Trans Atlantic Systems, Incorporated

Trademark Trial and Appeal Board

Mar 16, 2012

No. 85001018 (T.T.A.B. Mar. 16, 2012)

Mailed:
March 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trans Atlantic Systems, Incorporated
________

Serial No. 85001018
_______

Kevin W. Grierson of FSB FisherBroyles for Trans Atlantic
Systems, Incorporated.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney).
_______

Before Zervas, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Trans Atlantic Systems, Incorporated (“applicant”)
filed a use-based application for the mark ATLANTA TREND,
in standard character form, for “providing information and
news in the field of business,” in Class 35. Applicant
disclaimed the exclusive right to use “Atlanta” pursuant to
a requirement by the examining attorney on the ground that
“Atlanta” is primarily geographically descriptive.
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 85001018
2
connection with “providing information and news in the
field of business,” so resembles the registered mark
GEORGIA TREND, in typed drawing form, for “magazines
dealing with Georgia business and finance,” in Class 16, as
to be likely to cause confusion.1 Registrant disclaimed the
exclusive right to use “Georgia.”
Preliminary Issues
Applicant attached copies of two abandoned
applications to its brief: KENTUCKY TREND (Serial No.
75163978) and TENNESSEE TREND (Serial No. 75150879). The
examining attorney objected to the copies of the abandoned
applications on the ground that they were not timely filed.
Trademark Rule 2.142(d) reads as follows:
The record in the application should be
complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the
Board by the appellant or by the
examiner after the appeal is filed.

The examining attorney’s objection is sustained and we have
not considered the copies of the abandoned applications.
Even if the abandoned applications had been timely filed,
they are of limited probative value because applications
are only evidence that the applications were filed on a
certain date. See In re Juleigh Jeans Sportswear, Inc., 24

1 Registration No. 1408459, issued September 9, 1986; renewed.
Serial No. 85001018
3
USPQ2d 1694, 1699 (TTAB 1992); Olin Corp. v. Hydrotreat,
Inc., 210 USPQ 62, 65 n.5 (TTAB 1981).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity and nature of the
goods and services, channels of trade and classes of
consumers.

Applicant concedes that its services, “providing
information and news in the field of business,” are related
to registrant’s “magazines dealing with Georgia business
and finance.”2 We agree. Applicant describes itself as an
“online news and professional networking venue dedicated to

2 Applicant’s Brief, unnumbered page 3 n.1.

Serial No. 85001018
4
serving the interests of business leaders in Georgia” and
it publishes a monthly newsletter.3 Registrant’s mark
GEORGIA TREND is used in connection with a statewide
business publication offering “balanced analysis of
business and political trends around the state,” painting
“an accurate portrait of economic development,” and
creating “a forum for state and local leaders to voice
their opinions on critical issues.”4 Applicant’s services
are related to registrant’s magazines because providing
information and news in the field of business has the same
purpose as a magazine dealing with business and finance and
because magazines are a medium by which information and
news is dissementated.
Moreover, because applicant’s services and
registrant’s magazines deal with the same subject matter,
business, and are directed to the same classes of
consumers, business people, they move in the same channels
of trade.

3 Applicant’s website attached to the September 3, 2010 Office
action.
4 Registrant’s website attached to the September 3, 2010 Office
action.

Serial No. 85001018
5
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). In comparing the marks, we are mindful that
where, as here, applicant’s services and registrant’s goods
are closely related, the degree of similarity necessary to
find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods and
services. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enterprises
Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of
E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
Moreover, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
Serial No. 85001018
6
terms of overall commercial impression so that confusion as
to the source of the goods offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
The marks GEORGIA TREND and ATLANTA TREND are similar
because they have the same structure, a geographic name
followed by the word “Trend.” Moreover, since Atlanta is
the capital of Georgia,5 there is an even closer
relationship between the marks than if the names identified
geographically remote areas. For example, consumers may
believe that ATLANTA TREND is a division of the GEORGIA
TREND magazine with an Atlanta-centric point-of-view.
However, applicant contends that the geographic
indicators distinguish the marks. We disagree. As
discussed above, because Atlanta is the capital of Georgia,
the geographic indicators emphasize the relationship
between ATLANTA TREND and GEORGIA TREND.

5 The American Heritage Dictionary of the English Language
(Unabridged), p. 131 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 85001018
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Applicant also contends that because the geographic
indicator is the first part of the mark, the names
Atlanta and Georgia are the dominant element of the
respective marks. We disagree. The marks ATLANTA TREND
and GEORGIA TREND are unitary composite terms. The
geographic locations modify the word “Trend” to indicate
the geographic area of interest. Accordingly, consumers
will not parse the marks into their component parts but
treat them as composite terms in their entirety.
In this regard, the word “Trend” is defined as “the
general course or prevailing tendency; drift; trends in the
teaching of foreign languages; the trend of events.”6 Thus,
the word “Trend” when used in connection with the mark
ATLANTA TREND suggests that applicant is providing
information regarding the general course of business in
Atlanta. By the same token, the word “Trend” in
registrant’s mark GEORGIA TREND also suggests that
registrant’s magazine deals with the general course of
business and finance in Georgia. The names Atlanta and
Georgia are merely geographic indicators that describe
where the trends are located. As indicated above, because
Atlanta is the capital of Georgia, consumers will perceive

6 The American Heritage Dictionary of the English Language
(Unabridged), p. 2017.
Serial No. 85001018
8
an affiliation or connection between ATLANTA TREND and
GEORGIA TREND.
Despite the fact that the geographic indicators are
different, the marks convey the same overall commercial
impression, and the similarities in appearance caused by
the inclusion of the identical dominant word element
“Trend” in both marks outweigh the differences. In view of
the foregoing, we find that applicant’s mark ATLANTA TREND
is similar to the mark GEORGIA TREND in the cited
registration in terms of appearance, sound, meaning and
commercial impression.
C. Other registrations incorporating the word “Trend.”
As indicated above, applicant contends that the
geographic indicator is sufficient to distinguish the
marks. In this regard, applicant references Registration
No. 1659700 for the mark FLORIDA TREND for a “monthly
magazine featuring coverage of business and the economy,”
in Class 16, and Registration No. 3212910 for the mark
SOUTH CAROLINA TREND for “general interest publications,
namely, magazines featuring business, politics, and
economic news concerning South Carolina,” in Class 16.
Both registrations are owned by Trend Publications, LLC.
The purpose of introducing third-party uses is to show
that customers have become so conditioned by a plethora of
Serial No. 85001018
9
such similar marks that customers have been educated to
distinguish between different marks on the bases of minor
distinctions. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). These two third-party
registrations are not evidence that those marks have been
used at all, let alone used so extensively that consumers
have become sufficiently conditioned by their usage that
they can distinguish between such marks on the bases of
slight differences. The probative value of third-party
trademarks depends entirely upon their usage. E.g., Scarves
by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ
289, 294 (2d Cir. 1976) (“The significance of third-party
trademarks depends wholly upon their usage. Defendant
introduced no evidence that these trademarks were actually
used by third parties, that they were well promoted or that
they were recognized by consumers.”). As the Court of
Customs and Patent Appeals, the predecessor to our primary
reviewing court, pointed out in Lilly Pulitzer, Inc. v.
Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (C.C.P.A.
1967), “the existence of these registrations is not evidence
of what happens in the market place or that customers are
familiar with their use.” See also Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
Serial No. 85001018
10
1992) (“As to strength of a mark, however, registration
evidence may not be given any weight”) (Emphasis in the
original).
D. Balancing the factors.
In view of the facts that the marks are similar and
that applicant’s services and registrant’s publications are
related and move in the same channels of trade and offered
to the same classes of consumers, we find that applicant’s
mark ATLANTA TREND for “providing information and news in
the field of business” is likely to cause confusion with
the mark GEORGIA TREND for “providing information and news
in the field of business.”
Decision: The refusal to register is affirmed.