Reed Business Information Ltd.

Trademark Trial and Appeal Board

Jun 22, 2001

No. 75558110 (T.T.A.B. Jun. 22, 2001)

06/22/01 Paper No. 16
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Reed Business Information Limited
________
Serial No. 75/558,110
_______
Stanley C. Macel, III of Connolly Bove Lodge & Hutz LLP for
Reed Business Information Limited.
John Dwyer, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Cissel, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Reed Business Information Limited (an English limited
company) has filed an application to register the mark ATI
on the Principal Register for goods and services
identified, as amended, as follows:
International Class 9
“multimedia software recorded on CD-
ROMs relating to the air [transport]
industry featuring information and
statistics on air lines and air line
performance, manufacturers of airplane
components, jobs in the air transport
industry, finance in the air transport
industry, airports, and flight routes;
electronic publications recorded on CD-
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/558110
2
ROMs, namely, books, magazines,
newspapers, newsletters, business
reports, all relating to the air
transport industry and featuring
information and statistics on air lines
and air line performance, manufacturers
of airplane components, jobs in the air
transport industry, finance in the air
transport industry, airports, and
flight routes”;
International Class 35
“advertising agency services, namely,
promoting the services of the air
transportation industry through the
distribution of printed, audio and
visual promotional materials, and by
rendering sales promotion advice;
business information relating to air
transportation”; and
International Class 39
“air travel information services;
providing an on-line computer database
in the field of air transportation.” 1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
three prior registered marks owned by two different
entities--(1) ATI for “cargo and chartered air
transportation” in International Class 39, currently owned
through assignment, by Air Transport International LLC (a
1 Application Serial No. 75/558,110, filed September 25, 1998.
The application is based on applicant’s assertion of a bona fide
intention to use the mark in commerce. In response to an inquiry
from the Examining Attorney, applicant stated that the letters
ATI stand for “Air Transport Intelligence”; and that the letters
have no significance in the relevant air transport industry other
than as applicant’s trademark and service mark.
Ser. No. 75/558110
3
limited liability company of Nevada, located in Arkansas)2;
and (2) the two marks shown below
3 and 4
both for “touring and travel agency services” in
International Class 39, both currently owned by the
original registrant, AmericanTours International Inc. (a
California corporation).
In the first Office action, the Examining Attorney had
also cited two additional marks--(1) the mark ATI for
“electronic navigation and operation system for vehicles,
namely instrument, distribution and control panel and wire
harness therefore [sic]” in International Class 9,
currently owned by the original registrant, Advanced
Technology, Inc. (an Indiana corporation)5; and (2) the mark
shown below
2 Registration No. 2,112,289, issued November 11, 1997. The
claimed date of first use is January 1, 1988.
3 Registration No. 1,359,726, issued September 10, 1985, Section
8 accepted, Section 15 acknowledged. The claimed date of first
use is August 15, 1977. The registration includes the following
statement: “The mark consists of the letters ‘ATI’ in stylized
format.”
4 Registration No. 1,359,727, issued September 10, 1985, Section
8 accepted, Section 15 acknowledged. The claimed date of first
use is August 15, 1977. The registration includes the following
statement: “The mark consists of the letters ‘ATI’ and a
silhouette design somewhat similar to that of the United States.”
5 Registration No. 2,052,372, issued April 15, 1997. The claimed
date of first use is 1990.
Ser. No. 75/558110
4
for “business management consultation rendered to new
technology-based businesses” in International Class 35,
currently owned by the original registrant, Arizona
Technology Incubator, aka ATI (an Arizona corporation).6
The Examining Attorney withdrew these two cited
registrations following applicant’s response to the first
Office action.
The Examining Attorney contends that applicant’s mark,
if and when used in connection with its International Class
39 services, would so resemble all three of the previously
registered marks in International Class 39 as to be likely
to cause confusion, mistake or deception.
Applicant has appealed the final refusal to register.
Briefs have been filed, but an oral hearing was not
requested.
6 Registration No. 1,791,850, issued September 7, 1993, Section 8
accepted, Section 15 acknowledged. The claimed date of first use
is January 1, 1992. The words “Arizona Technology Incubator” are
disclaimed. The registration includes the following statement:
“The lining is a feature of the mark and does not indicate
color.”
Ser. No. 75/558110
5
First, we clarify that in his brief the Examining
Attorney specifically references applicant’s International
Class 39 services (“air travel information services;
providing an on-line computer database in the field of air
transportation”); and he states that “[t]he sole issue on
appeal is whether applicant’s mark, when used on or in
connection with the identified services, so resembles the
marks in Registration Nos. 2112289, 1359726 and 1359727, as
to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act §2(d).” Although the application
also includes goods in International Class 9 and services
in International Class 35, it is clear from the Examining
Attorney’s brief that the refusal to register applies only
to applicant’s International Class 39 services. Thus, that
is the only issue before this Board.
Second, we address an evidentiary matter,
specifically, the Examining Attorney’s statement in his
brief (footnote 3) that applicant submitted the complete
USPTO files of the three cited registrations “in an attempt
to limit the scope of the registrants’ identified services”
and the Examining Attorney’s assertion (in the same
footnote) that the “Board must disregard the exhibits
submitted by the applicant.” It is true, as argued by the
Examining Attorney, that in determining the question of
Ser. No. 75/558110
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registrability, the Board is constrained to consider the
goods and/or services as identified in the registration(s),
without restrictions or limitations not reflected therein.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). However, we
do not agree that we must disregard the entire file
histories for all purposes. We have considered them only
as discussed herein.
We reverse the refusal to register. In reaching this
conclusion, we have followed the guidance of the court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Turning first to the refusal to register based on the
two stylized design marks owned by AmericanTours
International Inc., for “touring and travel agency
services,” we consider the two cited marks and applicant’s
mark in their entireties as to appearance, sound,
connotation and commercial impression. Because these two
cited registered marks are (i) a stylized letter mark and
(ii) a stylized letter mark with a design, as compared to
applicant’s typed letter mark, the degree of stylization
affects the overall visual impact of the involved marks.7
7 The Examining Attorney argued both that this case involves
letter marks, and, at the same time, that the design mark
Ser. No. 75/558110
7
The Court of Appeals for the Federal Circuit addressed
this type of situation in In re Electrolyte Laboratories
Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
as follows:
There is no general rule as to whether
letters or design will dominate in
composite marks; nor is the dominance
of letters or design dispositive of the
issue. No element of a mark is ignored
simply because it is less dominant, or
would not have trademark significance
if used alone. ...
...[T]he spoken or vocalizable element
of a design mark, taken without the
design, need not of itself serve to
distinguish the goods. The nature of
stylized letter marks is that they
partake of both visual and oral
indicia, and both must be weighed in
the context in which they occur.
...[E]ven if the letter portion of a
design mark could be vocalized, that
was not dispositive of whether there
would be likelihood of confusion. A
design is viewed, not spoken, and a
stylized letter design can not be
treated simply as a word mark.
As stated by McCarthy at 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:33 (4th
ed. 2000):
For similar design or letter marks,
similarity of appearance is usually
controlling, for such marks are
consists of a word and a design with the word being the portion
more likely utilized by consumers in requesting the services. In
this case, the involved marks are letter marks, not word marks.
Ser. No. 75/558110
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incapable of being pronounced or of
conveying any inherent meaning, as do
word marks. For such marks, the
stylized lettering may be sufficient to
prevent a likelihood of confusion.
(Citations omitted)
Registrant’s marks are (i) a highly stylized
presentation of the letters ATI and (ii) a very different
highly stylized combination of the letters ATI and a design
of the United States; whereas applicant’s mark is simply a
typed drawing of the letters ATI. We agree with applicant
that these marks, when considered in their entireties, are
different in appearance and create different commercial
impressions.
We consider next the similarity or the dissimilarity
of the services, as described in the application and these
two cited registrations, and the similarity or
dissimilarity of the trade channels and purchasers. The
Examining Attorney asserts that services need not be
identical or even directly competitive to support a finding
of likelihood of confusion; that the Office must consider
the services as identified in the involved application and
registrations; that because there is no limitation in
applicant’s identification of services (“air travel
information services; providing an on-line computer
database in the field of air transportation”), applicant’s
Ser. No. 75/558110
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services could include providing information on touring and
travel agency information; that while applicant’s database
information is limited to “providing an on-line computer
database,” this registrant’s services are not so limited;
and that applicant’s services are related to this cited
registrant’s services, resulting in a likelihood of
confusion by consumers as to the source of these services.
The respective identifications of services show that
this cited registrant is a travel agency, whereas applicant
provides and promotes news and information about the air
transport industry. The fact that the registrant travel
agency provides its clients with flight schedules (as well
as rail schedules and other means of transportation) does
not establish that travel agency services and providing air
travel information in the field of air transportation via
an on-line computer database are related. In fact, in
overcoming a registration cited against both of its then-
pending applications, this registrant successfully argued
that travel agency services are totally different from and
move in different channels of trade to totally different
classes of purchasers than “aircraft brokerage services,”
“repair and maintenance of aircraft for others,” “leasing
Ser. No. 75/558110
10
and chartering of aircraft,” and “educational services,
namely, pilot training.”8
The Examining Attorney’s submission of several third-
party registrations to show that the same entity has
registered a single mark for both travel agency services as
well as air travel information services is not persuasive
of a different conclusion. Some of the third-party
registrations do not actually include both types of
services, but rather are for services identified as “travel
agency services, namely,...” (see, e.g., Registration Nos.
2,285,378 and 2,290,193). Moreover, most of the third-
party registrations either issued to airlines, such as
Northwest Airlines and Thai Airways, and are essentially
house marks, or issued to on-line travel agencies, such as
TheTrip.com, Inc. and Laughing Buddha Travels, Ltd. We
agree with applicant that this evidence does not equate an
on-line service which distributes information about the air
transportation business with travel agencies.
8 Registration No. 1,176,492, issued November 3, 1981, to Air
Transport, Inc. for the mark shown below
This registration was cancelled under Section 8 of the Trademark
Act in 1988.
Ser. No. 75/558110
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In this case, applicant’s services, as identified, are
limited to the air transportation industry. In addition,
applicant has provided information brochures and
advertisements about its own services as requested by the
Examining Attorney, all of which clearly show that
applicant provides information about the air transport
industry, including, for example, statistics on airlines
and airline performance, manufacturers of airplane
components, jobs in the air transport industry, and
financing in the industry. See Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Based on the dissimilarities of the appearance and
commercial impressions of the marks, and the unrelated
nature of travel agency services and air transport
information services, we cannot find on this record that
likelihood of confusion has been shown.
Turning next to the cited registered mark ATI
(Registration No. 2,112,289) for “cargo and chartered air
transportation,” clearly this mark and applicant’s mark are
identical letter marks.
With regard to these services vis-a-vis applicant’s
services, the Examining Attorney contends that applicant’s
identification of services is unlimited as to the nature of
Ser. No. 75/558110
12
the air travel information and thus it could include cargo
and chartered air transportation information; that neither
party’s channels of trade are specifically limited; and
that although applicant’s database is limited to being
offered only “on-line,” the registrant’s services are not
limited and thus could be offered on-line. From this, the
Examining Attorney concludes that these services are
related.
Looking, as we must, at the services as identified, we
cannot find on this record that the these services are
closely related, especially in light of applicant’s
evidence indicating precisely what it does, which is offer
intelligence or information about the air transport
business, whereas this cited registrant offers cargo and
chartered air transportation. A purchaser seeking to
charter airplanes for either passengers or freight is not
necessarily the same as the purchaser seeking to obtain
information (via a computer on-line database) about the air
transport industry. To the extent such purchasers may
overlap, they will exercise reasonable care in purchasing
either the chartered plane service or the information about
the air transport industry. The fact that a party may
offer its services (or goods) for sale on-line does not
automatically make all goods and services offered on-line
Ser. No. 75/558110
13
related in the context of the du Pont factors. Moreover,
as applicant points out, both the travel agency and the
cargo charter airline have co-existed for over ten years
apparently without confusion caused by the marks.
Based on the dissimilarities of cargo and air charter
services and air transport information services, as well as
the conditions of sale and the care of purchasers, we
cannot find on this record that likelihood of confusion has
been shown.
We point out that we have reached this decision
involving three cited registrations based on the ex parte
record herein. We express no view on what the Board might
find in the context of an inter partes proceeding with a
different record.
Decision: The refusal to register under Section 2(d)
is reversed.