Above & Beyond

Trademark Trial and Appeal Board

Aug 27, 1999

No. 75167440 (T.T.A.B. Aug. 27, 1999)

Paper No. 12
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUGUST 27,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Above & Beyond
________
Serial No. 75/167,440
_______
Gene S. Winter and Stephen P. McNamara of St. Onge Steward
Johnston & Reens LLCs for Above & Beyond.
Kathleen M. Vanston, Trademark Examining Attorney, Law Office 103
(Michael A. Szoke, Managing Attorney).
_______
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Above & Beyond has filed an application to register the
mark "ABOVE & BEYOND" for "travel agency and tour services,
namely, making reservations and bookings for transportation and
arranging transportation for groups for adventure and ecology
tours for corporate, organization and consumer travelers and
tourists".1

1 Ser. No. 75/167,440, filed on September 17, 1996, alleging dates of
first use of "September, 1996," which in light of Examination Guide
No. 1-95, are read as September 12, 1996, the date the application was
signed.
Ser. No. 75/167,440
2
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, when applied to its goods, so resembles the
mark "ABOVE & BEYOND," which is registered, as shown below,
for "educational services, namely, conducting a training program
for travel agents,"2 as to be likely to cause confusion, mistake
or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
Inasmuch as applicant's and registrant's marks are
identical,3 the only real issue in this appeal is whether the
respective services are so related that, when rendered under the
mark "ABOVE & BEYOND," confusion as to the source or sponsorship
thereof is likely to occur. Applicant, in this regard, insists
that the only similarity between its travel agency and tour
services and registrant's educational training program services
for travel agents is that they both relate generally to the

2 Reg. No. 1,608,524, issued on July 31, 1990, which sets forth dates
of first use of February 25, 1988; combined affidavit §§8 and 15.
3 Applicant, we observe, does not contend otherwise.
Ser. No. 75/167,440
3
travel industry. Applicant notes, however, that its services
"include hiking, biking, and kayak tours, as well as corporate
retreats"; that it "arranges ... all requisite transportation,
lodging, and meeting areas for the tours"; and that its
"prospective customers include corporate entities, educational or
non-profit groups, and the general public."
In view thereof, and citing the statement in Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d
713, 21 USPQ2d 1388, 1390 (Fed. Cir. 1992), that when dealing, as
is the case herein, with services which are sold, "our concern is
directed primarily toward the likelihood of confusion among
actual and potential purchasers," applicant contends that it is
not enough that the respective services are in the same travel-
related field. Instead, citing such cases as In re Shipp, 4
USPQ2d 1174 (TTAB 1987), and Astra Pharmaceutical Products, Inc.
v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st
Cir. 1983), applicant maintains that:
Appellant’s service allows consumers to
travel on a tour or make travel arrangements,
while registrant’s service is for the
education of travel agents. Appellant’s
prospective customers are the general public,
while registrant’s prospective customers are
persons in the travel industry. Appellant’s
product [sic, should be "service"] is aimed
at the general public, while registrant’s is
aimed at the travel agency companies training
their agents. There is little or no
overlapping of potential customers, thereby
eliminating a likelihood of confusion.
The Examining Attorney, while conceding in her brief
that a likelihood of confusion must be shown among a common group
or class of purchasers, argues that:
Ser. No. 75/167,440
4
The [respective] services ... need not be
identical or directly competitive to find a
likelihood of confusion. They only need to
be related in some manner, or the conditions
surrounding their marketing be such, that
they could be encountered by the same
purchasers under circumstances that could
give rise to the mistaken belief that the
services come from a common source. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Corning Glass Works, 229 USPQ 65 (TTAB 1985).
While also acknowledging, with respect to registrant’s services,
that "[t]he relevant consumers are obviously travel agents,
because the educational program is directed to them," the
Examining Attorney contends that, as to applicant’s services, the
relevant classes of purchasers "includes travel agents making
travel plans on behalf of the general consumer" as well as
members of the general public.
In consequence thereof, the Examining Attorney asserts
that confusion is likely because:
It is possible ... that these agents may work
in conjunction with the applicant in the
process of making travel arrangements on
behalf of their customers. Travel agents may
assume a relationship between an organization
which trains travel agents and an
organization which makes travel arrangements.
In addition, individuals who have
received travel agent training are likely to
seek professional employment in the field.
Prospective employees may assume a
relationship between an organization which
offers travel agency services and one which
provides training for travel agents.
Thus, according to the Examining Attorney, "[t]he channels of
trade for the services of registrant and applicant can overlap"
and "[t]he issue becomes whether it would be reasonable to assume
Ser. No. 75/167,440
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that an organization which trains travel agents also offers
travel agency services."
As support for her contention that such would indeed be
reasonable, the Examining Attorney has made of record copies of
eight third-party registrations, each of which issued on the
basis of use in commerce, showing that in each instance the same
mark is registered for various educational services, on the one
hand, and travel agency services or arranging travel tours, on
the other.4 Such registrations, in relevant part, specifically
encompass the following services:
(a) "arranging travel tours directed to
the study of urban environment, health and
safety policy practices" and "conducting
workshops and training seminars in the fields
of corporate international environmental
management, environmental auditing, waste
minimization, total product life-cycle
analysis, and waste remediation practices";
(b) "arranging and conducting outdoor
and recreation tours and trips, and
wilderness adventure trips, excursions, and

4 As stated in In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
(TTAB 1988) at n. 6:
Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a
single source. See: In re Great Lakes Canning, Inc., 227
USPQ 483, 484 (TTAB 1985), and In re Phillips-Van Heusen
Corp., 228 USPQ 949 (TTAB 1986). ....
Although the Examining Attorney also included two additional third-
party registrations, which were issued pursuant to the provisions of
Section 44 of the Trademark Act, 15 U.S.C. §1126, it is pointed out
that such registrations "are not even necessarily evidence of a
serious intent to use the marks shown therein in the United States on
all of the listed ... services, and they have very little, if any,
persuasive value on the point for which they were offered." Id.
Ser. No. 75/167,440
6
expeditions" and "educational and
recreational services, namely providing and
conducting courses ... for learning about ...
the outdoors ...";
(c) "travel agency services" and
"educational services, namely conducting
language classes";
(d) "arranging snorkeling and diving
travel tours" and "educational services,
namely providing courses of instruction in
snorkeling, diving, and water related
sports";
(e) "travel services, namely arranging
tours" and "education services, namely
providing courses and seminars in the fields
of earth science, life science, physical
science, environmental studies, history,
social studies and foreign languages";
(f) "arranging travel tours, excursions
and environmental expeditions" and
"educational services, namely conducting
workshops ... regarding zoologic and aquatic
animals ...";
(g) "travel arrangement services for
educational and cultural exchange programs"
and "conducting language courses"; and
(h) "arranging travel tours for others"
and "educational services, namely arranging
and conducting ... seminars and lectures on
the subject matter of investments, health,
travel, retirement and entertainment".
According to the Examining Attorney, such evidence shows that "it
is not uncommon for a single organization to provide both
educational services and travel services" and, thus, "[i]t would
be reasonable ... for travel agents to assume that a single
organization would provide both educational and travel services."
We find, however, that the evidence furnished by the
Examining Attorney plainly does not establish that the respective
services involved in this appeal are so related that, when
Ser. No. 75/167,440
7
rendered under the identical mark "ABOVE & BEYOND," confusion is
likely. None of the third-party registrations indicates that the
same entity provides both travel agency services and the
educational services of conducting a training program for travel
agents. Instead, each of such registrations shows that the
particular educational services set forth therein would be
offered to the same classes of purchasers as would be customers
for travel agency services.
Absent evidence, therefore, demonstrating that travel
agents, who would constitute the exclusive users of registrant’s
services, which in turn would generally be purchased by the
travel agencies at which the agents are or will be employed,
would also be appreciable customers for applicant’s travel agency
and tour services, we are constrained to agree with applicant
that there does not appear to be a significant commonality of
purchasers and channels of trade. Confusion, therefore, would
not be likely to occur. See, e.g., In re Shipp, supra at 1176
["PURITAN" and design for "laundry and dry-cleaning services"
held not likely to cause confusion with either "PURITAN" for
"commercial dry cleaning machine filters" or "PURITAN" for "dry
cleaning preparations" since the services and goods "are not so
related that they would come to the attention of the same kinds
of purchasers"] and In re Fesco Inc., 219 USPQ 437, 438-39 (TTAB
1983) ["FESCO" and design for "distributorship services in the
field of farm equipment and machinery" found not likely to cause
confusion with "FESCO" for, inter alia, "foundry processing
equipment and machinery--namely, ... tanks" because "the record
Ser. No. 75/167,440
8
does not admit of a reasonable probability of an encounter of
opposing marks by the same customers"].
Finally, as to the Examining Attorney’s assertions
that, because travel agents "may come into contact with
applicant’s services in the course of seeking employment or in
the course of making travel arrangements for a client," they in
either event "may assume a relationship between an organization
which trains travel agents and one which makes travel plans for
others," we note that those seeking travel agency employment
would usually not be purchasers of travel agency or tour
services5 and that travel agents would generally utilize their
own travel agency services, rather than those of others, in
making travel arrangements for their clients. The scenarios
postulated by the Examining Attorney are simply too speculative
or insignificant to form a basis on which to predicate a holding
of a likelihood, as opposed to a mere possibility, of confusion
as to origin or affiliation, even when the services at issue
herein are rendered under the identical mark.

5 Although, in rare instances, travel agents might have occasion to
utilize travel agencies other than their employers to arrange their
own travel plans, the fact remains that, unlike members of the general
public, travel agents would, by the very nature of their occupations,
be sophisticated and careful purchasers when it comes to the market
for travel tours and would be markedly less likely to assume that the
same entity which conducts travel agent training courses also provides
or sponsors travel agency and tour services. In any event, as our
principal reviewing court, quoting from Witco Chemical Co., Inc. v.
Whitfield Chemical Co., Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA
1969), reaffirmed in Electronic Design & Sales, Inc. v. Electronic
Data Systems Corp., supra at 1391:
We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.
Ser. No. 75/167,440
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Decision: The refusal under Section 2(d) is reversed.
R. L. Simms
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board