; that, at that time, Mr. DeLibro had a small sign in his office window reading "Allstate Driving School, You're in good hands"; "... so I suggested he change the motto to read, 'You're in Safe hands', which he did ..." and that Mr. DeFilippo understands that Mr. DeLibro has never heard any more from Allstate Insurance Company. [FN6]
As opposer has noted, a laches defense is considered only in cases where there is a reasonable doubt as to likelihood of confusion. Where no such reasonable doubt exists, laches, even if it were proved, would be an insufficient reason to allow a mark to be registered which would be likely to confuse the public. See Iodent Chemical Company v. Dart Drug Corporation, 207 USPQ 602 (TTAB 1980).
Apart from the public policy considerations, applicant has not proved its laches defense. All that is of record are statements by two individuals reporting on events as to which neither had first hand knowledge. Mrs. DeLibro's information relative to both Dr. Granger's actions and that of Allstate Insurance is second hand, as is Mr. DeFilippo's concerning whatever Mr. DeLibro may have been told in a letter from an unidentified law firm. Both are inadmissible hearsay. Applicant has failed to prove opposer's knowledge of its use of the mark ALLSTATE, an inexcusable delay after such knowledge and that applicant relied on that delay to his detriment. See Sun Valley Co., Inc. v. Sun Valley Mfg. Co., 167 USPQ 304 (TTAB 1970). Apart from the foregoing, it is noted that the mark for which registration is being sought herein, which differs from that involved in the above discussion, was not used before 1975 and there is nothing of record to indicate that opposer was ever aware of applicant's use of this particular mark prior to its publication in the Official Gazette.
The absence of evidence of actual confusion is not controlling since it is a well accepted fact that such evidence is difficult to obtain. Moreover, opposer has sustained its burden by proving likelihood of confusion. It is not necessary that actual confusion be proved. See Hydrotechnic Corp. v. Hydratech International, Inc., 196 USPQ 387 (TTAB 1978) and Guardian Products Co., Inc. v. Scott Papers Co., 200 USPQ 738 (TTAB 1979).
*5 Finally, we cannot ignore the fact that applicant's intent in adopting the ALLSTATE designation does not seem to have been completely innocent since the record clearly shows that applicant adopted not only the word mark ALLSTATE but also for a time used the equally prominent slogan of opposer, You're in Good Hands".
In view of the foregoing the opposition is sustained.
J. E. Rice
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 717,683 issued June 27, 1961, Section 8 affidavit accepted, Section 15 affidavit filed, renewed; Regn. No. 761,091, issued December 3, 1963, Section 8 affidavit accepted, Section 15 affidavit filed, renewed; Regn. No. 840,187, issued December 5, 1967, Section 8 affidavit accepted, renewed.
FN3. Regn. No. 759,366, issued October 29, 1963, Section 8 affidavit accepted, Section 15 affidavit filed, renewed.
FN4. Applicant has objected to the submission of a copy of its abandoned application file (Ser. No. 334,288) on various grounds. Without a discussion of each of the grounds mentioned, we note that while the abandoned application (in which no appeal was filed), represents the final Office position with regard to the specific mark for which registration was sought therein, it has no bearing on the determination to be made in this case since the marks are not the same, the evidence in the record is not the same and, in any event, the Board is not bound by the final determination of an Examining Attorney. Both parties have made numerous objections to other exhibits on grounds of relevance and/or hearsay. These objections have been considered and the probative value of the subject matter has been weighed accordingly.
FN5. Applicant has objected to the copy of a license agreement between opposer and Allstate Motor Club. It is contended that it was not authenticated and that there is no evidence of actual use of ALLSTATE by the motor club. Applicant also raises the question of whether the license is in effect. The stipulated testimony of Mr. Bruce W. Clements, opposer's vice-president and assistant general counsel identifies and authenticates the license agreement. The extensive list of dues paid by members of the Motor Club from 1970 to 1985 attests to activities conducted under the mark. Apart from the foregoing, opposer owns the registration for ALLSTATE MOTOR CLUB (note that title is currently in opposer's name) and questions of nonuse of the mark constitute a collateral attack on its validity, which cannot be entertained in the absence of a counterclaim for its cancellation.
FN6. Mr. Bruce W. Clements, Vice-President and Asst. General Counsel, Allstate Insurance Company stated in his stipulated testimony that a thorough search of records of the Corporate Law Division of Allstate Insurance Company had been made at his direction and no documents related to discussions with Mr. DeLibro about his use of the mark ALLSTATE were located.