Ameritech Corp.v.Matthew Hollingsworth

Trademark Trial and Appeal Board

May 19, 1999

No. 91103153 (T.T.A.B. May. 19, 1999)

Paper No. 44
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Ameritech Corporation
v.
Matthew Hollingsworth
_____
Opposition No. 103,153
to application Serial No. 74/648,621
filed on March 20, 1995
_____
Robert Mallin of Brinks Hofer Gilson & Lione for Ameritech
Corporation.
Matthew Hollingsworth, Pro Se.
______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Matthew Hollingsworth has filed an application for
registration of the mark “AMERITECH ROOFING SYSTEMS” (with
the words “roofing systems” disclaimed) for “residential and
commercial roofing installation and repair services.”1
Ameritech Corporation, a Delaware corporation, filed a
timely notice of opposition on August 5, 1996. As grounds

1 Serial No. 74/648,621, filed March 20, 1995, alleging dates
of first use of October 17, 1994.
Opposition No. 103,153
2
for opposition, opposer asserts prior use of the following
registered trademarks:
Œ Reg. No. 1,463,091 of the word “AMERITECH” for
“communication services, namely, telephone and
telecommunication services.”
Œ Reg. No. 1,487,821 of the mark “AMERITECH and design”
shown below, for “providing telecommunications
services.”
Œ Reg. No. 1,487,820 of the mark “AMERITECH and design” as
shown below, for “providing telecommunications
services.”
Œ Reg. No. 1,763,321 of the composite mark “AMERITECH
AUDIOTEX SERVICES INC. and design” as shown below, for
“voice response services via telephone.”
Œ Reg. No. 1,732,593 of the mark “AMERITECH BUSINESS
SYSTEMS” for “telephones.”
Œ Reg. No. 1,760,203 of the mark “AMERITECH INFORMATION
SYSTEMS and design” for “managing telecommunications
systems and equipment for others.”
Opposition No. 103,153
3
Œ Reg. No. 1,784,637 of the words “AMERITECH INFOSERVE”
for “environmental services to detect and provide early
warning of leaks of halogen-based gases.”
Œ Reg. No. 1,758,773 of “AMERITECH MOBILE COMMUNICATIONS
and design” as shown below for “telecommunications
services.”
Œ Reg. No. 1,855,991 of the mark “AMERITECH TEAM DATA” for
“telecommunications services; namely, electronic
transmission of messages and data.”
Œ Reg. No. 1,761,725 of “AMERITECH VOICE MESSAGING and
design,” as shown below, for “voice messaging services;
namely, the recording, storage and retrieval of voice
messages by telephone.”
Œ Reg. No. 1,890,203 of “AMERITECH and design,” as shown
below, for “telecommunication services, namely
electronic and wireless transmission, recording,
storage, and retrieval of voice, data and information.”
Opposition No. 103,153
4
Œ Reg. No. 1,791,980 of “AMERITECH SENIOR OPEN and
design,” as shown below, for “entertainment services;
namely, organizing, promoting and sponsoring golf
tournaments.”
Œ Reg. No. 2,041,730 of “AMERITECH” with a typed drawing,
and Reg. No. 2,041, 729 of “AMERITECH and design,” as
shown below, for “billing services, namely, billing of
local telephone customers for telecommunications
services provided by others; advertising services,
namely, distribution of printed matter and electronic
transmission of advertising and promotional information
for others.”
Œ Reg. No. 2,052,153 of the mark “AMERITECH” and Reg. No.
2,033,614 of “AMERITECH and design,” as shown below,
both registrations for “travel kits consisting primarily
of mouthwash, aftershave, shampoo and lotion, in Int.
Cl. 3; shopping bags (leather, mesh or textile), duffel
bags, fanny packs, attaché cases, tote bags, business
card holders, umbrellas, luggage tags, garment bags for
Opposition No. 103,153
5
travel, in Int. Cl. 18; non-metal key rings, non-metal
key separators, portable chairs and hand-held mirrors,
in Int. Cl. 20; mugs; commuter cups; portable beverage
coolers, namely, insulated sleeves for holding canned or
bottled beverages; hand tools, namely, ice scrapers;
plastic clips for holding food bags closed; water
bottles sold empty; and plastic coasters, in Int. Cl.
21; golf towels, in Int. Cl. 24; golf shirts, T-shirts,
sweat shirts, hats, caps, sweaters, jackets, wind
shirts, visors and button down shirts, in Int. Cl. 25;
sewing kits consisting primarily of buttons, pins,
needles, thread and miniature scissors, in Int. Cl. 26;
and, golf bag covers, golf balls, golf ball markers,
golf tees, yo-yos and aerodynamic disks for use in
playing catch games, in Int. Cl. 28.”
Œ Reg. No. 2,029,954 of “AMERITECH and design,” as shown
below, for “telecommunication services, namely, the
recording, storage and subsequent transmission of voice
messages by telephone; electronic transmission of
messages and data; electronic store and forward
messaging; and telephone communication services.”
Opposition No. 103,153
6
Œ Reg. No. 2,033,611 of the mark “AMERITECH” in a typed
format, and Reg. No. 2,028,584 of the mark “AMERITECH
and design,” as shown below, both registrations for
“shoeshine kits consisting primarily of shoe polish,
shoe polish applicators, and buffers, in Int. Cl. 3;
first aid kits for non-professional use, in Int. Cl. 5;
metal key rings and metal key separators, in Int. Cl. 6;
manicure sets and hand tools, namely, screwdrivers, in
Int. Cl. 8; sunglasses; calculators; tape measures with
and without levels; sports radios; computer peripherals,
namely, mouse pads; magnets; and telephone caller
identification display units, in Int. Cl. 9;
flashlights, in Int. Cl. 11; desk clocks; watches;
travel alarm clocks with flashlights; and lapel pins, in
Int. Cl. 14; telephone indexes; letter openers; paper
clip holders; pencils; pens; road maps; highlighter
pens; paper containers; paper coasters; file folders;
stationery folders; and hanging folders, in Int. Cl.
16.”
Opposition No. 103,153
7
Œ Reg. No. 2,039,934 of the mark “AMERITECH SECURITYLINK”
shown in a typed drawing format, and Reg. No. 2,039,933
of “Ameritech SecurityLink and design,” as shown below,
both registrations for “security systems for residential
and commercial use, namely, motion detectors; signal
transmitting devices; security cards and security card
access reading devices; door and window sensors; smoke
and fire detectors; video and audio surveillance units;
and devices for monitoring building temperature, tank
level, and pumps; and air quality detection devices, in
Int. Cl. 9; credit card services for payment of
commercial and residential security services, in Int.
Cl. 36; installation, maintenance and repair of
residential and commercial security systems, in Int. Cl.
37; monitoring of alarmed residential and commercial
security systems and security system consultation
services, in Int. Cl. 42.”
and,
Œ Reg. 1,996,235 of “AMERITECH and design,” as shown
below, for “telephone and business directories.”
Opposition No. 103,153
8
As a result of its ownership of this collection of
registrations, opposer alleges that applicant’s mark, as
used in connection with applicant’s services, so resembles
opposer’s marks as to be likely to cause confusion within
the meaning of Section 2(d) of the Lanham Act.
Applicant, in his answer, has admitted that he filed
the instant application, but has otherwise denied the
salient allegations of the opposition. A trial was
conducted and briefs have been filed, but neither party
requested an oral hearing.
In evidence are the pleadings; the file of the opposed
application; and the testimony depositions, with exhibits,
taken by opposer. Applicant, Matthew Hollingsworth, has
presented no evidence.
Opposer argues that inasmuch as the term “Ameritech” is
a fanciful term not otherwise found in the English language,
that this is an inherently strong mark. Furthermore, the
confidential testimony in the record shows that opposer has
spent billions of dollars over the years promoting its
“AMERITECH” marks. We are told by several witnesses that a
number of opposer’s nationwide services require sustained
periods of work on the roofs of residential or commercial
properties. Opposer has in place very detailed guidelines
for the proper usage of its “AMERITECH” marks in order to
promote its national identity, and has used the name
Opposition No. 103,153
9
consistently on an array of items used by its employees,
from uniforms and caps to the company’s utility vans.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont DeNemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). This
case sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
As can be seen from the extensive listing of federal
registrations owned by opposer, “AMERITECH” is clearly the
centerpiece of opposer’s service marks and trademarks.
However, we note that substantially all of its core services
involve relatively high-technology sectors (i.e.,
telecommunication services, alarm services,
voice/data/information transmission and storage, etc.). Its
nationwide advertising is designed to raise consumer
awareness of its brand name for these services.
Furthermore, the claimed registrations for goods list a
variety of collateral products used to promote opposer’s
AMERITECH marks among consumers.
When making a likelihood of confusion determination
under Section 2(d) of the Act, we must view the respective
marks in their entireties. Yet, one feature of a mark may
be recognized as having greater significance in creating the
overall commercial impression. In this context, greater
weight can be given to a dominant feature in determining
Opposition No. 103,153
10
whether there is a likelihood of confusion. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985);
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976); and In re J.M. Originals Inc., 6 USPQ2d
1393 (TTAB 1988). Disclaimed matter is typically less
significant in this analysis. Here, the dominant, non-
disclaimed portion of applicant’s mark is identical to some
of opposer’s marks, and is identical to the consistently
dominant portion of opposer’s composite marks.
Opposer’s earlier corporate name was “American
Information Technology Corporation.” Based upon the record,
we find that the word “AMERITECH” is a suggestive shorthand
term derived from the words “American” and “Technology.”
Now, through extensive use and promotion, it has clearly
become a strong mark in the field of telecommunications.
Hence, we turn our attention to the fame of opposer’s
marks. Opposer has spent significant amounts of money
promoting this mark, through general as well as targeted
advertising, trade shows, charitable giving, sponsorship of
professional sporting events that are also broadcast on
nation-wide television, etc. While most of the relevant
figures as to sales and advertising are protected in this
proceeding as “confidential,” opposer’s evidence convinces
this Board that the “AMERITECH” mark is known to a
substantial segment of the relevant public. Specifically,
Opposition No. 103,153
11
given the way in which the “AMERITECH” mark is clearly
associated in the United States with particular high-tech
goods and/or services, we are most comfortable herein
holding that “AMERITECH” is indeed a well-known mark in the
areas of telecommunications, voice messaging, telephone and
business directories, and security systems.
On the other hand, unlike a patent or copyright, a
trademark does not confer on its owner any rights in gross
or at large.2 Accordingly, the determinative issue in this
case is whether a likelihood of confusion exists when the
respective marks are used in connection with the parties’
non-competing services. After weighing all the other
relevant du Pont factors, we find that this case turns on
the similarity or dissimilarity in the nature of the
services as described in applicant’s trademark application,
compared with the array of services specified in opposer’s

2 The sole issue before this Board is likelihood of confusion.
In the absence of any likelihood of confusion, the unauthorized
use of a well-known mark on non-competing goods could lead to the
dilution of the owner’s mark. Opposer has voiced its concerns
that the favorable connotation consumers have of its “AMERITECH”
mark could well be blurred or tarnished by applicant’s use of
“Ameritech Roofing Systems.” This in turn could lead to a
serious impairment of the exclusive association between opposer’s
well-known “AMERITECH” mark and the opposer’s goods and services.
However, Section 2(d) of the Lanham Act does not cover trademark
dilution, and this Board has previously determined that dilution
now covered by recently-enacted federal legislation is not a
ground for an opposition proceeding before the Trademark Trial
and Appeal Board. See Babson Bros. Co. v. Surge Power Corp., 39
USPQ2d 1953 (TTAB 1996).
Opposition No. 103,153
12
registrations (and any other services with which the record
demonstrates its prior marks are being used).
We understand that opposer participates almost weekly
in a variety of national and regional trade shows, including
ones directed to the building trades. For example, in
February 1996 opposer’s Ameritech Building Automation
Services group was touting the open architecture of its
building automation systems at a large trade show in
Atlanta, Georgia. This event was directed to air
conditioning, heating and refrigeration engineers. The show
directory also reveals the presence of fellow exhibitors
selling roofing products. (Martha Hudak deposition, pp. 4 –
9). However, given the scope of goods and services required
in any large building project, vendors involved in selling
totally unrelated goods or services may well find themselves
at a single trade show targeting the same group of buyers
representing large companies in the building trades.
Opposer has demonstrated that, inter alia, its
telecommunications, cable and alarm installers wear attire
and drive trucks prominently displaying the “AMERITECH”
mark. Hypothetically, we can envision a worker wearing a
uniform labeled “AMERITECH,” scaling a ladder at the roof
line of a suburban Denver home with her “AMERITECH” truck
parked in the driveway. However, the critical issue herein
is not whether a neighbor driving by this suburban residence
Opposition No. 103,153
13
confuses a cable TV technician with a roofer.3 In fact, it
may be relevant, but still much too narrow a focus, to
question whether the suburban homeowner with a leaky roof,
who knows of opposer’s services and service marks,
erroneously thinks Mr. Hollingsworth may in some way be

3 In its brief, opposer argues as follows:
“… In any event, some of the services offered by Ameritech
include the installation and maintenance of telephone lines and
equipment; the installation, repair and maintenance of security
systems; the installation of cable television systems; and the
installation and maintenance of building automation systems. All
of this work is done by Ameritech field technicians. They wear
Ameritech uniforms, perform aerial work on roofs and ladders at
the roof line, use a variety of hand tools, work at both
residential and commercial sites, and drive utility vans with
ladders mounted on top.
“In comparison, Hollingsworth’s recited services are for
residential and commercial roofing installation and repair
systems. Based on that description, Hollingsworth undoubtedly
also performs aerial work on roofs and ladders at the roof line,
uses a variety of hand tools, works at both residential and
commercial sites, and even most likely drives a utility van with
ladders mounted on top. In fact, Ameritech field technicians
often work side-by-side with a roofer. There can be no question
that the parties’ goods and services are similar and support a
finding of a likelihood of confusion.” Main Brief for Opposer,
pp. 17 – 18.
See also deposition of Michael S. Leary, pp. 12 – 13, as
follows:
Q: Mr. Leary, when the technicians are installing the cable
TV, where is the cable installed at the house?
A: Generally it’s on the side of the home…at about the roof line
on the side of a customer’s home…where the eaves and the sides of
the home meet, anywhere between 12 feet and 18 feet, depending
upon how tall the home is.
Q: Would it be typical to walk by an installation and see the
Ameritech technicians working up on a ladder next to the root?
A: Yes. Every one of the homes that we provide service to in
an aerial environment would require a technician to have a ladder
on the side of the home doing an attachment up on the roof line…
Q: And when the Ameritech technicians are doing an
installation, where is the van parked?
A: Generally, we require our technicians to park either in
front of the home or at the end of the driveway…
Opposition No. 103,153
14
connected with opposer and its array of services.4 The
relevant group of potential purchasers comprises more
classes of individuals than the residential homeowner, the
commercial building manager, or someone passing a work-site.
Rather, the issue is whether upon encountering applicant’s
service mark used in connection with roofing services, any
potential consumer of opposer’s services is likely to
conclude that opposer, known for its high technology
services, also renders roofing installation and repair
services.5 After reviewing carefully the entire record put
forward by opposer, we conclude that the extent of potential
confusion of this nature is de minimis. In fact, the record
contains no evidence that any single provider of goods or

4 Q: When you mention Ameritech products and services, what
are … the products and services offered under the Ameritech
brand?
A: A wide variety of goods and services including
telecommunications services, leasing and financial services,
entertainment, health information, computer hardware and
software, security systems, cable TV, Internet access including
Internet Web page creation, home automation services, and a
variety of other lines of business, and Ameritech is continually
looking for and getting into new businesses and growth areas.
(Valerie Barker deposition, p. 16)
5 Consistent with opposer’s stance throughout this proceeding,
one witness opined as follows on this very point:
Q: Is Hollingsworth’s use of Ameritech Roofing Systems harming
Ameritech?
A: Yes.
Q: Why?
A: Because [the mark is] identical, and we’ve used the
Ameritech name for so many different products and services that
the consumer looking at that would be very confused and assume
that this was part of our company, Ameritech. The Ameritech name
is so well known that the use would –- that the consumer would
think that this was just another Ameritech product expansion…”
Opposition No. 103,153
15
services is engaged in such disparate activities -- roofing
installation and repair services on one hand, and
telecommunications, voice messaging, telephone and business
directories, or security systems, on the other hand.
Accordingly, in spite of the fact that “AMERITECH” is a
well-known mark in several high-tech fields -- voice
messaging, telecommunications, telephone and business
directories, and security systems -- we find that
applicant’s services are not related to those of opposer.
The record contains no evidence that anyone provides both
roofing installation services and telecommunications
services under a single mark. Therefore, we conclude that
relevant customers are not likely to be confused by the use
of these similar marks in connection with these services.
Decision: The opposition is dismissed.
R. F. Cissel
T. J. Quinn
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

(Martha Hudak deposition, p. 19).