Travel Network, Ltd.v.World Travel Service, Inc.

Trademark Trial and Appeal Board

Jun 15, 1999

No. 91088447 (T.T.A.B. Jun. 15, 1999)

Paper No. 20
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 15, 1999
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Travel Network, Ltd.
v.
World Travel Service, Inc.
_____
Opposition No. 88,447 to application Serial No. 74/180,031,
filed on June 27, 1991
_____
Lawrence D. Mandel of Klauber & Jackson for Travel Network, Ltd.
Fred V. Hanson, Vice President, for World Travel Service, Inc.
______
Before Seeherman, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
World Travel Service, Inc. has filed an application to
register the mark "SUNWORLD TRAVEL NETWORK" and design, as shown
below,
Opposition No. 88,447
2
for "travel agency" services.1
Travel Network, Ltd. has opposed registration on the
ground that, since 1976, opposer has continuously used the mark
"TRAVEL NETWORK" for "franchising services, namely, offering
technical assistance to others in the establishment and/or
operation of travel agencies, and for management consulting
services in the fields of advertising, sales promotion,
marketing, accounting and tax planning, rendered to the travel
industry"; that opposer is presently the owner of two federal
registrations for its service mark, namely, "Registration Nos.
1,462,176 and 1,107,486"; that opposer also has pending an
application "to register its mark GLOBAL TRAVEL NETWORK, Serial
No. 74-115,197, for substantially similar services as those of
the applicant," as well as a pending application "to register
[its mark] ORIGINAL TRAVEL NETWORK, Serial No. 74-250,697"; that
as "a direct result of the high quality of the services provided
... and through extensive advertising and promotional activities,
the mark TRAVEL NETWORK has come to identify Opposer"; and that
applicant’s mark "so resembles Opposer’s marks as to be likely,
when applied to the [travel agency] services of applicant, to
cause confusion, or to cause mistake, or to deceive".
Applicant, in its answer, has "acknowledge[d] ...
Opposer’s use of the ... marks of TRAVEL NETWORK and its mark of

1 Ser. No. 74/180,031, filed on June 27, 1991, which alleges dates of
first use of October 1990. It is stated in the application that:
"The lining on the drawing is a feature of the mark and is not
intended to indicate color."
Opposition No. 88,447
3
GLOBAL TRAVEL NETWORK." In addition, applicant has admitted the
allegation in the notice of opposition that "the services as to
which applicant seeks registration are substantially similar ...,
if not identical, to the services with which Opposer has used its
[TRAVEL NETWORK] mark." Applicant, however, has denied the
remaining salient allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; and, as opposer’s case-in-chief, a timely
filed notice of reliance on certified copies of registrations,
which are subsisting and owned by opposer, for the following
marks and services:
(a) the mark "BUSINESS TRAVEL NETWORK"
and design, as depicted below,
for "franchising services, namely offering
technical assistance in the establishment
and/or operation of retail travel agencies";2
(b) the mark "TRAVEL NETWORK" and
design, as reproduced below,

2 Reg. No. 1,952,438, issued on January 30, 1996, which sets forth
dates of first use of May 1, 1986. The phrase "BUSINESS TRAVEL" is
disclaimed, but the words "TRAVEL NETWORK" are registered pursuant to
a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act.
Opposition No. 88,447
4
for "franchising services, namely offering
technical assistance to others in the
establishment and/or operation of travel
agencies, and for management consulting
services in the fields of advertising, sales
promotion, marketing, accounting and tax
planning rendered to the travel industry";3
(c) the mark "ORIGINAL TRAVEL NETWORK"
for "franchising services; namely, offering
technical assistance to others in the
establishment and/or operation of travel
agencies and for management consulting
services in the fields of advertising, sales,
promotion accounting and tax planning which
are rendered to the travel industry, and use
by our franchisees in the operation of retail
travel agencies";4 and
(d) the mark "GLOBAL TRAVEL NETWORK" for
"franchising services; namely, offering
technical assistance in the establishment
and/or operation of travel agencies".5
Neither party took testimony or introduced any other evidence.6
Only opposer filed a brief. An oral hearing was not requested.
Opposer’s priority of use of the marks which are the
subjects of the registrations which it has made of record is not
in issue since, as indicated previously, the certified copies of
such registrations demonstrate that they are subsisting and owned

3 Reg. No. 1,950,248, issued on January 23, 1996, which sets forth
dates of first use of August 1979. The term "TRAVEL" is disclaimed,
but the words "TRAVEL NETWORK" are registered pursuant to a claim of
acquired distinctiveness under Section 2(f) of the Trademark Act.
4 Reg. No. 1,890,655, issued on April 18, 1995, which sets forth dates
of first use of December 1, 1993. The words "ORIGINAL TRAVEL" are
disclaimed.
5 Reg. No. 1,769,468, issued on May 4, 1993, which sets forth dates of
first use of February 1992; combined affidavit §§8 and 15.
6 Inasmuch as no objection has been raised by applicant to opposer's
reliance on certain registrations and marks which were not pleaded in
the notice of opposition as filed, the pleadings are hereby deemed to
be amended to conform to the evidence of record in accordance with
Fed. R. Civ. P. 15(b).
Opposition No. 88,447
5
by opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). The only issue to
be determined, therefore, is whether applicant’s "SUNWORLD TRAVEL
NETWORK" and design mark, when used in connection with travel
agency services, so resembles one or more of opposer’s marks for
its various franchising and management consulting services that
confusion is likely as to the source or sponsorship of the
parties’ respective services.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that, on this record, opposer has
failed to satisfy its burden of demonstrating that confusion as
to source or sponsorship is likely to occur. In particular,
while applicant’s admission in its answer serves to establish
that the parties’ respective services are "substantially similar
..., if not identical," in that such services generally relate to
travel agencies, it is nevertheless the case that, on their face,
opposer’s franchising and management consulting services would be
rendered to owners and/or operators of travel agencies.
Applicant’s travel agency services, on the other hand, plainly
would be provided, almost without exception, to members of the
general public rather than to travel agency management personnel.
Although travel agency operators and managers, like members of
the general public, concededly would have occasion to utilize
travel agency services, it would seem that they would most likely
patronize their own travel agencies for their travel related
Opposition No. 88,447
6
needs and thus would not typically avail themselves of the
services offered by applicant. As our principal reviewing court
has cautioned in this regard:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from
Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403,
1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g, 153 USPQ 412 (TTAB
1967).
Moreover, contrary to opposer’s contention, we find
that applicant’s "SUNWORLD TRAVEL NETWORK" and design mark is
readily distinguishable from each of opposer’s marks. Opposer
maintains that applicant has simply appropriated the phrase
"TRAVEL NETWORK" from opposer’s marks and added thereto the term
"SUNWORLD". According to opposer, "cases which have considered
the addition of a word to and [sic] already existing mark have
held, time and time again, that the mere addition of the
additional word does not negate the likelihood of confusion."
However, given the highly suggestive nature of the phrase "TRAVEL
NETWORK," contemporaneous use of the parties’ marks is not likely
to cause confusion as to the source or sponsorship of the
services rendered thereunder. The principle of law asserted by
opposer, it should be noted, has been more fully and accurately
set forth, for example, in In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984), in which the Board pointed out that:
Opposition No. 88,447
7
[T]here is a general rule that a
subsequent user may not appropriate another’s
entire mark and avoid likelihood of confusion
therewith by merely adding descriptive or
otherwise subordinate matter to it. See:
Bellbrook Dairies, Inc. v. Hawthorn Melody
Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213
(CCPA 1958), and In re South Bend Toy
Manufacturing Co., Inc., 218 USPQ 479 (TTAB
1983). An exception to the rule may be found
in those cases where the appropriated mark is
highly suggestive or merely descriptive or
has been frequently used by others in the
field for the same or related goods or
services. See: In re Hunke & Jochheim, 185
USPQ 188 (TTAB 1975) and Jean Patou, Inc. v.
Jacqueline Cochran, Inc., 133 USPQ 242 (SDNY
1962), affirmed[,] 312 F.2d 125, 136 USPQ 236
(2nd Cir. 1963).
Applying such principle to this case, applicant’s mark
is readily differentiated by the fanciful term "SUNWORLD" and its
associated sun design due to the high degree of suggestiveness
inherent in the phrase "TRAVEL NETWORK" when used in connection
with travel agency services. Similarly, while we are mindful
that two of opposer’s registrations indicate that the phrase
"TRAVEL NETWORK" has acquired distinctiveness with respect to the
franchising and management consulting services rendered by
opposer to travel agencies, it is still the case that such phrase
is at best highly suggestive of opposer’s services. This is
particularly so in light of the absence of any evidence (such as
sales figures, advertising expenditures and/or length of use) in
the record to support the assertion in opposer’s brief that such
phrase "has garnered ... a high degree of recognition among
consumers of travel agency and related services" and, thus, would
be entitled to a wide latitude of legal protection. See, e.g.,
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d
Opposition No. 88,447
8
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 113
S.Ct. 181 (1992).
Consequently, as is the case with applicant’s mark, the
phrase "TRAVEL NETWORK" in each of opposer’s marks would be
regarded by customers as subordinate matter, suggestive of an
interconnected or interrelated travel group, and which in view
thereof is entitled to only a limited scope of protection. When
the respective marks are considered in their entireties, which is
how the marks will be encountered by prospective customers,
consumers would regard the mark "SUNWORLD TRAVEL NETWORK" and
design, with the image evoked by the fanciful term "SUNWORLD"
underscored by a prominently displayed sun design feature, as
distinguishable from the marks "TRAVEL NETWORK" and "BUSINESS
TRAVEL NETWORK," with their noticeably different design element,
and the marks "GLOBAL TRAVEL NETWORK" and "ORIGINAL TRAVEL
NETWORK". Each of the latter three of opposer’s marks, in
particular, neither sounds nor looks substantially the same as or
similar to applicant’s mark, and the connotation and overall
commercial impression conveyed by each of such marks is
appreciably distinct from applicant’s mark.
Accordingly, given the differences in the typical
customers for applicant’s travel agency services and opposer’s
franchising and management consulting services for travel
agencies, and in light of the high degree of suggestiveness in
the phrase "TRAVEL NETWORK" when used in connection with such
services, confusion as to the source or sponsorship thereof is
Opposition No. 88,447
9
simply not likely--as a practical matter--to occur from the
contemporaneous use of the parties’ respective marks.
Decision: The opposition is dismissed.
E. J. Seeherman
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board