RCN Telecom Services, Inc.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 75013069 (T.T.A.B. Dec. 28, 1999)

Hearing: Paper No. 18
May 20, 1999 T. Fleming
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re RCN Telecom Services, Inc.
________
Serial No. 75/013,069
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Glenn A. Gundersen of Dechert, Price & Rhoads for RCN
Telecom Services, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
RCN Telecom Services, Inc. (applicant), a Delaware
corporation, by assignment and change of name from TMH,
Inc., has appealed from the final refusal of the Trademark
Examining Attorney to register the mark shown below
Ser. No. 75/013,069
2
for residential telecommunications services, namely,
providing local and long distance telephone service,
transmission of cable, radio and television, and providing
telecommunications connections to a global computer
network.1 The Examining Attorney has refused registration
under Section 2(d) of the Act, 15 USC §1052(d), on the
basis of Registration No. 1,838,460, issued May 31, 1994,
for the mark RCN for radio communication services. The
registration is owned by Meteor Communications Corporation.
Applicant and the Examining Attorney have submitted briefs,
and an oral hearing was held.
With respect to the marks, the Examining Attorney has
noted that applicant does not present any arguments
concerning their dissimilarity (although obviously
applicant’s mark contains design elements not present in
registrant’s mark). Concerning the goods, the Examining
Attorney notes that the cited registration covers “radio
communication services” broadly without any limitation as
to their nature, type, channels of trade or purchasers.
The Examining Attorney notes that, while applicant has
limited its services to various residential

1 Application Serial No. 75/013,069, filed October 31, 1995,
based upon applicant’s assertion of a bona fide intention to use
the mark in commerce. During the prosecution of this case,
applicant submitted an amendment to allege use, reciting use and
use in commerce since at least as early as February 1, 1996.
Ser. No. 75/013,069
3
telecommunications services, the registration is not
limited to commercial or governmental radio communication
services. Accordingly, the Examining Attorney presumes
that registrant’s services include residential radio
communication services.
The Examining Attorney has also made of record a
definition from a telecommunications dictionary indicating
that “radio communication” is defined as “any
telecommunication by means of radio waves.” The Examining
Attorney contends that cellular telephone service is a type
of radio communication service. In this regard, the
Examining Attorney has relied upon a dictionary definition
which defines “cellular phone” as “a mobile telephone
system using low-powered radio transmitters…”. Further,
the Examining Attorney argues, brief, 5:
Even if the applicant is correct, and
the registrant’s services are provided only
to commercial and governmental users, that
fact does not obviate the relatedness of the
services. For example, a consumer may have
the applicant’s RCN telephone services,
cable services, and internet access services
at his/her house. That same consumer, when
selecting a company to provide radio
communication services for his/her business,
may be more likely to choose the
registrant’s RCN radio communication
services under the mistaken belief that it
is the same company which provides some of
his/her residential telecommunications
services.
Ser. No. 75/013,069
4
The Examining Attorney also refers to various third-
party registrations which she has made of record. She
notes that some of those registrants have registered the
same mark in connection with radio communication services
(and mobile radio communication services) and in connection
with telephone services, and/or cable and radio and
television transmission services. For example, Popp
Telecom Incorporated has registered the mark POPP for
“telephone communications services, mobile radio
communications services and cellular telephone services.”
Western Wireless Corporation has registered the mark
WESTERN WIRELESS and design for radio communications,
telephone communications and cellular telephone
communications services. Nextel Communications, Inc. has
registered a mark in connection with radio communication
services and telephone communication services. Rogers
Communications Inc. has registered the mark ROGERS and
design for “radio communication services, namely,
transmission of video and data signals by means of coaxial
cable, microwave, satellite, fibre optics, and other
transmission methods; and cable television broadcasting
services.” SM Telecorp, Inc. has registered a mark for
cellular telephone services, mobile radio communication
services and telephone communication services. Amerithon
Ser. No. 75/013,069
5
Communications, Inc. has registered a mark for wired and
wireless telephone and radio communications services.
Wireless America, Inc. has registered a mark for mobile
telephone services, cellular telephone services and mobile
radio communication services. Finally, Digital Mobile
Communications, Inc. has registered a mark for cellular
telephone services and radio communication and dispatch
communication services.
Finally, the Examining Attorney contends that any
doubt as to the issue of likelihood of confusion should be
resolved in favor of the registrant and the prior user.
Applicant, on the other hand, argues that the
Examining Attorney has failed to demonstrate that “radio
communication services” would be used to describe a service
provided to households. Applicant argues that residential
households will not be offered “radio communication
services” listed in the cited registration, but that those
services will only be offered to sophisticated and
professional purchasers. In this regard, applicant made of
record copies of the specimens of use from the file of the
cited registration, which show registrant’s mark used for
“packetized-radio service networks for industrial and
commercial services.” The specimens indicate that
registrant’s services are typically used for “the
Ser. No. 75/013,069
6
acquisition of meteorological and hydrological data from
remote locations, remote security, air and water quality
monitoring, smokestack emission control, and monitoring
pipeline pressures.” Applicant has also submitted an
excerpt from a recent Philadelphia Yellow Pages showing
that “Radio Communication Equipment & Systems” are cross-
referenced in the Business To Business Directory.
Applicant offers the following specific arguments as to why
registrant’s services are different from applicant’s
(brief, 4-6):
… The scientific fact that cellular
phones send signals through air rather than
land lines does not mean that the cited
registration encompasses cellular phone
services…
… The commonly–used name for cellular
telephone service is not “radio
communications service”-it is cellular
telephone service. This is demonstrated by
the fact that nearly 500 registered or
published registrations and applications in
Class 38 explicitly refer to “cellular
telephone” services.
Plainly, the average residential
consumer does not equate his cellular phone
services with a radio communications
service. A cellular phone user would invite
people to call him or his “mobile phone” or
“cell phone,” not on his “radio
communications device”… By construing “radio
communications services” to include
residential communications services, the
examining attorney is unfairly expanding the
scope of the registration…
Ser. No. 75/013,069
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… Even the U.S. Patent and Trademark
Office Acceptable Identification of Goods
and Services Manual clearly identifies these
services separately. It is obvious that
radio communications services, telephone
services, cable services, regular radio and
television transmission services, and
cellular telephone services are all
different services, and that the examining
attorney has failed to show that “radio
communications services” are a consumer
service…
The third-party registrations cited by
the examining attorney also fail to prove
that the services described in Applicant’s
application and the cited application have
the same market. While the same corporate
entity may offer two different services
under the same mark, it does not follow that
those services are not [sic] necessarily
offered to the same customers…
Thus, in the present case, even if the
handful of companies cited by the examining
attorney offer both “radio communication”
and “telephone” services, one cannot
conclude that those services are offered to
the same audience. “Radio communications
services” can only be offered to those who
would normally be in the market for such
services, namely commercial and government
users. One cannot assume there is a market
overlap as a basis for refusing registration
simply because two services appear in the
same third party registration.
Applicant’s attorney also argues that there have been
no instances of actual confusion despite applicant’s
extensive and prominent use for several years.
In sum, applicant argues that the fact that cellular
phones send signals through the air does not demonstrate
Ser. No. 75/013,069
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that the phrase “radio communication services” should be
interpreted to include applicant’s cellular phone services.
Applicant also refers to TMEP Section 1207.01(a)(iii),
which notes that an applicant may provide extrinsic
evidence to show that a registrant’s identification has a
particular meaning to members of the trade and that it is
improper to consider the identification in a vacuum and
attach all possible interpretations to it. Applicant
contends that the respective services are distinct services
marketed to different, non-overlapping markets with radio
communication services by their very nature being
commercial services rendered to sophisticated business
purchasers.
Upon careful consideration of this record and the
arguments of the attorneys, we believe that, because of the
differences in the services of applicant and registrant,
confusion is not likely. While the Examining Attorney has
shown that some third parties have registered marks both
for some kind of radio communication service as well as for
one or more of applicant’s listed services, the Examining
Attorney has not demonstrated, as is her burden, that these
services are or would be offered to the same class of
purchasers. Nor do we believe that the question of what
precisely is a “radio communication service” is a matter of
Ser. No. 75/013,069
9
which we may take judicial notice. Clearly, registrant is
not offering radio broadcasting services, which, of course,
ordinary residential households would be able to receive on
their radios. Rather, registrant has registered its mark
for “radio communication services,” a different service.
Moreover, applicant has presented persuasive reasons why
registrant’s radio communication services would not
normally be offered to residential customers, including
that radio communication services are typically used by
such businesses as taxi dispatchers, courier services,
airlines and the military. If, in fact, some residential
customers of applicant’s who, in their professional
capacities, encounter registrant’s RCN radio communication
services, we believe that such an opportunity for confusion
could best be described as of a de minimis nature, and that
such a situation would not present an adequate basis on
which to conclude that confusion is likely. If registrant
believes that confusion is likely because of applicant’s
use and registration of a similar mark for its residential
telecommunication services, it will be able to oppose or
seek cancellation under the provisions of Section 2(d) of
the Act.
Ser. No. 75/013,069
10
Decision: The refusal of registration is reversed.
R. L. Simms
G. D. Hohein
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board