CDS Freight Holding Ltd.

Trademark Trial and Appeal Board

Jan 9, 2012

No. 85009182 (T.T.A.B. Jan. 9, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: January 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CDS Freight Holding Ltd.
________

Serial No. 85009182
_______

J. Tucker Barr of Arnall Golden Gregory LLP for CDS Freight
Holding Ltd.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Grendel, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

CDS Freight Holding Ltd. filed an application to
register in standard characters on the Principal Register
the mark CAPITAL DISTRIBUTION SERVICES for the following
services, as amended: “freight logistics management” in
International Class 35.1

1 Application Serial No. 85009182 was filed on April 8, 2010
based upon applicant’s assertion of February 13, 2008 as a date
of first use of the mark in commerce in connection with the
services. DISTRIBUTION SERVICES is disclaimed apart from the
mark as shown.

Ser. No. 85009182
2
Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark CAPITAL
TRANSPORTATION SOLUTIONS (in standard characters) in
Registration No. 36715042 for “transportation logistics
services, namely, arranging the transportation of goods for
others; transportation logistics services, namely, planning
and scheduling shipments for users of transportation
services” in International Class 35, as to be likely, if
used on or in connection with the identified services, to
cause confusion, to cause mistake, or to deceive.
Applicant and the examining attorney have filed briefs on
the issue under appeal, including applicant’s reply brief.
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,

2 Issued on August 25, 2009 with a disclaimer of TRANSPORTATION
SOLUTIONS.
Ser. No. 85009182
3
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999), and cases cited therein.
We review the relevant du Pont factors as they apply
to this case.
The Services
We begin by comparing applicant’s services with those
of registrant. In making our determination under the
second du Pont factor, we look to the services as
identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
In this case, applicant’s services are identified as
“freight logistics management” and registrant’s services
Ser. No. 85009182
4
are identified as “transportation logistics services,
namely, arranging the transportation of goods for others;
transportation logistics services, namely, planning and
scheduling shipments for users of transportation services.”
In support of the refusal to register, the examining
attorney made of record copies of use-based, third-party
registrations reciting the services identified in the
involved application and cited registration. The following
examples are illustrative:
Registration No. 3901988 for services including
“Freight logistics management; Transportation
logistics services, namely, arranging the
transportation of goods for others;
Transportation logistics services, namely,
planning and scheduling shipments for users of
transportation services;”

Registration No. 3802702 for services including
“Freight logistics management; Transportation
logistics services, namely, arranging the
transportation of goods for others;
Transportation logistics services, namely,
planning and scheduling shipments for users of
transportation services”;

Registration No. 3798456 for services including
“Freight logistics management; Transportation
logistics services, namely, arranging the
transportation of goods for others;
Transportation logistics services, namely,
planning and scheduling shipments for users of
transportation services”; and

Registration No. 3854534 “Transportation
logistics services, namely, arranging the
transportation of goods for others; logistics
services, namely, freight logistics management.”

Ser. No. 85009182
5
These registrations suggest, in general, that applicant’s
freight logistics management services are related to
registrant’s transportation logistics services. See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001). Although these registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nevertheless have
probative value to the extent that they serve to suggest
that the services listed therein are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
The examining attorney further made of record evidence
from commercial Internet websites showing services of a
type offered by both applicant and registrant under the
same marks. These websites include dsi-tms.com,
grissomandassociates.com, myshippingdesk.com, and
tempologistik.com. Such evidence serves to demonstrate
that third parties are using a single mark to identify
applicant’s types of services as well as those of
registrant.
Ser. No. 85009182
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Based upon the evidence made of record by the
examining attorney, we find that registrant’s services are
related to those provided by applicant.
Channels of Trade
Furthermore, inasmuch as neither applicant’s nor
registrant’s recitation of services recites any limitations
to any specific channels of trade, we presume an overlap
and that the services would be offered in all ordinary
trade channels for these services and to all normal classes
of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., supra. We note in addition that
the Internet evidence made of record by the examining
attorney supports a finding that applicant’s types of
services move in the same trade channels as services of the
type identified in the cited registration.
Based upon the foregoing, both applicant’s and
registrant’s services appear to move in the same channels
of trade and be available to the same classes of potential
consumers. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
The Marks
We now consider whether applicant’s mark and
registrant’s mark are similar or dissimilar when viewed in
Ser. No. 85009182
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their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, applicant’s mark, CAPITAL DISTRIBUTION
SERVICES, is similar to registrant’s mark, CAPITAL
TRANSPORTATION SOLUTIONS, in that both marks share the word
CAPITAL as the leading and most distinctive feature
thereof. The dissimilar wording, i.e. DISTRIBUTION
SERVICES and TRANSPORTATION SOLLUTIONS, is at best
descriptive of the recited services and has been disclaimed
in the respective marks.
With regard to CAPITAL, applicant made of record a
list of 100 third-party applications and registrations from
the United States Patent and Trademark Office’s Trademark
Electronic Search System (TESS) database displaying marks
Ser. No. 85009182
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containing the term CAPITAL along with additional wording.
The listing provides only the marks, the serial numbers and
registration numbers of the applications and registrations,
and their status as live or dead. However, it is settled
that a mere listing of third-party marks, without any
accompanying indication of the goods and/or services
associated therewith, has virtually no probative value.
See TBMP § 1208.02 (3d ed. 2011), and the authorities cited
therein. Further, the expired registrations and pending
and abandoned applications are also of no value. See
Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
cancelled registration does not provide constructive notice
of anything”), and the applications show only that they
have been filed. Interpayment Services Ltd. v. Docters &
Thiede, 66 USPQ2d 1463 (TTAB 2003). For that reason, the
listing is not probative of the relative strength of the
term CAPITAL as applied to the involved services.
Thus, the sole distinctive term in both marks is
CAPITAL. Furthermore, we note that CAPITAL, the word which
the marks share in common, is also the first word in the
marks. Presto Products, Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some
importance since it is often the first part of a mark which
Ser. No. 85009182
9
is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imports, 73 USPQ2d at
1692 (“The presence of this strong distinctive term as the
first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and
hence non-source identifying) significance of ROYALE.”).
In addition, consumers are often known to use
shortened forms of names and, particularly because in both
marks the ensuing wording is merely descriptive of the
services provided, it is highly likely that both applicant
and registrant and their services are referred to as
CAPITAL. Cf. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 219 (CCPA 1978) [Rich, J., concurring: “the
users of language have a universal habit of shortening full
names – from haste or laziness or just economy of words”].
As for the presence of DISTRIBUTION SERVICES and
TRANSPORTATION SOLUTIONS in the marks, these descriptive
terms follow the distinctive term CAPITAL and thus are less
visually prominent. Consumers are likely to regard these
terms as less important, and refer to the marks as CAPITAL.
See Big M. Inc. v. United States Shoe Corp., 228 USPQ 614,
616 (TTAB 1985)(“[W]e cannot ignore the propensity of
consumers to often shorten trademarks.”)
Ser. No. 85009182
10
Viewing the marks in the involved application and
cited registration as a whole, we find that the identity of
the dominant feature thereof, namely, the word CAPITAL, in
appearance, sound and meaning results in the marks
conveying similar overall commercial impressions. In other
words, we view the marks as variations of each other, but
pointing to the same source. We note that the test under
the first du Pont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Sophistication of Consumers
Applicant argues that the involved services, by their
very nature, would be purchased by sophisticated and
careful consumers. However, even conceding that the
recitations inherently suggest that the services will be
purchased solely by sophisticated buyers, there is nothing
in the record to support a finding that the services and
Ser. No. 85009182
11
purchasing process are of such a nature that purchasers
could distinguish such similar marks for closely related
services. See, e.g., Electronic Design & Sales, Inc. v.
Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992) (record confirms that opposer’s services
are expensive and are purchased only by experienced
corporate officials after significant study and contractual
negotiation and that the evaluation process used in
selecting applicant’s products requires significant
knowledge and scrutiny). Furthermore, as is frequently
stated, even if consumers are knowledgeable in a particular
field that does not necessarily mean that they are immune
from source confusion where the marks and goods or services
at issue are similar. In re Decombe, 9 USPQ2d 1812 (TTAB
1988).
Third-Party Application for CAPITAL-formative Mark
We address one final argument made by applicant. A
third-party application for the mark CAPITAL CARGO3 was made
of record by applicant in support of its position that if
such mark may be registered over the mark in the cited
registration, so should applicant’s involved mark. While
neither the application nor registration involved herein

3 Application Serial No. 85055575.

Ser. No. 85009182
12
was cited as a bar to the registration of this third-party
application, we simply are not bound by the decisions of
examining attorneys. The Board must make its own findings
of fact, and that duty may not be delegated by adopting the
conclusions reached by an examining attorney. In re
Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); and In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them. Accordingly, we
find the others to be neutral in our analysis.
In light of the foregoing, we conclude that consumers
familiar with registrant’s services sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark
that the services originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Ser. No. 85009182
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Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.