IBERIA, Lineas Aereas de Espana, S.A.

Trademark Trial and Appeal Board

Aug 27, 2001

No. 75743430 (T.T.A.B. Aug. 27, 2001)

08/27/01 Paper No. 17
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IBERIA, Lineas Aereas de Espana, S.A.
________

Serial No. 75/743,430
_______

Peter S. Sloane, Martin J. Beran and Robert C. Faber of
Ostrolenk, Faber, Gerb & Soffen, LLP for IBERIA, Lineas Aereas
de Espana, S.A.

Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______

Before Simms, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

IBERIA, Lineas Aereas de Espana, S.A. has filed an
application to register the mark "BUSINESS INTERCONTINENTAL"
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/743,430
2
and design, as reproduced below,
for "airline transport services, namely, transportation of
passengers and goods by air" in International Class 39 and
"baggage handling inspections for airlines" in International
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, when applied to its services, so
resembles the mark "INTER-CONTINENTAL," which is registered
for "stenographic and typing services; conference center
services, namely, arranging and planning meetings for others;
management and staffing of hotels, restaurants and conference
centers for others; and consultation services in construction,
operation and management of hotels, restaurants and conference
centers" in International Class 35, "development and
organization of tour travel and packages for hotel guests;
travel agency services; limousine transportation services;
[and] parking garage services" in International Class 39,
"entertainment services; namely, sponsoring musical
performances, and providing in-room movies to hotel guests;
[and] health club services" in International Class 41 and

1 Ser. No. 75/743,430, filed on July 6, 1999, which is based upon
both an allegation of a bona fide intention to use the mark in
commerce and ownership of Spanish Reg. No. 2177176/6, dated December
10, 1998, for such mark. The words "BUSINESS INTERCONTINENTAL" are
disclaimed.
Ser. No. 75/743,430
3
"restaurant, bar and cocktail lounge services; concierge
services; [and] planning and designing conference centers,
hotels and meeting facilities for others" in International
Class 42,2 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.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However,
as indicated in Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any
likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity of the goods and/or services
and the similarity or dissimilarity of the marks.3

2 Reg. No. 1,635,689, issued on February 19, 1991, which for each
class sets forth dates of first use anywhere and in commerce of
January 1, 1948; renewed.

3 The court, in particular, pointed out that: "The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [and/or
services] and differences in the marks."

Ser. No. 75/743,430
4
Turning first to consideration of the respective
services, it is well settled that services need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the services are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they
originate from or are in some way associated with the same
entity or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
In the present case, the Examining Attorney
maintains in her brief that "the services identified in the
application and registration are highly related." However,
the focus of the Examining Attorney's arguments, both in her
brief and in her final refusal, is on the asserted relatedness
of the services set forth in the application to those listed
in International Class 39 of the cited registration, namely,
"development and organization of tour travel and packages for
hotel guests; travel agency services; limousine transportation
services; [and] parking garage services," and it is those
Ser. No. 75/743,430
5
services to which the evidentiary record in this case
pertains. Accordingly, and since on their face applicant's
services are distinctly different in nature from the services
recited in International Classes 35, 41 and 42 of registrant's
registration, we find that there is no likelihood of confusion
from the contemporaneous use, in connection with such
services, of applicant's "BUSINESS INTERCONTINENTAL" and
design mark and registrant's "INTER-CONTINENTAL" mark.
As to applicant's services and those listed in
International Class 39 of registrant's registration, however,
the Examining Attorney insists in her brief that, not only do
such services "fall within the same general category," which
she characterizes in her final refusal as being "travel
related services that overlap within the relevant industry,"
but more importantly "the services are complementary and the
conditions surrounding their marketing are 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." Although applicant,
in particular, states in its initial brief that it "does not
dispute that travel agents may arrange for the transportation
of passengers and luggage by air," applicant asserts that
registrant's "travel agency services are not so closely
related ... [to applicant's baggage handling inspections for
Ser. No. 75/743,430
6
airlines and] air transportation services" that
contemporaneous use of the respective marks in connection
therewith would be likely to cause confusion in the travel
industry.
The Examining Attorney, in support of her position,
relies upon definitions in the record from The American
Heritage Dictionary of the English Language (3rd ed. 1992)
which define a "travel agency" as "a business that attends to
the details of transportation, itinerary, and accommodations
for travelers" and an "airline" as "a business which provides
a system of scheduled air transport." She also made of record
and relies upon 15 use-based third-party registrations of
marks which are registered for "air transportation of persons
and cargo," "transportation of people by air," "transportation
of passengers and cargo by air," "transport services rendered
by air" or the like on the one hand and "making hotel
reservations and accommodations for others," "hotel
reservation services," "developing, arranging and making
reservations of vacation and tour packages for others,"
"arranging travel tours" and, more generally, "travel agency
services" or the like on the other. Although the third-party
registrations are admittedly not evidence that the different
marks shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value to the
Ser. No. 75/743,430
7
extent that they serve to suggest that the services listed
therein are of the kinds 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 (TTAB 1988) at n. 6.
In light of such evidence, we agree with the
Examining Attorney that, at least with respect to applicant's
"airline transport services, namely, transportation of
passengers and goods by air," those services are sufficiently
related to registrant's "development and organization of tour
travel and packages for hotel guests" and its "travel agency
services" that the airline traveling public would be likely to
believe that, if sold under the same or substantially similar
marks, the respective services share a common origin or
affiliation. There is simply no proof, however, that the
other services set forth in International Class 39 of
registrant's registration, namely, its "limousine
transportation services" and "parking garage services," would
similarly be seen by the relevant purchasing public as
complementary or otherwise closely related, in a commercial
sense, to applicant's airline transport services. Such
consumers would instead view those services as distinctly
different in nature and thus would not be likely to assume
Ser. No. 75/743,430
8
mistakenly that they originate from or are in some way
associated with the same entity or provider.
The same is likewise true of applicant's services of
"baggage handling inspections for airlines" and each of the
services listed in International Class 39 of registrant's
registration. On their face, the respective services are not
only distinctly different in nature, but the former would be
provided by applicant to other airlines and/or airport
security operations rather than to the airline traveling
public. Thus, even if such services were rendered under the
identical or substantially similar marks, there would not be a
likelihood of confusion.
This brings us to consideration of the marks at
issue and, specifically, to the question of whether the
contemporaneous use by applicant of its "BUSINESS
INTERCONTINENTAL" and design mark for "airline transport
services, namely, transportation of passengers and goods by
air," is likely to cause confusion with registrant's "INTER-
CONTINENTAL" mark for the closely related services of
"development and organization of tour travel and packages for
hotel guests" and "travel agency services". The Examining
Attorney urges, in this regard, that as to applicant's mark:
When a mark consists of a word portion and
a design portion as in the proposed mark
here, its has been determined that the word
portion is more likely to be impressed upon
Ser. No. 75/743,430
9
a purchaser's memory and to be used in
calling for the goods or services. Thus,
the literal portions are more dominant. In
re Appetitio Provisions Co. [Inc.], 3
USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v.
Amerco, Inc., 192 USPQ 729 (TTAB 1976).

The Examining Attorney further insists, in view
thereof, that the commercial impressions of applicant's and
registrant's marks "are highly similar," arguing that when
considered in their entireties, "the dominant elements are
nearly identical - i.e., the wording INTERCONTINENTAL and
INTER-CONTINENTAL - and the marks are therefore likely to be
confused. In particular, the Examining Attorney finds that,
of the literal portion of applicant's mark, it is the word
"INTERCONTINENTAL" which is the principal source-signifying
element thereof and that the design element of such mark is
insignificant because:
As acknowledged by the applicant in
its response and brief, the term BUSINESS
is descriptive of the services. In
addition to referring to any commercial,
industrial or professional dealing, the
term also describes a class of service in
that it describes the user of category of
users--i.e., business class consumers.
.... Hence, in this case, the term does
nothing to distinguish the source of the
proposed services and is afforded little
weight. Here, the term BUSINESS merely
sets out a class of consumers for which the
services are targeted and tells consumers
that the services are provided by a
commercial enterprise as the plain meaning
of the term conveys. .... Hence, the term
BUSINESS does not sufficiently distinguish
Ser. No. 75/743,430
10
the overall commercial impression ...
because consumers are likely to believe
that the proposed services are simply a
business class version of the registrant's
services. Therefore, in this case, the
public will not attribute source indicating
significance to the term BUSINESS, despite
its position in the mark. [Citations
omitted.] As such, the INTERCONTINENTAL
element has more significance in the
overall commercial impression of the mark
because its descriptive meaning is less
obvious than the term BUSINESS.

Here, the term INTERCONTINENTAL is
more significant as it is the only element
likely to be retained or recollected by the
average purchaser who normally retains a
general rather than a specific impression
of a trademark. The design [in applicant's
mark] is simply a peripheral difference, as
the services here will not be called for in
the market place as the torch or shield.
Moreover, consumers ... may not be able to
sufficiently distinguish the design as a
torch or shield and[,] thereby, indicate a
single source. .... Therefore, the design
does [not] alter or distinguish the
commercial impression because the wording
is more likely to be remembered and used
when the ... [service] is used, ordered or
discussed. [Citation omitted.] As such,
because the dominant elements [of the marks
at issue] are nearly identical in sound and
meaning, the additional design element [in
applicant's mark] doe not negate the
similarity. [Citation omitted.]
Accordingly, when the proposed and
registered marks are compared [overall],
the terms INTERCONTINENTAL and INTER-
CONTINENTAL are nearly identical and only
differ in form or appearance. Both terms
convey the same meaning and sound the same.
Therefore, consumers are likely to confuse
the two as neither the design or additional
term [BUSINESS in applicant's mark] creates
a commercial impression separate and
distinct from the registered mark.
Ser. No. 75/743,430
11

Finally, with respect to applicant's contention
that, as shown by the copies which it has made of record of
ten third-party registrations for marks which consist of or
include the word "INTERCONTINENTAL" or variants thereof, marks
which are composed of such term are weak and thus are entitled
to only a narrow scope of protection, the Examining Attorney
maintains, among other things, that "the third-party
registrations ... have little relevance to the applicant's
position" that there is no likelihood of confusion. None of
the third-party registrations, the Examining Attorney
accurately observes, is for any of the services at issue in
this appeal. The Examining Attorney, moreover, infers
therefrom that because "there is no record evidence of other
registered marks containing the wording 'INTERCONTINENTAL' for
similar services [to those at issue herein], the descriptively
weak element ['INTERCONTINENTAL'] is strong as applied to the
travel-related services here."
We agree with applicant, however, that when
considered in their entireties, its "BUSINESS
INTERCONTINENTAL" and design mark is sufficiently
distinguishable from registrant's "INTER-CONTINENTAL" mark
that confusion is not likely. As applicant persuasively
points out, and as essentially acknowledged by the Examining
Attorney ("the term BUSINESS merely sets out a class of
Ser. No. 75/743,430
12
consumers for which the services are targeted"), "the phrase
BUSINESS INTERCONTINENTAL" has a connotation linked with ...
air transport services" in that "[c]onsumers will recognize
the phrase as referring to a class of service on an airline
such as Applicant" because "[i]t sounds like other premium
classes of airline travel such as BUSINESS FIRST or BUSINESS
PLUS." Applicant's mark, furthermore, will not only be
vocalized, as when reservations are made over the telephone,
but when used in connection with its airline transport
services, such as in printed advertising and on its website
for scheduling and ticketing information, it will be seen in
its entirety by consumers. Consequently, rather than being of
little trademark significance solely because it is descriptive
of business class services, the word "BUSINESS" is "the first
and most prominent word in Applicant's mark," appearing in
lettering which in size is several times larger, and hence far
more visually striking, than the descriptive term
"INTERCONTINENTAL," which appears immediately below such word.
Plus, applicant's mark, unlike registrant's mark, prominently
features a design element. Such element, regardless of
whether it is characterized as a torch, shield or other kind
of design, conspicuously distinguishes applicant's mark from
that of the registrant.
Ser. No. 75/743,430
13
Thus, as applicant correctly points out, the only
common portions of the respective marks lie in the words
"INTERCONTINENTAL" and "INTER-CONTINENTAL." However, as the
definition of record from The American Heritage Dictionary of
the English Language (3rd ed. 1992) makes clear, the adjective
"intercontinental" has a well recognized meaning of "1.
Extending or taking place between or among continents .... 2.
Having the capability of traveling from one continent to
another: ... an intercontinental airline." Therefore, like
the word "BUSINESS," the word "INTERCONTINENTAL" in
applicant's "BUSINESS INTERCONTINENTAL" and design mark is
descriptive of its airline transport services, as applicant
has conceded by its disclaimer thereof, and such word is
highly suggestive of registrant's travel agency services and
its services of development and organization of tour travel
and packages for hotel guests. Consequently, as applicant
properly notes in its initial brief, "terms such as
INTERCONTINENTAL are weak and [are] given only a narrow scope
of protection," with "even small differences in the marks ...
[being] sufficient to make confusion not likely."
As pointed out in Sure-Fit Products Co. v. Saltzson
Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us
that where a party chooses a trademark
which is inherently weak, he will not enjoy
Ser. No. 75/743,430
14
the wide latitude of protection afforded
the owners of strong trademarks. Where a
party uses a weak mark, his competitors may
come closer to his mark than would be the
case with a strong mark without violating
his rights. The essence of all we have
said is that in the former case there is
not the possibility of confusion that
exists in the latter case.

Because, as noted previously, registrant's "INTER-CONTINENTAL"
mark is highly suggestive of its travel agency services and
its services of development and organization of tour travel
and packages for hotel guests, and since the literal portion
of applicant's "BUSINESS INTERCONTINENTAL" and design mark is
descriptive of its airline transport services, namely, the
transportation of passengers and goods by air, the overall
differences in sound, appearance, connotation and commercial
impression between the respective marks are sufficient to
avoid a likelihood of confusion with respect to such closely
related, but clearly not identical, services.
Decision: The refusal under Section 2(d) is
reversed.