1travel.com, Inc.

Trademark Trial and Appeal Board

Aug 29, 2002

No. 76016399 (T.T.A.B. Aug. 29, 2002)

Mailed: August 29, 2002
Paper No. 13
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re 1travel.com, Inc.
________
Serial No. 76/016,399
_______
Rita M. Irani of Haynes and Boone, L.L.P. for 1travel.com,
Inc.
Steven W. Jackson, Trademark Examining Attorney, Law Office
114 (K. Margaret Lee, Managing Attorney).
_______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by 1travel.com, Inc. to
register ONETRAVEL.COM as a service mark for the following
services:
Travel agency services, namely making reservations
and bookings for transportation on an interactive
web site, including providing and relaying
information, and securing payment in connection
with such bookings by electronic means in
in Class 39; and
Making reservations and bookings for temporary
lodging on an interactive web site, including
Ser No. 76/016,399
2
providing and relaying information, and securing
payment in connection with such bookings by
electronic means in Class 42.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if used in connection with
the identified services, so resembles the following marks,
which are registered to the same entity, as to be likely to
cause confusion, mistake or deception:
(1)
for “travel agency services;”2 and
(2) TRAVEL ONE for “travel agency services, namely,
making reservations and bookings for
transportation, and travel agency services,
namely, making reservations and bookings for
temporary lodging”.3
1 Application Serial No. 76/016,399, filed April 3, 2000, based
on the assertion of applicant’s bona fide intent to use the mark
in commerce.
2 Registration No. 1,573,888 issued December 26, 1989 on the
Principal Register; renewed.
3 Registration No. 2,120,877 issued December 16, 1997 on the
Principal Register. The word “TRAVEL” is disclaimed apart from
the mark as shown.
Ser No. 76/016,399
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Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods/services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the services, applicant argues that
the services are different because its travel agency and
associated services will be offered through an interactive
web site on the Internet, whereas registrant’s travel
agency services are provided through “conventional” means,
i.e., a retail establishment. One problem with this
argument is that the question of likelihood of confusion
must be determined on the basis of the goods and/or
services as they are identified in the subject application
and registration, not on what the evidence shows the goods
and/or services to be. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, NA, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc.,
Ser No. 76/016,399
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190 USPQ 47 (TTAB 1976). Although applicant’s recitation
of services indicates that its travel agency and associated
services will be provided on an interactive web site, the
recitation of services in the cited registration contains
no restrictions as to channels of trade. Thus, for
purposes of our analysis, we must assume that registrant’s
travel agency services are rendered through all the normal
channels of trade, which would include on an interactive
web site. In short, applicant and registrant’s services
are legally identical. Further, in the absence of any
restrictions in either applicant’s application or the cited
registrations as to classes of purchasers, we must assume
that applicant and registrant’s services may be offered to
all of the usual purchasers of these kinds of services,
which would include ordinary consumers. Thus, even if we
were to accept applicant’s position that its travel agency
services and those of the registrant will be offered in
different channels of trade, they could still be
encountered by the same consumers.
This brings us to consideration of the marks.
Applicant contends that the marks have different commercial
impressions, with its mark connoting “the first or foremost
in the online travel business” and registrant’s mark
connoting “a person or entity engaging in travel, e.g., the
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traveling one.” (Brief, p. 5). Further, applicant argues
that the cited marks are weak because the word “travel” is
generic for registrant’s services and the number “one” is
laudatory. Thus, applicant argues that the cited marks are
not entitled to a broad scope of protection.4
The Examining Attorney argues that the generic domain
name “.COM” in applicant’s mark has no source-indicating
function, and thus the dominant portion of applicant’s mark
is ONETRAVEL which is essentially a transposition of TRAVEL
ONE, which is the entirety of one of registrant’s marks and
the dominant portion of the other.
After careful consideration of the arguments of
applicant and the Examining Attorney, we find that the
marks, when considered in their entireties, are
sufficiently similar in overall commercial impression that
4 In support of this contention, applicant submitted, for the
first time with its brief on the case, three lists of third-party
registrations and applications for marks that include the word
“travel”, or the number “one.” Under Trademark Rule 2.142(d),
“evidence” submitted for the first time with a brief on appeal is
considered by the Board to be untimely and therefore given no
consideration. In view thereof, we have not considered the lists
of third-party registrations and applications submitted with
applicant’s brief in reaching our decision herein. Even though
we have not considered this untimely evidence, we recognize, as
discussed herein, that “travel” and “one” are descriptive and/or
laudatory terms.
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if applicant’s mark were used in connection with the
identified services, confusion would be likely. As our
principal reviewing court, the Court of Appeals for the
Federal Circuit, has pointed out, “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of
likelihood of confusion declines.” Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
As correctly noted by the Examining Attorney, the
dominant portion of applicant’s mark is ONETRAVEL; the
“.COM” portion of the mark is merely a generic domain name
and serves no source-identifying function. Further, TRAVEL
ONE is the entirety of one of registrant’s marks and it is
the dominant portion of the other. Thus, we agree with the
Examining Attorney that applicant’s mark is essentially a
transposition of registrant’s marks.
As to applicant’s argument that the marks have
different connotations, we cannot agree that consumers will
ascribe the connotations suggested by applicant to these
marks. Consumers may well see applicant’s mark
ONETRAVEL.COM and registrant’s marks TRAVEL ONE and TRAVEL
ONE and design as suggesting the first or number one in
travel.
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Further, it must be remembered that in determining
whether marks are similar, a side-by-side comparison of the
marks is not the proper test. Rather, it is the overall
commercial impression of the marks, which will be recalled
over a period of time by the average consumer, that must be
taken into account.
Finally, although we did not consider the lists of
registrations/applications submitted by applicant, we have
not overlooked the obviously descriptive/generic nature of
the word “travel” for travel agency services and the
laudatory nature of the number “one”. However, even weak
marks are entitled to protection against confusingly
similar marks. In this case, applicant and registrant’s
marks are substantially similar and the services are
identical.
In sum, based on the substantial similarity in the
marks, the identity of the services, trade channels and
purchasers, we find that there is a likelihood that
consumers would be confused if applicant were to use the
mark ONETRAVEL.COM in connection with travel agency and
associated services offered on an interactive web site in
view of the previously registered marks TRAVEL ONE and
TRAVEL ONE and design for travel agency services.
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Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed in both Classes 39 and 42.