Deutsche Telekom A.G.v.GTE Corp.

Trademark Trial and Appeal Board

Mar 8, 2002

No. 91110800 (T.T.A.B. Mar. 8, 2002)

3/8/02 Paper No. 28
TJQ/bbb

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Deutsche Telekom A.G.
v.
GTE Corporation
_____

Opposition No. 110,800
to application Serial No. 75/280,034
filed on April 23, 1997
_____

Richard W. Young and Jared D. Solovay of Gardner, Carton
& Douglas for Deutsche Telekom A.G.

David M. Kelly and Christina M. Kelly of Finnegan,
Henderson, Farabow, Garrett, & Dunner, for GTE
Corporation.
______

Before Seeherman, Quinn and Walters,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by GTE Corporation to
register the mark "GTE ACCESS" for "telephone calling
card services” (in International Class 36) and “telephone
communication services" (in International Class 38).1

1 Application Serial No. 75/280,034, filed April 23, 1997, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 110,800
2
Registration has been opposed by Deutsche Telekom
A.G. under Section 2(d) of the Act on the ground that
applicant's mark, when applied to applicant's services,
so resembles opposer's previously used and registered
mark "T-ACCESS" for a variety of telecommunications-
related goods and services, including "electronic,
electric and digital transmission of voice, data,
information, images, signals and messages"2 as to be
likely to cause confusion. In its brief, opposer also
highlighted the following goods and services identified
in its registration: "electric, electronic, optical,
measuring, signalling, controlling or teaching apparatus
and instruments, all for use with telecommunications;
printed matter, namely, books or magazines on
telecommunications; financial services; real estate
brokerage; real estate appraisal, real estate investment;
real estate listing; real estate management; electronic
mail services; audio and video teleconferencing; rental
of apparatus for telecommunications; audio and video
broadcasting featuring entertainment in the nature of
visual and audio performances; education in the nature of

2 Registration No. 2,219,929, issued January 26, 1999, based on
a German registration under Section 44(e).

Opposition No. 110,800
3
classes and seminars in the fields of business,
telecommunications, and computers."
Applicant, in its answer, denied the salient
allegations of the claim of likelihood of confusion.
The record consists of the pleadings; the file of
the involved application; the testimonial affidavit of
Sharon Cohen-Hagar, director of media relations for
applicant, with related exhibits, submitted by applicant
pursuant to a stipulation between the parties; a
certified copy of opposer’s Registration No. 2,219,929,
for the mark “T-ACCESS”; a dictionary definition of the
word “telephone”; and applicant's responses to two
interrogatories, all introduced by way of opposer’s
notices of reliance. Additionally, the record includes
certified copies of twenty of applicant's registrations
of “GTE” marks for various telecommunications services
and products; excerpts from printed publications
retrieved from the NEXIS database; and twenty-six third-
party registrations of marks containing the term
“ACCESS,” all introduced by way of applicant’s notices of
reliance. Both parties filed briefs,3 and opposer filed a
reply brief. An oral hearing was not requested.

3 With its brief, applicant submitted copies of certain of
opposer's responses to office actions filed during the
prosecution of the underlying application that matured into
Opposition No. 110,800
4
In view of opposer's ownership of a valid and
subsisting registration for its pleaded mark, there is no
issue with respect to opposer's priority. See King Candy
Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
Our determination under Section 2(d) of the Act is
based on an analysis of all of the 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 services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
In the present case, applicant "does not dispute
that the services and channels of trade for the services
are similar." (applicant's brief, p. 16). Indeed, the

opposer’s registration. Applicant did not properly introduce
this evidence into the record at trial. It would appear that
the evidence was submitted in connection with a motion for
summary judgment. However, evidence submitted with regard to a
summary judgment motion does not form part of the evidentiary
record for trial unless it is properly introduced during trial.
See TBMP § 528.05(a), and cases cited therein. Accordingly,
exhibit 1 to applicant's brief has not been considered by the
Board in reaching the decision herein.
Opposition No. 110,800
5
parties’ telecommunications services, at least in part,
are identical, and are, in large part, otherwise related.
Opposer argues that applicant’s mark “GTE ACCESS is
strikingly similar in sound, appearance and connotation
to T-ACCESS, resulting in confusingly similar overall
commercial impressions.” (opposer's brief, p. 3).
Opposer contends that “[p]articularly when pronounced
aloud, the two marks bear a striking resemblance: gee
tee eee access and tee access.” (Id. at 4). Opposer
contends that the degree
of similarity between the marks necessary to support a
conclusion of likelihood of confusion declines when marks
are used in conjunction with virtually identical
services.
Applicant contends that the term “ACCESS” is highly
suggestive as used in connection with telecommunications
services and, accordingly, applicant’s “well-known house
mark” is the dominant portion of its mark and serves to
sufficiently distinguish the marks.4 Applicant supports

4 Applicant has submitted twenty registrations of the “GTE”
house mark. Ms. Cohen-Hagar stated that “GTE” has been
associated with applicant since applicant was formed in 1958,
and that applicant has for many years generated billions of
dollars in revenues for goods and services under the “GTE” mark.
Applicant’s customers for telephone services have numbered in
the tens of millions, and applicant is a leading provider of
wireless and inflight telecommunications. In addition, as
exhibits to Ms. Cohen-Hagar's testimony, applicant has submitted
Opposition No. 110,800
6
its argument of suggestiveness with copies of twenty-six
third-party registrations of marks including the term
“ACCESS” covering various telecommunications services and
products.
Given the lack of dispute with regard to the
similarity between the parties' services, and the Board’s
finding that some of the services are identical, the
issue of likelihood of confusion clearly turns on a
comparison of the involved marks.
In considering the marks in their entireties, we
recognize, of course, that both marks include the word

copies of its annual reports from 1963-1999, evidence of
advertising expenditures in excess of $280 million annually, and
numerous articles "evidencing the length of use, recognition,
and fame of the GTE mark."
Opposition No. 110,800
7
“ACCESS.” However, the fact that both marks have this
common element is not a sufficient basis on which to find
likelihood of confusion. The word “ACCESS,” as used in
connection with the identified services, has a suggestive
meaning. In this regard, we take judicial notice5 that
“access” is defined as follows: “to make contact with or
gain access to; be able to reach, approach, enter, etc.”
The Random House Dictionary of the English Language (2d
ed. unabridged 1987).
Moreover, the record shows that others in the
telecommunications field have registered trademarks
containing the term “ACCESS.” In fact, eleven of the
third-party registrations submitted by applicant include
disclaimers of the term “ACCESS.”6 Third-party
registrations are probative to the extent that they show
the meaning of a mark in the same way that dictionaries
are used. See Tektronix, Inc. v. Daktronics, Inc., 534
F.2d 915, 189 USPQ 693, 694 (CCPA 1976); and Red Carpet
Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

6 Registration Nos. 2,420,910; 2,444,213; 2,148,388; 1,873,405;
2,327,971; 2,352,125; 1,922,458; 2,207,227; 2,158,525;
2,294,125; and 2,099,113.
Opposition No. 110,800
8
1404 (TTAB 1988). In the Tektronix, Inc. v. Daktronics,
Inc. case, the
Opposition No. 110,800
9
court stated: “Because marks, including any suggestive
portions thereof, must be construed in their entireties,
the mere presence of a common highly suggestive portion
is usually insufficient to support a finding of
likelihood of confusion.” See also Plus Products v.
Redken Laboratories, Inc., 199 USPQ 111 (TTAB 1978);
American Hospital Supply Corporation v. Air Products and
Chemicals, Inc., 194 USPQ 340 (TTAB 1977); and Cutter
Laboratories, Inc. v. Air Products and Chemicals, Inc.,
189 USPQ 108 (TTAB 1975).
Furthermore, there are specific differences between
the
marks “T-ACCESS” and “GTE ACCESS” in their entireties,
the most prominent of which are the differences between
“T” and “GTE.” “T” and “GTE,” which form the beginning
portion of the respective marks and are noticeable parts
of each mark being set apart from the word “ACCESS,” are
quite different in appearance and pronunciation, despite
opposer’s contentions to the contrary. Moreover, “GTE”
is applicant's house mark and it is clear that consumers
would recognize it as such given that “GTE” has been the
subject of extensive exposure in the marketplace.
Accordingly, when the marks are compared in their
entireties, they are sufficiently different in
Opposition No. 110,800
10
appearance, pronunciation, meaning and commercial
impression that confusion is not likely, even when the
marks are used in connection with identical or closely
related services.
Decision: The opposition is dismissed.