Magnetic Ticket & Label Corp.

Trademark Trial and Appeal Board

Aug 18, 2004

No. 76390088 (T.T.A.B. Aug. 18, 2004)

Mailed: 8/18/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Magnetic Ticket & Label Corp.
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Serial No. 76390088
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Gregory C. Smith, Charles C. Garvey, Jr., Seth M. Nehrbass,
Stephen R. Doody and Brett A. North of Garvey, Smith,
Nehrbass & Doody, L.L.C. for Magnetic Ticket & Label Corp.
Caroline F. Weimer, Trademark Examining Attorney, Law
Office 115 (Tom Vlcek, Managing Attorney).
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Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Magnetic Ticket & Label Corp. has appealed from the
final refusal of the Trademark Examining Attorney to
register ZIPCARD as a trademark for “card with activation
control.”1 Registration has been refused on three bases:
1) the identification of goods is indefinite;
1 Application Serial No. 76390088, filed April 2, 2002, based on
an asserted bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76390088
2
2) applicant’s mark so resembles the mark ZIP CARD,
registered by The University of Akron for both
“magnetically coded debit cards”2 and for “credit and debit
card services”3 that, if used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive; and 3) that applicant’s mark is merely descriptive
of its identified goods.
Applicant and the Examining Attorney have filed
briefs; applicant did not request an oral hearing.
We turn first to the requirement for an acceptable
identification of goods. The Examining Attorney has
objected to the identification “card with activation
control” as being indefinite and overbroad. Applicant did
not address this objection in its response to the first
Office action; further, although the Examining Attorney
pointed out this omission in the second and final Office
action, applicant did not make any reference to the
objection in its brief. Applicant’s silence on this matter
could be taken as a concession that the Examining
Attorney’s position is correct.
In any event, we agree with the Examining Attorney
that applicant’s identification of “card with activation
2 Registration No. 2428152, issued February 13, 2001.
3 Registration No. 2428163, issued February 13, 2001.
Ser No. 76390088
3
control” is indefinite and overbroad. See Section 1402.01
of the Trademark Manual of Examining Procedure (TMEP), 3d
ed. (rev. May 2003), which provides, in part:
A written application must specify the
particular goods or services on or in
connection with which the applicant
uses, or has a bona fide intention to
use, the mark in commerce. 15 U.S.C.
§§1051(a)(2) and 1051(b)(2); 37 C.F.R.
§2.32(a)(6). To “specify” means to name
in an explicit manner. The
identification of goods or services
should set forth common names, using
terminology that is generally
understood. For products or services
that do not have common names, the
applicant should use clear and succinct
language to describe or explain the
item. Technical or esoteric language
and lengthy descriptions of
characteristics or uses are not
appropriate.
The language used to describe goods or
services should be understandable to the
average person and should not require an
in-depth knowledge of the relevant
field. An identification may include
terms of art in a particular field or
industry, but, if these terms are not
widely understood by the general
population, the identification should
include an explanation of the
specialized terminology.
The identification of goods or services
must be specific, definite, clear,
accurate and concise. See In re Societe
Generale des Eaux Minerales de Vittel
S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d
on other grounds, 824 F.2d 957, 3 USPQ2d
1450 (Fed. Cir. 1987); Procter & Gamble
Co. v. Economics Laboratory, Inc., 175
USPQ 505 (TTAB 1972), modified without
Ser No. 76390088
4
opinion, 498 F.2d 1406, 181 USPQ 722
(C.C.P.A. 1974); In re Cardinal
Laboratories, Inc., 149 USPQ 709 (TTAB
1966); California Spray-Chemical Corp.
v. Osmose Wood Preserving Co. of
America, Inc., 102 USPQ 321 (Comm’r
Pats. 1954); Ex parte A.C. Gilbert Co.,
99 USPQ 344 (Comm’r Pats. 1953).
See also, TMEP §1402.03 (A term that clearly includes
particular items that are classified in more than one class
(e.g., “artists’ materials”) is not acceptable.) Here, as
the Examining Attorney has explained, applicant’s cards
could be classified in Class 9 if magnetically encoded or
in Class 16 if they do not have magnetic coding. Further,
the term “cards” is so broad that it is not clear from the
identification what the nature of applicant’s cards is.
Accordingly, we affirm the requirement for a definite
identification of goods.
We turn next to the issue of likelihood of confusion.
This ground of refusal is based on Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d). Our determination is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
Ser No. 76390088
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considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the goods, despite the indefiniteness
of applicant’s identification, that is the identification
which we must consider in making our determination.
Applicant’s goods, as identified, are broad enough to
include debit cards with activation control. Moreover, it
is clear that such items are, in fact, some of the goods on
which applicant intends to use its mark, as applicant has
actually listed “debit card with activation control” as its
“goods/services” on the drawing page of its application.
There is no question that a “debit card with
activation control” is encompassed within the “magnetically
coded debit cards” identified in cited Registration No.
2428152. Further, such a debit card is closely related to
the “credit and debit card services” identified in the
second cited registration. It is obvious that a company
which provides credit or debit card services may also
provide credit or debit cards to access such services.
Ser No. 76390088
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Applicant argues that its cards are different from the
registrant’s because its cards can be purchased anywhere,
and can then become activated at the point of purchase,
while it asserts that the registrant’s cards are purchased
on the campus of The University of Akron and are used
solely within the geographic area of the campus and in no
other places. Applicant has not submitted any evidence in
support of its contention, and its argument is contradicted
by the fact that affinity cards, such as those identifying
a college, may be offered to people throughout the country.
More importantly, applicant has ignored the well-
established principle of trademark law that the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in the applicant’s application vis-à-vis
the goods and/or services recited in the cited
registration. See Canadian Imperial Bank of Commerce v.
Wells Fargo, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); see also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Accordingly, we must deem the registrant’s goods and
services, which are not restricted geographically or to any
specific trade channels, to encompass all appropriate trade
channels in which debit cards and debit and credit card
Ser No. 76390088
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services can be offered. The customers would include
stores of all types, as well as the public at large, which
are the customers to which applicant’s cards, as
identified, can be offered.
With respect to the marks, applicant has conceded that
the mark “ZIP CARD of the registrant is similar in sound
and view to the ZIPCARD of applicant.” Brief, p. 3. We
find that the marks are identical in sound and connotation,
and extremely similar in appearance. Although applicant
has pointed out that its mark is one word, while the cited
mark is two words, this small difference is not sufficient
to distinguish the marks. Consumers will readily recognize
that applicant’s mark is composed of the two words ZIP and
CARD, such that both marks convey the same commercial
impression. Further, consumers are not likely to remember
that applicant’s mark is depicted as one word and the
registrant’s mark as two. Under actual marketing
conditions consumers do not have the luxury to make side-
by-side comparisons between marks, and instead they must
rely on hazy past recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255 (TTAB 1980). Even if
consumers were to note that one mark is shown as one word
while the other mark is shown as two, they are not likely
to ascribe this minor difference to a difference in the
Ser No. 76390088
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sources of the respective goods and services. Rather, a
consumer who is familiar with the registrant’s ZIP CARD for
a magnetically coded debit card or for debit card services,
upon encountering ZIPCARD for a debit card with activation
control, will assume that ZIPCARD is merely a variation of
ZIP CARD.
It is also noted that applicant has conceded that “the
buyers may be considered impulse.” Brief, p. 3. Certainly
ordinary consumers, buying the debit cards on impulse, are
not likely to engage in a careful consideration of the
marks, to the point of questioning whether the presence or
absence of a space between ZIP and CARD indicates that the
identical goods, and closely related goods and services,
emanate from separate sources.
With respect to the remaining duPont factors, although
there is no evidence of actual confusion, applicant has
conceded that “the length of time of concurrent use is
brief.” In fact, there is no evidence that applicant has
used its mark at all, as this application is based on
Section 1(b) of the Trademark Act, applicant has not filed
an Amendment to Allege Use, and applicant has provided no
information as to when it may have commenced use, or the
extent of any such use. In any event, proof of actual
confusion is very difficult to obtain, and in an ex parte
Ser No. 76390088
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setting, with no information from the registrant as to its
experience as to any actual confusion, we do not give much
weight to the lack of evidence of actual confusion.
For the foregoing reasons, and particularly the
similarity of the marks and the identity of the goods and
the closely related nature of the goods and services, we
find that applicant’s mark, if used on its identified
goods, is likely to cause confusion with the two cited
registrations, and we affirm the refusal of registration on
this ground.
This brings us to the remaining ground for refusal,
that applicant’s mark is merely descriptive of its goods.
It is the Examining Attorney’s position that ZIP CARD is
merely descriptive because it indicates the manner in which
debit data is compressed on the card. In support of this
refusal, the Examining Attorney has made of record a
definition for “zip,” taken from an on-line “high-tech”
dictionary: “To compress a file using PKZIP, Zipit, gzip,
or other compatible archiver.”4
A term is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1), if it immediately conveys knowledge
4 http:www.computeruser.com/resources/dicitonary/definition/
html?lookup=5724
Ser No. 76390088
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of the ingredients, qualities or characteristics of the
goods with which is it used. In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987). In this case, it is not
clear that data is compressed on cards with activation
control, or that the term ZIPCARD, when used on such cards,
would immediately be recognized as referring to cards in
which data has been compressed. Aside from the dictionary
definition, the Examining Attorney has not submitted any
other evidence showing that “zip” is used in such a manner.
In view of the non-technological meanings of “zip”, e.g.,
“to move or act with speed or energy, to convey with speed
and energy,”5 all of which suggest that using applicant’s
card can speed the purchasing process, we cannot say that
the meaning the Examining Attorney has put forward is the
meaning that consumers would immediately ascribe to the
mark. Therefore, we cannot affirm the refusal on the
ground of mere descriptiveness.
Decision: The requirement for an acceptable
identification of goods and the refusal to register the
mark on the basis of likelihood of confusion are affirmed;
5 The Random House Dictionary of the English Language, 2d ed.,
unabridged, © 1987. 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).
Ser No. 76390088
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the refusal on the basis of mere descriptiveness is
reversed.