Plain Dealer Publishing Co.

Trademark Trial and Appeal Board

Jul 30, 1998

No. 74548577 (T.T.A.B. Jul. 30, 1998)

Paper No. 19
EWH/AP
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Plain Dealer Publishing Co.
________
Serial No. 74/548,577
_______
Pamela A. Rask of Sabin, Bermant & Gould LLP for Plain
Dealer Publishing Co.
Paula B. Mays, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney)
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Plain Dealer Publishing Co. (applicant) seeks
registration of THE PLAIN DEALER QUICKLINE VOICE
INFORMATIION SERVICE and design in the form shown below for
“audiotext information services in the field of headline
news, financial news, sports, entertainment, soaps,
horoscopes, lottery, weather and time, all transmitted via
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telephone lines.” The application was filed on July 12,
1994 with a claimed first use date of June 12, 1994.
Applicant disclaimed the exclusive right to use VOICE
INFORMATION SERVICE apart from the mark in its entirety.
The Examining Attorney refused registration pursuant to
Sec 2(d) of the Lanham Trademark Act on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark QUICKLINE,
previously registered in typed capital letters for “private
line telephone communications services.” Reg. No.
1,058,734.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant withdrew its request for an oral hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods or services
and the similarities of the marks. Federated Foods, Inc. v.
Ser No. 74/548,577
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Fort Howard Paper Co., 544 F. 2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We will first consider applicant’s services and the
services of the cited registration. Applicant’s telephone
information services are available free of charge to anyone
who has access to a touchtone telephone. A person simply
dials a telephone number, and then enters the appropriate
four digit code corresponding to the topic he or she is
interested in. On a daily basis, applicant publishes in its
newspaper (The Plain Dealer) a list of over 250 topics with
their corresponding four digit codes. A sample of the
various topics include headline news (1000); foreign
exchange report (1121); golf update (1310); jazz news
(1415); Days of Our Lives (1502); horoscope-Gemini (1604);
lottery-michigan (1712); and weather-Green Bay (1841).
As previously noted, the goods of the cited
registration are “private line telephone communications
services.” A “private line” is a communications term and it
is defined as “a line, channel, or service reserved solely
for one user.” McGraw-Hill Dictionary of Scientific and
Technical Terms (3d ed. 1984). Entities such as the Federal
Emergency Management Agency and the National Communications
System use “private line telecommunications systems to carry
vital emergency information.” McGraw-Hill Encyclopedia of
Science and Technology (1998). Applicant has properly made
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of record a photocopy of the specimen of use which was
submitted with the application which matured into the cited
registration. Applicant did so not in an effort to
improperly limit the identification of services set forth in
the registration, but rather to afford the Examining
Attorney a better understanding of what “private line
telephone communications services” are. See In re
Trackmobile Inc., 15 USPQ2d 1152, 1153 (TTAB 1990). The
specimen of use indicates that a private line telephone
enables the user to “just lift the handset (go ‘offhook’)
and the corresponding phone in the distant city rings
automatically.” A private line telephone is reserved for
the exclusive use of one company and it offers the
advantages of enhanced security and instant access because
there are no busy signals. As might be expected, a private
line telephone system is considerably more expensive than a
ordinary telephone system, and it is certainly not marketed
to ordinary consumers.
In arguing that applicant’s services and registrant’s
services are related, the Examining Attorney simply states
that “both are telecommunications services.” (Examining
Attorney’s Brief page 9). The Examining Attorney has
acknowledged that there is absolutely no evidence of record
demonstrating that the same companies offer both (1)
services identical to or similar to applicant’s services and
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(2) services identical to or similar to registrant’s
services. The Examining Attorney merely speculates that in
the future, registrant or applicant may “expand” their
services such that there will be some overlap. (Examining
Attorney’s brief page 10).
To be quite blunt, we find that applicant’s services
and registrant’s services are very distinct. Indeed, we do
not even share the view of the Examining Attorney that “both
[services] are telecommunications services.” (Examining
Attorney’s brief page 9). As identified in the application,
applicant’s services are not telecommunications services.
Rather, applicant’s services are information services which
just happen to be transmitted via telephone lines. To
characterize applicant’s information services as
telecommunication services would mean that in similar
fashion, numerous different types of companies –- such as
airlines, banks and pharmacies –- also provide
telecommunications services when they offer to their
customers having touchtone telephones various types of
information such as flight arrival times, checking account
balances and prescription refill updates.
Moreover, not only are applicant’s services and
registrant’s services quite dissimilar, but in addition,
there is no dispute that private line telephone
communications services are provided only to discriminating
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individuals after significant discussions with a telephone
company to plan, install and operate the private line
telephone system. It has been noted that with regard to the
issue of likelihood of confusion, purchaser “sophistication
is important and often dispositive because sophisticated
consumers may be expected to exercise greater care.”
Electronic Design & Sales v. Electronic Data System, 954
F.2d 713, 21 USPQ 2d 1388, 1392 (Fed. Cir. 1992). This is
especially true when the goods or services involved pre-
purchase discussions and negotiations, as is the case with
private line telephone communications services.
Turning to a comparison of the marks, we agree with the
Examining Attorney that the most prominent feature of
applicant’s mark is the word QUICKLINE, which is of course,
registrant’s mark in its entirety. However, applicant’s
mark also includes the name of its newspaper THE PLAIN
DEALER, which the Examining Attorney concedes “is a well-
read publication.” (Examining Attorney’s brief page 9).
Given the fact that applicant’s information services and
registrant’s private line telephone services have little
relationship to each other, we find that in its entirety,
applicant’s mark is dissimilar enough from registrant’s mark
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such that their contemporaneous use is not likely to result
in confusion.
Decision: The refusal to register is reversed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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