TRADEMARK
Case No. 258096

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number: 77/158505 )
Applicant: American International Group, Inc. )
Mark: GEMM PROPERTY )
Office Action Date: June 1, 2009 )
Examining Attorney: Bridgett Smith )
Law Office 115 )

RESPONSE TO OFFICE ACTION OF JUNE 1, 2009

On behalf of American International Group, Inc. (“Applicant”), please consider the

following response to the Office Action.

REMARKS

No Likelihood Of Confusion Exists Between Applicant’s Mark And The Mark Cited By
The Examining Attorney

The Examining Attorney has refused registration under Trademark Act Section 2(d), 15

U.S.C. §1052(d), based on the allegation that the mark for which registration is sought so

resembles the mark eGEMS in U.S. Registration No. 3573105 as to be likely, when used in

connection with the identified services, to cause confusion, or to cause mistake, or to deceive. 1

Applicant respectfully disagrees with this refusal and submits that its GEMM PROPERTY mark

is not likely to cause confusion in the marketplace for several reasons. While the Examining

Attorney focuses on a comparison of the parties’ marks and services, there are other relevant

factors that also need to be considered in this likelihood of confusion analysis. In re DuPont de

Nemours and Co., 177 USPQ 563 (CCPA 1973) (“DuPont”). First, the Applicant’s services are
1
Applicant notes that the Examining Attorney’s June 1, 2009 Office Action includes only a passing reference to
U.S. Reg. No. 2672140, stating that the refusal based on that registration is maintained and continued. The
Examining Attorney’s prior non-final Office Action dated July 26, 2007 included arguments relative to that refusal.
However, Applicant notes that U.S. Reg. No. 2672140 was canceled on August 15, 2009 for failure to file the
Section 8 Declaration of Use. This registration is, thus, no longer a bar to registration of Applicant’s mark GEMM
PROPERTY, and the instant Office Action response, therefore, relates solely to the refusal based on U.S. Reg. No.
3573105.
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distinguishable in nature from Registrant’s services. Second, the Applicant’s services are

marketed and sold through different channels of trade. Third, there are other third parties using

GEM and variations thereof for related services, and a number of similar third-party marks have

been registered or approved for registration. Fourth, the services are provided to sophisticated

purchasers. Fifth, the parties’ respective marks are not identical. The overriding concern in a

likelihood of confusion analysis is to prevent buyer confusion as to the source of the goods.

Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980) (emphasis added).

Taking into account all of the pertinent factors, confusion under Section 2(d) of the Trademark

Act is highly unlikely in this case.

A. Applicant’s And Registrant’s Respective Services Are Not Closely Related
Or Offered In Circumstances Likely To Lead To Confusion

The differences between the parties’ respective services are readily apparent and this

factor weighs in favor of the Applicant. Applicant’s services under its mark are identified as

“insurance underwriting in the field of property and casualty directed to energy operations.” In

contrast, the Registrant’s services are identified as “underwriting and administration of health

insurance.” Applicant respectfully submits that there is no likelihood of confusion given such

differences in the parties’ identified services.

In her Office Action, the Examining Attorney posits that since both parties provide

insurance services, “consumers are likely to believe . . . [they] emanate from the same source.”

Applicant respectfully disagrees. Applicant provides highly specialized insurance underwriting

services in the field of property and casualty, as identified in its application. More specifically,

Applicant’s services are marketed toward oil and gas companies, to petrochemical companies, to

power generation companies, to utilities, and to chemical companies (see Applicant’s specimen

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of use submitted with its application on April 17, 2007). Applicant’s amended recitation of

services reflects that its property and casualty services are directed to such energy operations.

The services include providing commercial general liability coverage, auto liability coverage,

physical damage coverage and workers’ compensation coverage, all to the energy industry (see

Applicant’s website printout and brochure attached as Exhibit 1). As explained in its specimen

of use, Applicant markets its property risk coverage to sophisticated consumers, namely, energy

and energy-related businesses and properties involving engineered risks for companies with

annual revenues of $75 million or less. Applicant does not provide health insurance

underwriting under its GEMM PROPERTY mark. Applicant’s services are likely directed to

CEOs, presidents, business owners and management of energy operations. In contrast,

Registrant’s distinct health insurance services appear to be directed at agents, administrators,

human resource personnel and health care consumers who wish to view and update employee

enrollment and benefit information online (see Registrant’s Request for Reconsideration dated

October 1, 2007, excerpts from Registrant’s submitted specimens of use, and printouts from

Registrant’s website attached as combined Exhibit 2). This is a key and important distinction.

The parties’ respective services are, therefore, unrelated and offered to totally different

consumers.

In fact, the only real relationship between Applicant’s services and Registrant’s services

is their classification in International Class 36. However, as the Examining Attorney knows, the

classification of goods and services is primarily for the convenience of the Office and has no

bearing on the question of likelihood of confusion. TMEP § 1207.01(d)(v). In fact, the statute

authorizing the creation of the classification system itself makes clear that it is “for convenience of

Patent and Trademark Office administration, but [does] not . . . limit or extend the applicant’s or

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registrant’s rights.” 15 U.S.C. § 1112; See also, 4 J. THOMAS MCCARTHY, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 24:66 (4th Ed. 2009), and cases cited therein.

Moreover, consumers tend to exercise a relatively high degree of care in selecting

financial and banking services. First National Bank, in Sioux Falls v. First National Bank, South

Dakota, 47 USPQ2d 1847, 1851 (8th Cir. 1998). Accordingly, consumers are more likely to

notice what, in other contexts, may be relatively minor differences in names. Id. In this

instance, consumers purchasing Registrant’s health insurance underwriting and administration

services are likely to exercise a relatively high degree of care, especially when, as Registrant

states, the vast majority of its healthcare insurance is provided through group programs

administered through employer groups (see Exhibit 2). Registrant does not provide property and

casualty insurance services under its mark and is certainly not providing such services geared to

the energy industry. In fact, as clearly shown on its own website, Registrant is a full-service

health insurer providing health insurance products for employer groups and individuals within a

21-county service area in Pennsylvania (see printouts from Registrant’s website attached as

Exhibit 3). It appears Registrant does not provide any other types of insurance products or

services. Conversely, Applicant is not providing health insurance underwriting under its GEMM

PROPERTY mark (see Applicant’s specimen of use and Exhibit 1).

It is well established that the goods or services are to be compared on the basis of the

description in the cited registration. See, e.g., Commerce Drug Co., Inc. v. Kirkman

Laboratories, Inc., 174 USPQ 265, 267 (CCPA 1972). Clearly, the services offered by the

parties under their respective marks are not competitive. See, Paul Sachs Originals Co. v. Sachs,

139 USPQ 414, 416 (9th Cir. 1963) (noting that lack of competition is a relevant, though not

determinative, consideration in determining likelihood of confusion). The services listed in

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Registrant’s application are different from Applicant’s recitation of services. Applicant submits

its property and casualty insurance services for the energy industry offered under its GEMM

PROPERTY mark are not likely to be confused with Registrant’s underwriting and

administration of health insurance offered under the eGEMS mark. Since Applicant and

Registrant provide different services to different consumers, source confusion is not likely. This

factor, thus, weighs against a finding of likelihood of confusion.

B. The Applicant’s And Registrant’s Services Are Sold In Different Channels
Of Trade

The marketing of the parties’ respective services is such that the services are not likely to

be encountered by the same persons under circumstances which would give rise to confusion.

In Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., the Federal Circuit

found no likelihood of confusion in a situation where plaintiff sold “E.D.S.” computer services

while the defendant sold “EDS” power supplies and battery chargers. Electronic Design, 21

USPQ2d 1388 (Fed Cir. 1992), reh’g denied, 1992 U.S. App. LEXIS 1505 (Fed. Cir. Feb. 4,

1992), reh’g, en banc, denied, 1992 U.S. App. LEXIS 2473 (Fed. Cir. Feb. 20, 1992) (reversing

the sustaining of an opposition; Federal Circuit permitted registration to issue to defendant-

applicant). The court determined that even though there was some overlap in markets, sales

were generally made in separate channels of trade to different persons. Id. at 1391. While both

parties sold their goods and services in the medical field, one sold its services to medical insurers

and the other sold its goods to makers of medical equipment. Even though the parties sold to the

same corporations in some instances, the purchases were made by different departments and

persons within those corporations. Id. at 1391-92.

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In this case, the channels of trade are even more distinct because Applicant offers its

property and casualty insurance services to the energy industry, whereas Registrant is offering its

health insurance services to plan administrators, human resource personnel and health care

consumers. If confronted by Applicant’s mark, Registrant’s customers would not reasonably

believe that Registrant had decided to expand into the property and casualty field and, moreover,

to provide such services to oil and gas companies. As discussed above, Applicant’s services are

targeted to chemical operators, petrochemical operators, utilities, power generation plants, oil

refineries, gas companies and the like. Further, Applicant is marketing its services at these

companies to discrete individuals that are managing or running the businesses. Applicant is

sending its brochures, advertisements and communications to these individuals. Also, Applicant

is likely advertising or promoting its services in energy publications, at energy forums and the

like. The channels of trade that Applicant is using to market its services offered under the

GEMM PROPERTY mark are distinct from Registrant’s channels of trade.

It is highly unlikely a consumer would be confused as to the origin of the marks or

believe that Registrant’s health insurance and healthcare enrollment and maintenance services

are similar to Applicant’s highly specialized property and casualty insurance services directed to

energy operators. Applicant’s services are marketed in different channels of trade from the cited

mark, and, as such, confusion is not likely.

C. Given The Crowded Field Of Similar Marks, Registrant’s Mark Should Be
Accorded A Fairly Narrow Scope Of Protection

Evidence of third-party use falls under the sixth DuPont factor, and is relevant to show

that the mark or a portion of the mark is descriptive, suggestive, or so commonly used that the

public will look to other elements to distinguish the source of the goods or services. See, e.g.,

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Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). If the evidence

establishes that the consuming public is exposed to third-party use of similar marks on similar

goods or services, this evidence “is relevant to show that a mark is relatively weak and entitled to

only a narrow scope of protection.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardign

Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005). This is because when a

significant number of trademarks exist in one class that incorporate certain elements, the degree

of recognition of the various marks in the minds of the relevant consumers is low and it is

considered a “crowded field.” See Carefirst of Maryland Inc. v. FirstHealth of the Carolinas

Inc., 77 USPQ2d 1492 (TTAB 2005). “In a crowded field of similar marks, each member of the

crowd is relatively weak in its ability to prevent use by others in the crowd.” One Industries

LLC v. Jim O’Neal Distributing Inc., 92 USPQ2d 1065, 1073 (9th Cir. 2009) (internal quotations

omitted). In fact, as explained in a highly regarded Trademark treatise, “a mark that is hemmed

in on all sides by similar marks on similar goods cannot be very ‘distinctive.’ It is merely one of

a crowd of marks. In such a crowd, customers will not likely be confused between any two of

the crowd and may have learned to carefully pick out one from the other.” 4 J. THOMAS

MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:85 (4th Ed. 2009).

Applicant respectfully submits that the existence of several third-party registrations and

common law marks using GEM, or formatives thereof, for insurance and financial services as

well as medical and healthcare related goods and services establishes that the Registrant’s mark,

which consists of that designation in combination with the letter “e” (signifying that the services

are provided by “electronic” means) is entitled to only a narrow scope of protection. In fact,

some of these third-party registrations identify services much more closely related to Registrant’s

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services than are Applicant’s services (see e.g., Reg. Nos. 2917064 and 2511553). Some

pertinent registered marks include the following:

Computer software for use in
GEMMS medical records database Reg. No. 2511706
management
Online subscription-based
web page for maintaining
GEMMS files and records concerning Reg. No. 2537681
the medical condition of
individuals
GEMSTAR GROUP DENTAL
Group dental health
PLANS
insurance underwriting and Reg. No. 2917064
[with GROUP DENTAL PLANS
administration services
disclaimed]
Providing employee benefit
administrative services to
GEMGROUP Reg. No. 2511553
single, multiple and multi-
employer benefit plan clients
Investment banking,
securities brokerage services,
GEMS Reg. No. 2361080
and various other financial
services
Security, mercantile,
GEM commodity and monetary Reg. No. 2088208
exchange services
Financial information
GEMX Reg. No. 3647719
services
Financial information
GEMI services and insurance Reg. No. 3258845
brokerage
GEMSHIELD Insurance brokerage Reg. No. 3351456
Financial services and
GEM SOLUTION
financial analysis and Reg. No. 2777178
[with SOLUTION disclaimed]
consultation, among others
GEM LOGIC
Appraisal services Reg. No. 2413210
[with GEM disclaimed]
Financial services, namely,
THE TRUE-GEM PROCESS
acting as a custodian for Reg. No. 2912327
[with PROCESS disclaimed]
retirement accounts
LITTLE GEM LIFE SCIENCES Financial services in the
FUND nature of purchase,
Reg. No. 3121643
[with LIFE SCIENCES FUND investment and trading of
disclaimed] securities for others
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GEMSTONE RESORTS Real estate investment and
Reg. No. 2444255
[with RESORTS disclaimed] brokerage services

Copies of the registration records for these marks are attached as Exhibit 4 hereto. 2

The foregoing list of trademark registrations demonstrates the Trademark Office’s

position that when other words and/or designs are added to the term GEM, or when the parties’

identified services are not identical, the resulting marks are not considered confusingly similar.

Also attached to Exhibit 4 are Internet uses of GEM and GEM-formative marks for

financial and insurance services, including Gateway Electronic Medical Management Systems,

LLC’s use of GEMMS for its medical records software products and services (see Reg. Nos.

2511706 and 2537681), Security Life Insurance Company of America’s use of GEMSTAR

GROUP DENTAL PLANS for group dental health insurance underwriting and administration

(see Reg. No. 2917064), GemGroup, L.P.’s use of GEMGROUP for employee benefit

administrative services (see Reg. No. 2511553), Morgan Stanley’s use of GEMS for financial

services (see Reg. No. 2361080), Chicago Mercantile Exchange’s use of GEM for its Growth

and Emerging Markets division (see Reg. No. 2088208), and numerous other GEM marks for

business, homeowners, property, commercial and health insurance services by various insurance

agencies and companies, such as Gem City Insurance, Gems Insurance, Gem State Insurance

Company, among others.

In many instances, these uses appear to have co-existed for some time on the Principal

Register together and in use. As many third parties are using GEM or marks incorporating GEM

in connection with various insurance and financial services, consumers have become educated to

2
Additionally, Applicant notes that the mark GEMLOC (Serial No. 77/275355) for financial services has been
issued a Notice of Allowance and the mark GEMSURANCE WWW.GEMSURANCE.COM and design (Serial No.
77/749341) for insurance agencies, brokerage, and underwriting services was published for opposition on October
20, 2009 (see Exhibit 4).

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realize the services originate from different entities. In re Broadway Chicken, Inc., 38 USPQ2d

1559, 1565 (TTAB 1996) (“Evidence of widespread third-party use, in a particular field, of

marks containing a certain shared term is competent to suggest that purchasers have been

conditioned to look to the other elements of the marks as a means of distinguishing the source of

goods or services in the field.”).

As explained, frequent use of a term as part of a trademark tends to weaken the trademark

significance of the term. See e.g., Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan

Association, 211 USPQ 844, 849 (5th Cir. 1981) (extensive third-party use of the word “sun”

was impressive evidence that there would be no likelihood of confusion between SUN BANKS

and SUN FEDERAL since the main part of both marks was determined to be weak, and minor

additions, thus, effectively negated any confusing similarity); In re Hamilton Bank, 222 USPQ

174 (TTAB 1984) (extensive third-party use of KEY established that confusion between marks

using the word KEY was unlikely). Similarly, the existence of a number of third-party GEM-

formative marks for services related to the services identified by Registrant serves to negate any

likelihood of confusion between the Applicant’s mark and Registrant’s mark, especially where,

as in the instant case, Applicant’s and Registrant’s marks and identified services are otherwise

different and distinguishable. Moreover, allowing numerous other third parties the right to

register a term containing GEM and then disallowing one additional party to register a similar

term would go against public policy and the spirit of consistent handling by the Trademark

Office. This factor, therefore, also weighs against a finding of likelihood of confusion.

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D. Purchasers Of The Services Exercise Such A High Degree Of Care That
Confusion Is Unlikely

Another factor to be considered in evaluating likelihood of confusion is whether the

relevant services are bought on impulse or are the subject of careful, sophisticated purchasing.

DuPont, at 567. The more sophisticated the consumers, the less likely they are to be misled by

similarity in marks. See Cadbury Beverages, Inc. v. Cott Corp., 37 USPQ2d 1508, 1513 (2d

Cir.1996). This factor, too, heavily favors a finding of no likelihood of confusion. The

Applicant’s services are offered to the energy sector and properties involving engineered risks,

specifically those energy companies having annual revenues up to $75 million (see specimen of

use), and are likely directed to CEOs, presidents, business owners and management of such

energy operations who are quite likely to be sophisticated, conscientious and discriminating

purchasers concerned about mitigating their risks. The energy field has special needs and energy

operators such as oil and gas companies, chemical companies and the like are involved in an area

that has specific risks. As such, it is likely these operators are very concerned with mitigating

their risks in the best manner possible and are likely to be discriminating and compare various

insurance companies’ coverage and policies. Since such insurance policies can also be a

significant business expense, such consumers will be even more discerning and selective.

Applicant notes that its policies have a minimum $25,000 premium per casualty account (see

Exhibit 1). Applicant’s consumers are, therefore, savvy and will be able to differentiate between

the health insurance services under Registrant’s eGEMS mark and the unrelated services

provided under Applicant’s GEMM PROPERTY mark.

The Registrant’s distinct health insurance services appear to be directed at agents,

administrators, human resource personnel and health care consumers who wish to view and

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update employee enrollment and benefit information online. While Registrant’s consumers

differ from those of Applicant, they too are sophisticated and will understand that Registrant and

its mark are in no way related to or affiliated with Applicant and its mark. People seeking health

care coverage and administrators who are responsible for updating employee benefit information

are likely to be discriminating and sophisticated consumers who will conduct research prior to

deciding on the appropriate vehicle or policy. In fact, Applicant would argue that, given the

trade channels used and consumers targeted for its services, it is unlikely that Registrant’s

consumers will even come into contact with Applicant and its GEMM PROPERTY mark. The

parties’ respective consumers will, therefore, be able to differentiate between the various services

offered under the parties’ respective marks.

Although Applicant acknowledges that purchasers’ sophistication and knowledge with

respect to a particular field does not make them immune from source confusion, great weight

should nonetheless be afforded Applicant in this instance since the parties’ respective marks

differ in sound, appearance, meaning and overall commercial impression, their respective

identified services are not closely related, and their customers and trade channels differ. TMEP

§ 1207.01(d)(vii) states that “circumstances suggesting care in purchasing may tend to minimize

likelihood of confusion.” This is precisely the situation at hand. The sophistication of the

purchasers helps to mitigate any potential finding of a likelihood of confusion, and this DuPont

factor, therefore, also weighs in favor of Applicant.

E. The Cited Mark Is Not Identical To Applicant’s Mark

The Office Action states a well-known principle of trademark law that if “the marks of

the respective parties are identical, the relationship between the goods and/or services of the

respective parties need not be as close to support a finding of likelihood of confusion as might

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apply where differences exist between the marks.” The Office Action further claims that the

parties’ respective marks are “virtually identical.” Applicant respectfully disagrees and submits

that a determination of whether a likelihood of confusion exists requires a comparison of both

marks in their entireties. See Massey Junior College, Inc. v. Fashion Institute of Technology,

492 F.2d 1399 (CCPA 1974). It is well-settled that in determining whether there is a likelihood

of confusion, the marks should be viewed as a whole, and should not be dissected. In re

National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985). Additionally, a disclaimer does not

remove the disclaimed matter from the mark. The mark must still be regarded as a whole,

including the disclaimed matter, in evaluating similarity to other marks. TMEP § 1213.10, and

cases cited therein. Applicant submits that when compared in their entireties, the parties’ marks

are not confusingly similar, and definitely not identical.

In the instant case, the Applicant’s mark eGEMS and the Registrant’s mark GEMM

PROPERTY differ in sound, appearance, and meaning, and convey different overall commercial

impressions, thus, distinguishing them from one another. This is supported by the fact that the

USPTO has allowed numerous third parties to register marks containing the word GEM in Class

36, as referenced in Section C above. As the Examining Attorney aptly notes in her Office

Action, the “e” in Registrant’s mark stands for “electronic”. In fact, the Registrant’s mark as a

whole is an acronym for its “Electronic Group Enrollment Maintenance System (eGEMS)” (see

Office Action evidence and Exhibit 2 to this Response). In contrast, Applicant’s GEMM

PROPERTY mark stands for “Global Energy Middle Market Property,” as clearly shown in its

specimen, and its services under this mark serve the needs of small and middle market energy-

related businesses as explained above. The parties’ distinct and sophisticated consumers will

undoubtedly recognize the different meanings between these two marks, especially given the

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limitations on their services as identified in the application and registration. This fact in

conjunction with the other factors mentioned above helps to minimize any potential for

confusion. This DuPont factor, therefore, also weighs against a finding of likelihood of

confusion.

CONCLUSION

In light of the foregoing, Applicant submits that there is no likelihood of confusion

between the Registrant’s mark eGEMS and the Applicant’s mark GEMM PROPERTY when

used in connection with their respective identified services. Applicant, therefore, respectfully

requests that the Examining Attorney withdraw the Section 2(d) refusal and pass Applicant’s

mark on for publication.

Respectfully submitted,

Date: November 23, 2009 _
Boris Umansky
LEYDIG, VOIT & MAYER, LTD.
Two Prudential Plaza, Suite 4900
180 N. Stetson
Chicago, IL 60601-6780
Phone (312) 616-5600
Attorneys for Applicant

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