Touch Tel Corp.v.AirTouch Communications

Trademark Trial and Appeal Board

Jul 9, 1999

No. 91097328 (T.T.A.B. Jul. 9, 1999)

Hearing: Paper No. 92
April 7, 1998 RLS/KRD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Touch Tel Corporation
v.
AirTouch Communications
_____
Opposition Nos. 97,328 and 99,129,
to applications Serial Nos. 74/487,071
and 74/478,131,
filed on February 7 and January 10, 1994, respectively
_____
Carla B. Oakley of Morrison & Foerster for Touch Tel
Corporation.
Caroline N. Mitchell of Pillsbury Madison & Sutro for
AirTouch Communications.
______
Before Simms, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Touch Tel Corporation (opposer), a California
corporation, has opposed two applications owned by AirTouch
Communications (applicant), also a California corporation,
by change of name from PacTel Corporation, to register the
marks AIRTOUCH and AIR TOUCH and design1 for electrical
apparatus, namely, telephones, pagers, and software for use
Opposition Nos. 97,328 and 99,129
2
in connection therewith, in Class 9; and wireless voice and
wireless data telecommunications services, namely, cellular,
paging, and switching and transmission services for the
carriage and provision of access to various information
services, in Class 38.2
In the notices of opposition, opposer has asserted that
it sells pagers and pager services; that prior to the filing
date of applicant’s applications, it has used the mark TOUCH
TEL PAGING and the trade name Touch Tel; that opposer has
registered the mark TOUCH TEL PAGING for pagers for use in
paging systems and for paging services in connection with
paging systems; 3 and that applicant’s mark 4 so resembles
opposer’s mark and trade name as to be likely to cause
confusion, to cause mistake or to deceive. Opposer has also
asserted that applicant’s mark may disparage opposer and
that applicant’s mark falsely suggests a connection with
opposer. With respect to the latter grounds, however,
opposer has offered no proof or argument and we have
not further considered these claims.

1 For convenience, we shall generally refer to applicant’s marks
in the singular, in the style “AirTouch.”
2 Application Serial No. 74/478,131, filed January 10, 1994,
based upon applicant’s assertion of a bona fide intention to use
the mark in commerce; and Application Serial No. 74/487,071,
filed February 7, 1994, based upon applicant’s assertion of a
bona fide intention to use the mark in commerce. The motion to
amend the identification to that set forth above is hereby
granted.
3 Registration No. 1,686,092, issued May 12, 1992, Sections 8 and
15 affidavit accepted and filed, respectively.
Opposition Nos. 97,328 and 99,129
3
In its amended answers, applicant has denied the
essential allegations of the notices of opposition.
However, applicant has admitted the existence of opposer’s
registration. Applicant has also asserted the affirmative
defenses of laches, unclean hands and estoppel. (These
defenses have not been pressed by applicant and so they,
too, have not been considered.) On April 26, 1996, the
above-identified oppositions were consolidated.
Briefly, the record of this case consists of voluminous
testimony (and exhibits) submitted by both parties; portions
of printed publications, portions of discovery responses and
discovery depositions, official records including opposer’s
own registration and third-party registrations, all relied
upon by notices of reliance of the parties; and the
application files. Both parties have submitted briefs and
an oral hearing was held.
Procedural Rulings
On March 9, 1998, the Board deferred action on two
motions to strike testimony depositions, one motion filed by
applicant and one filed by opposer.
Applicant moved to strike the testimony of Terry Bryan,
the president of Paging Communications. Mr. Bryan was
called by opposer as a rebuttal witness concerning instances
of actual confusion. It is applicant’s position that this
Opposition Nos. 97,328 and 99,129
4
witness should have been presented as part of opposer’s
testimony-in-chief and not as a rebuttal witness of the
testimony adduced by applicant concerning the lack of
instances of actual confusion. Applicant contends that Mr.
Bryan’s testimony does not rebut any specific testimony or
evidence offered by applicant. It is applicant’s position
that opposer chose not to call Mr. Bryan during its
principal testimony period and that opposer should not be
able to call this witness on rebuttal. Opposer, on the
other hand, argues that the testimony of Mr. Bryan is proper
rebuttal as it tends to refute the testimony of applicant’s
witnesses concerning the lack of actual confusion. Opposer
also notes that applicant cross-examined Mr. Bryan during
rebuttal and did not object at that time to this testimony
as improper rebuttal.
Applicant’s motion to strike Mr. Bryan’s testimony is
granted. Testimony with respect to instances of actual
confusion should be offered in a party’s testimony-in-chief
and not as part of rebuttal. See National Bakers Services,
Inc. v. Hain Pure Food Co., Inc., 210 USPQ 156, 157 (TTAB
1980) and Autac Inc. v. Walco Systems, Inc., 195 USPQ 11, 13
n.3 (TTAB 1977). Also, objections to a testimony deposition
on the ground that the testimony constitutes improper
rebuttal are not waived for failure to make them before or
during the taking of the deposition. See TBMP §718.03(c).
Opposition Nos. 97,328 and 99,129
5
Opposer moved to strike the testimony of Dr. Sandra
Cogan, an expert survey witness called by applicant. The
facts concerning this testimony are as follows. During
discovery, applicant was asked to indicate the identity of
any expert hired by applicant in connection with these
opposition proceedings. Applicant answered this discovery
request on April 15, 1996, shortly before the discovery
period was to close, stating that it had not hired an expert
in connection with these proceedings. Shortly after the
discovery period closed, applicant contacted a survey expert
for the purpose of conducting a likelihood-of-confusion
survey. In the meantime, opposer offered its testimony
during its testimony period. Applicant received Dr. Cogan’s
survey report on August 5, 1996. Applicant then decided to
call this witness during applicant’s testimony period and
gave opposer certain materials from Dr. Cogan on August 9,
1996. Shortly thereafter, applicant noticed the taking of
the testimony deposition of Dr. Cogan, and her testimony was
scheduled for six days later. This testimony was
subsequently postponed to allow opposer time in which to
prepare for its cross-examination of Dr. Cogan.
In support of opposer’s motion to strike, opposer
argues that the disclosure of applicant’s expert witness
after the closing of opposer’s testimony and after
applicant’s testimony period had begun was untimely. As a
Opposition Nos. 97,328 and 99,129
6
result, opposer argues that applicant never made the expert
available for discovery, and this expert was cross-examined
“under protest.” According to opposer, applicant’s tactics
prevented opposer from presenting expert testimony in its
own case-in-chief. See opposer’s motion to strike, 8.
Applicant, on the other hand, states that it truthfully
answered opposer’s discovery requests, and first contacted
the potential witness after discovery was closed. Applicant
argues (correctly) that, under Board practice, a party need
not identify an expert witness until it decides to call that
witness. Applicant contends that it disclosed the identity
of the expert when the survey was completed and as soon as
it decided to use the survey as evidence, and that applicant
had no obligation to amend its discovery responses until
that time. In addition, applicant argues that it gave
opposer additional time to prepare (more than one month) for
the examination of this witness. 5
Opposer’s motion to strike is denied. Under the
circumstances of this case, we believe that applicant’s
disclosure of its expert witness was timely. See TBMP
§419(7). Discovery before the Board is similar in many
respects to discovery before federal district courts under
the Federal Rules of Civil Procedure. However, there are

5 Applicant’s counsel also states that, although opposer never
asked for discovery of Dr. Cogan and even though the discovery
Opposition Nos. 97,328 and 99,129
7
some differences. See “Effect of December 1, 1993
Amendments to the Federal Rules of Civil Procedure on
Trademark Trial and Appeal Board Inter Partes Proceedings,”
1159 TMOG 14 (February 1, 1994). The Board has not adopted
the automatic disclosure amendments of the Federal Rules of
Civil Procedure. Moreover, opposer was, of course, free to
hire its own expert and to submit its own survey during its
case-in-chief and did, in fact, take the testimony of an
expert witness criticizing applicant’s survey during
opposer’s rebuttal testimony period.
We also note that there are a great number of
objections to testimony and exhibits made during the course
of the many and sometimes voluminous testimony depositions.
Suffice it to say that, except as indicated above, we have
read all of the testimony and examined the exhibits and have
accorded them appropriate weight. We would be remiss if we
did not point out that many of the objections seem frivolous
and dilatory and did not serve to advance this case.
Opposer’s Record
According to Mr. Robert Cooper, opposer’s president,
opposer is a communication service provider which provides
paging services (since 1988) to businesses as well as to
individuals. Opposer sells various brands of pagers and is
a paging airtime carrier, which means that it provides

period had closed, she would have allowed a discovery deposition
Opposition Nos. 97,328 and 99,129
8
airtime service for pagers on its own system. Airtime is
the term for the service that allows the pager to receive a
message. Opposer also resells the airtime of other paging
carriers, which enables the pager to receive messages in
different geographical areas.6 In addition, opposer renders
site rental business services, involving the providing of
radio communications and video communications transmission
facilities to businesses and paging companies; and
commercial mobile radio services (CMRS) or two-way marine
telephone communications for fishing and work boats. The
latter service is of recent vintage for opposer.
Most of opposer’s paging subscribers are located in
California, with most of those being in Northern California,
but opposer also renders its services in Nevada and Arizona.
However, opposer does not offer nationwide paging service.
Opposer considers its competition to be paging companies.
Over the years, opposer’s paging services have
increasingly been sold to individuals for personal as well
as business use. In fact, 60 to 65 percent of opposer’s
business is now with individuals. Opposer has between
15,000 and 20,000 paging customers. Mr. Cooper testified
that opposer spends about $85,000 to $100,000 per year on

of the witness.
6 A pager may be recrystallized (or have its frequency changed)
to receive airtime from another paging carrier, if a customer
decides to change its airtime carrier.
Opposition Nos. 97,328 and 99,129
9
advertising (radio, newspapers, magazines, the Yellow Pages
and direct mail). According to Mr. Cooper, opposer also now
offers cellular phone services to individuals under the mark
TOUCH TEL, but this has been described as an “incidental”
service, at least at the time of the testimony. Indeed, the
extent of opposer’s cellular service is unclear from this
record. Opposer does not use its mark and trade name in
connection with the cellular phones themselves and the
cellular airtime of opposer’s cellular services is provided
by others; that is, opposer resells the airtime of other
cellular carriers. Opposer is not a cellular carrier or an
operator of a cellular system and does not hold a cellular
license. However, it has entered into a marketing
arrangement with Nextel Communications to distribute the
latter’s products. Opposer has not advertised its TOUCH TEL
PAGING mark in connection with cellular services.
Opposer sells its pagers and paging services from
several retail locations, including its San Francisco retail
showroom called the Pager Store. However, this store is not
identified on the outside as affiliated with opposer,
although inside near the counter is a large TOUCH TEL sign.
Just as opposer resells the airtime of other carriers,
opposer’s airtime is resold by other paging companies. In
fact, the record shows that some “resellers” have sold the
airtime of both opposer and applicant. Also, the testimony
Opposition Nos. 97,328 and 99,129
10
demonstrates that the parties have advertised their goods
and services in some of the same media.
During a period of time when there was an interruption
in applicant’s paging services due to satellite problems,
Mr. Cooper testified that he personally answered some phone
calls from applicant’s customers concerning this
interruption in service.
One of opposer’s salespersons, Ms. Priscilla Leichner
Bee, also testified about alleged instances of actual
confusion that she witnessed. These include confusion by a
recently hired operator of opposer’s answering service who
had been an operator for another answering service that had
done business with applicant. This person transferred a
call of the witness by incorrectly identifying her as
“Priscilla from AirTouch.” According to the testimony, this
individual continues on occasion to misidentify the witness
when she calls. 7 On another occasion, a man who came to
opposer’s Pager Store wanted his AirTouch pager hooked up,
asking if the store sold the AirTouch system. On another
occasion, an individual handed the witness an AirTouch
pager, saying that it would not be difficult for her to
activate it because it was already “one of yours” or words
to that effect. However, this individual immediately

7 Similarly, Mr. Jeffrey Smith, opposer’s operations manager,
testified that when he went to pick up some recrystallized pagers
Opposition Nos. 97,328 and 99,129
11
corrected herself by indicating that she was confusing
opposer with its competition.
While Mr. Cooper testified that there are no current
third-party uses of the service mark “TOUCH” in the paging
business, Mr. Jeffrey Smith, opposer’s operations manager,
stated that he was aware of a paging accessories business
called In Touch Systems and of the AT&T TRUE TOUCH mark used
in connection with telecommunications services.
A private investigator hired by opposer testified that
he personally visited the offices of four paging stores that
operated under names which included the word “Air.” In
addition to applicant, these company names were
AirCommunications, AirPage and Air Wave Communications.
Another private investigator visited paging company offices
under the names Air Link Communications, Air Zone
Communications and AirCall.
Opposer’s mark is also used on such equipment as
terminals, transmitters and antennas. The mark was used on
transmitters as early as early 1995. These transmitters
bearing the mark range in price but can be as expensive as
$12,000. At the time of Mr. Cooper’s testimony, 30 to 50
paging transmitters had been sold and 25 to 60 antennas had
been sold. Antennas also vary in price but may be as
expensive as $12,000.

from a pager repair shop, he was once introduced as “Jeff from
Opposition Nos. 97,328 and 99,129
12
Applicant’s Record
Applicant was formed in 1994 from the wireless
communications business of Pacific Telesis, one of the so-
called “Baby Bells.” Applicant renders cellular, paging and
personal communications services (PCS). 8 According to
applicant’s vice president of marketing, applicant’s primary
business is the providing of cellular services. Applicant
has over 4 million cellular subscribers in the United
States, and derives most of its income from those
subscribers. Applicant has sold over 2½ million pagers and
has that many paging subscribers in 29 states. Applicant
has conducted joint advertising of its paging and cellular
services, with its cellular services advertised on
television, radio, in print media, in the Yellow Pages and
on billboards.
Applicant sells cellular phones and services from its
own retail outlets and from various national retail chain
stores such as Circuit City, Best Buy, Sears, Wal-Mart,
Target and Office Depot, as well as specialty retail
outlets. Applicant’s 1995 operating revenue was around $1.6
billion, and applicant has spent millions of dollars each
year on advertising. Applicant has over 5,000 employees.

AirTouch.” This repair shop resells the airtime of both parties.
8 The personal communications services are a relatively new
aspect of applicant’s services as a result of recent licenses
Opposition Nos. 97,328 and 99,129
13
Applicant’s main competitors are AT&T, MCI and Sprint.
Applicant is not involved in the video transmission business
and does not render two-way radio communication (radio
dispatch) services. Also, applicant does not sell paging
hardware, except for pagers.
In response to the testimony of some of opposer’s
witnesses who stated that they were aware of instances of
actual confusion, applicant called some of the witnesses who
were allegedly confused. For example, applicant took the
testimony of Mr. Kevin Chak, a user of a pager provided by
opposer who wanted to upgrade his pager service. Although
Mr. Chak was aware of applicant (from advertisements), he
testified that he was not confused as a result of the use of
the respective marks. Additionally, applicant took the
testimony of a service manager of Motorola Inc., a remote
microwave relay station maintenance worker, and an employee
of Intel Corporation, all of whom testified that they were
not confused as a result of any similarities of the marks.
Motorola’s service manager, Emilio Bahena, testified that,
although two pagers which should have been shipped to
applicant were shipped to opposer, pagers have in the past
been shipped to the wrong address as the result of clerical
mistake and not as the result of any similarities in the
marks. For example, pagers which should have been shipped

from the Federal Communications Commission. These services
Opposition Nos. 97,328 and 99,129
14
to applicant were shipped to PageNet in a mislabeled
shipment and vice versa. He further testified that he
personally was not confused by the similarities of the
respective marks. Also, Ms. Linda Erlich, who had called
opposer’s Pager Store seeking an AirTouch pager, said that
the reason for this call was that she thought that opposer
might be a retailer of a variety of pagers.
Several of applicant’s witnesses, including applicant’s
district general manager for the Los Angeles area, testified
that they were aware of no instances of actual confusion,
and that no distributor, agent or reseller had reported to
applicant about any instance of actual confusion. Applicant
itself is aware of no misdirected phone calls or mail
intended for opposer. Its witnesses testified that, before
this proceeding, they had not heard of opposer and its mark.
With respect to third-party usage of marks containing
the term “TOUCH,” applicant’s testimony reveals that several
of applicant’s witnesses have heard of a company called In
Touch Communications, involved in the telecommunications
equipment rental business. Mr. Arthur Rosen, the district
general manager of AirTouch Paging for the Los Angeles area,
said that he was aware of a paging company called Tele-
Touch. A Yellow pages advertisement for Rapid Touch
Communications cellular and paging services was also

involve mobile telephone services.
Opposition Nos. 97,328 and 99,129
15
introduced.9
Applicant also made of record copies of opposer’s
application that resulted in the registration of its mark,
wherein opposer’s attorney, to overcome a reference, argued
that the term “TOUCH” was “weak” because it was in common
use and that the “TEL” portion was dominant. In a response
in that application, opposer’s attorney also stated that its
purchasers were “sophisticated” and “discriminating,”
because its goods and services involved the expenditure of
several hundred dollars per year.
Finally, applicant called Dr. Sandra Cogan, the
president of Cogan Research Group, a market research
company, who conducted a likelihood-of-confusion survey in
this case. Dr. Cogan testified that she had designed and
supervised around 60 surveys for trademark, unfair
competition and design patent cases, and has been retained
as an expert witness over 30 times. In June and July 1996,
she conducted 203 in-person interviews of consumers in West
Covina, California (Southern California), in San Mateo and
San Bruno, California (Northern California), and in Dallas,
Texas. Survey respondents were qualified as men and women

9 Applicant also introduced Yellow Pages listings of third
parties which include the word “Touch” in their names (Keep in
Touch, Personal Touch, Magic Touch, etc.). Suffice it to say
that, unlike advertisements, mere telephone directory listings
Opposition Nos. 97,328 and 99,129
16
between the ages of 18 and 64 years of age who have cellular
phones or pagers or plan to purchase cellular phones or
pagers in the next six months. The respondents were shown
cellular and paging advertisements of opposer, of applicant
and of “control” telecommunications companies. The
respondents were asked if they thought that any of these
telecommunications companies owned or is owned by the
company whose materials were first displayed (Touch Tel).
Dr. Cogan stated her conclusions, dep., 83, 97-98 and 100:
So if we add those up, the total
source and affiliation confusion, which
is 10, plus 3, which is 6 percent,
keeping in mind some of them did not
indicate name kinds of reasons; however,
in the control company, the other
companies’ advertising shown in Display
B, we ended up with an average of 7
percent saying these other companies.
So if we subtract our 7 percent
control company confusion from our 6
percent confusion between Touch Tel
Paging and AirTouch, we have a minus 1
percent confusion.
* * * * * * * *
Q Okay. Looking at page 2300, tell
us what the bottom line of your survey
was.
A We had a total source and
affiliation confusion between Touch Tel
Paging and AirTouch of 6 percent. But
I’d like to note that some of those
consumers did not say for reasons

are not evidence of service mark use. See In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) and cases cited therein.
Opposition Nos. 97,328 and 99,129
17
related to the names that they were
confused.
We had an average of 7 percent of
the 203 consumers naming other companies
whose advertising was shown as control
in this. And if I subtract from the
total of the AirTouch number of 6
percent minus 7 percent confused with
other companies, I end up with a minus
or 1 percent confusion, which is very
low. That’s the second lowest confusion
I’ve ever seen in one of these types of
likely to lead to confusion surveys.
* * * * * * * *
Those who thought that one of –- or
more of the companies shown in the
second display, which included AirTouch,
was owned by the same company that owns
Touch Tel, anybody who indicated that
yes, they thought any of these companies
were related in that way were also
asked, for each company they named, the
reason that they thought that they were
owned by the same company.
And those reasons are very telling.
Of those who thought Touch Tel Paging
and AirTouch were owned by the same
company, four respondents, only four out
of the ten said something about the name
or word “Touch.” And the others really
guessed about the relationship; so
really, we only had –- instead of ten,
which is 5 percent out of the 223 [sic],
we really only had four, which is 2
percent, who gave reasons –- source
confusion reasons that related to the
name itself.
Opposer’s Rebuttal
On rebuttal, Mr. Jeffrey Smith testified that, since
the time of opposer’s testimony-in-chief, when applicant
brought to opposer’s attention the existence of a third-
Opposition Nos. 97,328 and 99,129
18
party’s use of “Touch of Class” used in connection with
pagers and paging services, that entity had agreed to cease
use of that name in connection with pagers and paging
services.
Also, opposer called Dr. Robert Sorensen, the president
of Sorensen Marketing/Management Corporation, a market
consulting and market research firm, as an expert to
evaluate the Cogan survey. Dr. Sorensen stated that he had
been retained in approximately 100 trademark cases and had
testified in many of them. He offered the following
criticisms of applicant’s survey. First, he criticized the
universe of potential respondents as not being properly
defined. Dr. Sorensen indicated that people who currently
use cellular phones or pagers may not be persons who intend
to buy this equipment in the future (or persons who actually
bought the equipment in the past), and that past purchasers
of cellular phones and pagers should not have been excluded.
Second, he stated that the questions posed were vague and
not properly framed. Third, he indicated that, when
opposer’s advertisement was covered after initially being
shown to respondents, the respondents were in effect being
subjected to a memory test which may have biased the results
against opposer. Also, according to Dr. Sorensen, it was a
mistake to include In Touch Communications as a “control.”
Dr. Sorensen testified, at 41, 51:
Opposition Nos. 97,328 and 99,129
19
A Because I think that the
fundamental issue is whether or not
“AirTouch” is or is not confusingly
similar to “Touch Tel” or “Touch Tel
Paging,” and by introducing a whole
group of other companies including a
company that has the name In Touch
Communications along with AirTouch, that
the questioning itself becomes confusing
and that people will, furthermore, be
encouraged, again partly because of the
methodology of showing the advertising
and partly because of the submission of
several names that people may well be
encouraged to utilize other
considerations than the name itself in a
test where presumably the issue is one
limited to names.
* * * * * * * *
THE WITNESS: I think you’re referring
to the point that I had made to you that
the test fundamentally here is between
Touch Tel Paging and AirTouch, and the
fact that other names are introduced is
not only potentially confusing to the
respondent but also inevitably leads to
the probability that if a person is
confused, and particularly, if another
name that included the word “touch” is
included, that that person will either
choose In Touch simply because the
“touch” is there; and, therefore, the
issue is never really resolved between
In Touch and AirTouch -- I’m sorry –-
between Touch Tel and AirTouch, but
instead the issue is resolved, so to
speak, in favor of confusion when a term
such as “In Touch Communications” is
used.
He testified that a higher level of confusion might have
been detected had “In Touch” not been one of the controls.
Another major criticism offered by Dr. Sorensen was
that the survey should have more directly tested for
Opposition Nos. 97,328 and 99,129
20
likelihood of confusion of “block letter” marks (or in
capital letters without stylization) as registered or sought
to be registered, as well as for the design mark. 10 In this
regard, Dr. Sorensen indicated that he believed the content
in the advertisements displayed to the respondents was
distracting and that additional factors, such as the
similarities in the advertisements, may have affected the
respondents’ answers. 11 Also, the fact that some
advertisements had look-alike products may also have
affected the answers given.
According to Dr. Sorensen, there were an unusually high
level of “Don’t know” and “Not sure” responses. If these
responses were eliminated from the survey, Dr. Sorensen
indicated that the confusion level of those who were
confused would be between 17 and 21.7 percent.
Dr. Sorensen also offered criticisms that there were no
instructions concerning how to intercept survey respondents;
that one of the survey locations (Dallas) was the
headquarters of AirTouch Paging; that the survey assertedly
did not test for reverse confusion; that there was an
insufficient number of respondents surveyed, leading to a

10 In fact, Dr. Sorensen indicated that two surveys should have
been conducted, one with the mark in plain capital lettering and
one with the design mark including the word mark “AIR TOUCH,” as
depicted in the application.
11 Dr. Sorensen indicated that, in his view, the In Touch
advertisement was more similar to the Touch Tel advertisement
that the others, and some respondents so indicated.
Opposition Nos. 97,328 and 99,129
21
greater potential sampling error; and that there were
problems with the validation of the survey.
Arguments of the Parties
Briefly, opposer argues that the word “TOUCH” is the
dominant part of the parties’ marks, the word “air” being “a
generic term” in the telecommunications field (brief, 21 and
reply brief, 7 n.2), and that the marks have the same
meaning. With respect to the parties’ goods and services,
opposer argues that they are substantially identical and
that these goods and services are offered through very
similar channels of trade to casual and relatively
unknowledgeable purchasers. Opposer also points to what it
considers instances of actual confusion. Finally, opposer
offers its criticisms of the Cogan survey and asks us to
resolve any doubt in favor of opposer as the prior user and
registrant.
Applicant, on the other hand, argues that opposer’s
mark is “highly suggestive” (of touching a telephone key pad
in response to a page) and that the “TOUCH” portion thereof
is “weak,” having been used by others in connection with
pagers and paging services, with customers readily
distinguishing the marks as the result of other matter in
the marks. Applicant contends that there is no dominant
element of its mark. Applicant also argues that the
respective marks are different in sound, appearance and
Opposition Nos. 97,328 and 99,129
22
meaning, with applicant’s mark suggesting the ability to
stay in touch by use of the air waves. Applicant also
points to the survey results as indicating no likelihood of
confusion, and argues that it is unfair, as Dr. Sorensen has
done, to include in a tabulation only those people who
responded “Yes” to the question of whether they would be
confused by one or more of the marks. Applicant also
criticizes opposer’s asserted instances of actual confusion,
some of which applicant characterizes as inquiries or simple
mistakes which were soon realized and corrected without
prompting and not caused by any similarities in the marks.
Applicant also places in the category of simple mistakes the
confusion of an employee of a reseller of both parties’
services who apparently called Mr. Smith “Jeff from
AirTouch.” Applicant argues that the Pager Store has a
generic-sounding name and that customers may have thought
that all models of pagers were available. Therefore, if
customers call to inquire whether the store carries AirTouch
pagers, this inquiry is not an example of actual confusion.
These and other instances should be given little weight,
according to applicant. Applicant also points out that
opposer did not call any of the witnesses allegedly
confused. Finally, applicant argues that the purchases here
are not impulse ones and that the consumers of the parties’
goods and services are sophisticated and, therefore, not
Opposition Nos. 97,328 and 99,129
23
likely to be confused. Applicant points to the fact that
some time must be spent with a potential paging customer and
that a fairly lengthy service agreement requiring monthly
airtime fees is entered into with customers.
Discussion and Opinion
Upon careful consideration of this record and the
arguments of the parties, we conclude that, although some of
the goods and services of the parties are, for our purposes,
legally identical, applicant’s marks AIRTOUCH and AIR TOUCH
and design are sufficiently dissimilar from opposer’s mark
TOUCH TEL PAGING in appearance, sound and connotation that
confusion is unlikely. These marks have obvious differences
in sound and appearance, and their suggestive meanings are
different. Also, opposer’s mark begins with the word
“TOUCH” and has a repeating “T” sound whereas applicant’s
mark begins with the word “AIR” and ends with the word
“TOUCH.” Even if these marks were used in connection with
substantially identical goods and services, the
dissimilarities would be sufficient to avoid confusion.
We also find that the record establishes that there is
at least some care involved in the purchasing of the
respective goods and/or services in the marketplace. Even
if cellular phones or pagers or cellular or paging services
are being purchased by average consumers, the expense
involved in such purchases, as well as the typical monthly
Opposition Nos. 97,328 and 99,129
24
fees involved, make for a somewhat deliberative purchasing
decision.
We also believe that the instances of actual confusion
which are of record are largely either inquiries or simple
mistakes. If there has been actual confusion, these
instances are best categorized as de minimis and should not
lead to a finding of likely confusion. Also, we point out
that applicant’s witnesses, including actual purchasers or
potential purchasers, testified that they were not in fact
confused by the marks. Finally, the survey, while not an
ideal one as it relates to issues peculiar to the Board, 12
reinforces our belief that confusion is, in fact, not
likely.

12 In particular, Dr. Sorensen’s criticisms relating to the
desirability of testing for confusion on the basis of “block
letter” or plain capital marks (because opposer’s registration
and one of applicant’s applications are so presented), the
distractions created by the advertisements, and the use of a
potentially confusing control are well taken. On the first
point, see Miles Laboratories Inc. v. Naturally Vitamin
Supplements Inc., 1 USPQ2d 1445, 1459-60 (TTAB 1986) and
McDonough Power Equipment, Inc. v. Weed Eater, Inc., 208 USPQ
676, 685 (TTAB 1981). However, we believe that the survey did in
fact test for reverse confusion when it asked if the respondents
thought that any of the other companies owned or was owned by the
first company (Touch Tel). Finally, opposer’s criticism that the
survey boards should have included more textual matter and
opposer’s coverage map from part of opposer’s advertisement is
Opposition Nos. 97,328 and 99,129
25
Decision: The oppositions are dismissed.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

not understood in the light of its argument that only the word
marks (and the word mark with design) should have been tested.