United Parcel Services of America, Inc.v.Unigroup Worldwide, Inc.

Trademark Trial and Appeal BoardMar 26, 2012

No. 91175426 (T.T.A.B. Mar. 26, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: March 26, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ United Parcel Service of America, Inc. v. Unigroup Worldwide, Inc. _____ Opposition Nos. 91175419; 91175420; and 911754261 _____ Stephen M. Schaetzel and Elizabeth M. Fox of King & Spalding LLP for United Parcel Service of America, Inc. Mark Sableman and Hadi S. Al-Shathir of Thompson Coburn LLP for UniGroup Worldwide, Inc. ______ Before Seeherman, Cataldo and Taylor, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, UniGroup Worldwide, Inc., filed applications to register on the Principal Register the marks displayed below, all in connection with “business management and consultation services, namely, business and personal relocation services, and consultation 1 These proceedings were consolidated in a Board order issued on August 13, 2007. Opposition Nos. 91175419; 91175420; and 91175426 2 to others in the development and establishment of personnel relocation policies” in International Class 35; and “transportation of goods of others by means of truck, van and other vehicles; warehousing and storage services; and freight forwarding services” in International Class 39. UNIGROUP WORLDWIDE UTS (typed or standard characters)2 3 and 4 2 Application Serial No. 76338321 was filed on November 15, 2001 based upon applicant’s assertion of October 4, 2001 as a date of first use of the mark anywhere and in commerce in connection with both classes of services. “WORLDWIDE” is disclaimed. 3 Application Serial No. 76338008 was filed on November 15, 2001 based upon applicant’s assertion of October 4, 2001 as a date of first use of the mark anywhere and in commerce in connection with both classes of services. “WORLDWIDE” is disclaimed. 4 Application Serial No. 76376718 was filed on February 13, 2002 based upon applicant’s assertion of its bona fide intent to use the mark in commerce in connection with both classes of services. “WORLDWIDE” is disclaimed. Opposition Nos. 91175419; 91175420; and 91175426 3 Registration has been opposed by United Parcel Service of America, Inc. (“opposer”). As grounds for opposition, opposer asserts that it is the owner of numerous UPS and UPS-formative marks, including the mark UPS (typed or standard characters), previously used and registered on the Principal Register for “transportation of personal property for hire by diverse modes of transportation” in International Class 39;5 “air transportation services, namely, transportation of passengers and personal property by air” in International Class 39;6 and “business management consultation provided to the general public; and providing business management consultation, business strategic management, and planning services to the general public by a multi-user global computer information network” in International Class 35.7 Opposer alleges that its UPS and UPS-formative marks are famous; that applicant’s marks and opposer’s previously used and registered marks are highly similar; that the parties’ services are legally identical; that applicant’s 5 Registration No. 0966774 issued on August 21, 1973. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Second renewal. 6 Registration No. 2491124 issued on September 18, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 7 Registration No. 2517938 issued on December 11, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. Opposition Nos. 91175419; 91175420; and 91175426 4 intent in adopting its marks supports a finding of likelihood of confusion, and that, as a result, confusion, mistake and deception are likely among consumers as to the source thereof under Trademark Act Section 2(d); and that opposer will be damaged thereby.8 Applicant’s answer consists of a general denial of the allegations in the notice of opposition. In addition, applicant asserted the affirmative defense of unclean hands and pursued such defense at trial.9 Evidentiary Matters We begin by observing that both parties submitted certain evidence and exhibits to testimonial depositions on CD-ROM. At one time evidence could be made of record in this manner pursuant to Trademark Rule 2.126(b). However, by amendment effective August 31, 2007 and applicable to all cases pending or commenced on or after that date, Trademark Rule 2.126(b) no longer accords parties the option of making submissions to the Board in CD-ROM form.10 In these consolidated cases, the parties took testimony and made 8 Opposer further asserted dilution as a ground for opposition. However, in a decision issued on November 19, 2008, the Board, inter alia, granted applicant’s motion for judgment on the pleadings as to such claim. 9 Applicant asserted additional affirmative defenses but did not pursue them at trial. Accordingly, they are deemed waived. 10 Notice thereof is posted on the Trademark Trial and Appeal Board (TTAB) page of the USPTO internet website at http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_ FinalRuleChart.pdf. Opposition Nos. 91175419; 91175420; and 91175426 5 their evidentiary submissions after the effective date of August 31, 2007. Accordingly, any evidence or exhibits that were not filed on paper or by electronic means as required under the operative Trademark Rules has not be considered in this decision. The Record The record consists of the pleadings, and the files of the involved applications. In addition, opposer took the depositions, with accompanying exhibits, of Christopher Todd Schenken, vice president of two subsidiaries of opposer responsible for intellectual property. Opposer also filed notices of reliance. Applicant took the testimony depositions, with exhibits, of Paul Bernardt, its managing director; Brian D. Iles, its vice president of international relocation services; and Kiersten Van Horne, an employee of a third- party intellectual property investigation firm. Applicant also filed a notice of reliance.11 Opposer and applicant filed main briefs on the case, and opposer filed a reply brief. 11 Both parties have designated portions of their testimony depositions and evidence as “confidential.” In this decision, we will endeavor to discuss those portions of the parties’ testimony and evidence that truly contain confidential information only in general terms. Opposition Nos. 91175419; 91175420; and 91175426 6 Opposer’s Standing Opposer has properly made of record copies of its eight pleaded registrations.12 Opposer further has shown, by its use and registration of marks that are at least arguably similar to applicant’s marks, that it is not a mere intermeddler. Accordingly, we find that opposer has established its standing to oppose registration of applicant’s marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Unclean Hands Prior to our consideration of opposer’s pleaded claim of priority and likelihood of confusion, we must first address applicant’s affirmative defense of unclean hands to determine whether opposer’s claim is barred thereby. In this case, applicant argues that opposer’s conduct in two cancellation proceedings brought against opposer by applicant, and involving marks in registrations cancelled thereby, constitutes unclean hands and should result in dismissal of this proceeding. However, in the instant proceeding opposer has neither pleaded nor relied upon in any way the marks and registrations that were at issue in the prior cancellation proceedings. Applicant is correct 12 Opposer’s Notice of Reliance, Exhibit 1. Opposition Nos. 91175419; 91175420; and 91175426 7 that false statements made in the procurement or maintenance of a registration remaining in force may preclude a party from relying upon such registration in another proceeding. See Duffy-Mott Co., Inc. v. Cumberland Packing Co., 165 USPQ 422, 424-5 (CCPA 1070). However, that is not the case here. Opposer’s registrations were cancelled in the prior cancellation proceedings brought by applicant and, as noted above, have not been relied upon by opposer herein. As a result, statements made by opposer as defendant in those cancellation proceedings related to its now-cancelled registrations do not form the basis for a claim of unclean hands in the instant opposition. Accordingly, we find that opposer’s claim is not barred by applicant’s affirmative defense. We turn now to opposer’s pleaded ground. Priority of Use Because opposer’s pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therein and services certified thereby. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood of Confusion Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood Opposition Nos. 91175419; 91175420; and 91175426 8 of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). For purposes of the du Pont factors that are relevant to this case we will consider applicant’s involved marks and opposer’s UPS mark that is the subject of its Registration Nos. 0966774; 2491124; and 2517938. If likelihood of confusion is found as to the marks and services in these registrations, it is unnecessary to consider opposer’s other five pleaded registrations for marks which are less similar to applicant’s involved marks than opposer’s UPS mark. Conversely, if likelihood of confusion is not found as to the marks and services in these registrations, we would not find likelihood of confusion as to the marks and services in opposer’s other pleaded registrations. Fame of Opposer’s UPS Mark We begin our likelihood of confusion analysis with the fifth du Pont factor, which requires us to consider evidence of the fame of opposer’s mark and to give great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. Opposition Nos. 91175419; 91175420; and 91175426 9 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame of an opposer’s mark or marks, if it exists, plays a “dominant role in the process of balancing the DuPont factors,” Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and “[f]amous marks thus enjoy a wide latitude of legal protection.” Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, “[a] strong mark … casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one “with extensive public recognition and renown.” Id. Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at 1305. Fame may be measured indirectly by sales volume and advertising expenditures of the goods identified by the marks at issue, “by the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice by independent sources of the goods identified by the marks, as well as the general reputation of the goods. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d 1305-1306 and 1309. Because of the extreme deference accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting fame to clearly prove it. Opposition Nos. 91175419; 91175420; and 91175426 10 Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); and Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). In 1933, opposer began offering all of its delivery services, including delivery of packages by land and air, under the mark UPS.13 Presently, opposer employs over 400,000 people worldwide, including 60,000 drivers.14 In 2008, opposer’s delivery fleet included over 94,000 land vehicles and 250 aircraft, all displaying the mark UPS, used to deliver 15 million packages per day.15 Also in 2008: opposer delivered 3.9 billion packages and documents, including 2.1 million delivered by air in the USA; opposer’s revenues were $51.5 billion; and opposer averaged 7.9 million customers per day.16 Opposer operates 4500 The UPS Store retail outlets, 1000 UPS Customer Centers and 40,000 UPS drop boxes, all displaying the UPS mark.17 Opposer’s internet website (www.ups.com) displays the UPS mark and allows users to, inter alia, arrange and track package deliveries, obtain information regarding opposer and its good and services.18 In 2008: opposer received an average of 18.5 million page views per day, with a peak of 13 Opposer’s Notice of Reliance, Exhibit 4. 14 Id. 15 Id. 16 Id. 17 Id. 18 Id. Opposition Nos. 91175419; 91175420; and 91175426 11 26.2 million; opposer processed an average of 22.7 million online tracking requests per business day, with a peak of 35.6 million.19 Opposer advertises the services under its UPS mark on television, radio, print media and the internet.20 Opposer’s UPS mark further is used in connection with sponsorship of such sporting events as NASCAR and the 2008 Olympic Games in Beijing, China.21 Opposer’s advertising budget and expenditures may generally be stated at tens of millions of dollars per year.22 In 2009, BrandFinance Global ranked opposer’s brand, displayed as its UPS and shield design mark below, the 31st most valuable trademark in the world, with a value of $11,594 million.23 This testimony and evidence demonstrates that opposer has expended a great deal of effort in marketing its services under its UPS mark, and has enjoyed considerable success for its efforts. However, such evidence falls short 19 Id. 20 Schenken Testimony, p. 55-87. 21 Id. at 103-4. 22 Id. at 98. 23 Opposer’s Notice of Reliance, Exhibit 5. Opposition Nos. 91175419; 91175420; and 91175426 12 of demonstrating the extent to which such efforts and recognition translate into widespread recognition of the UPS mark among the general public for the recited services. First, nearly all of opposer’s evidence is directed toward its transportation services. Even if we were to find fame on this record, such fame would apply only to opposer’s services in International Class 39. Opposer’s showing with regard to its services in International Class 35 clearly is insufficient. In addition, opposer’s arguments and testimony regarding fame are primarily directed toward its UPS mark; however, its documentary evidence of fame displays numerous of its pleaded and unpleaded UPS and UPS-formative marks. For instance, the BrandFinance Global report discussed above provides a ranking of opposer’s brand, and displays opposer’s UPS and shield design mark as displayed above, but does not discuss any of its marks in particular. Opposer contends that while the ranking “displays a graphic for each brand it ranks, it does not limit its ranking to said graphic. The ranking is for a ‘brand’ not a particular ‘mark;’ thus, it is not limited to the graphic displayed as visual interest on the chart.”24 We agree that the BrandFinance Global report provides a ranking of numerous brands, including that of opposer. However, there is no indication in that report of the extent to which the ranking 24 Reply brief, p. 11. Opposition Nos. 91175419; 91175420; and 91175426 13 of opposer’s brand translates to fame either of its UPS mark or any of its other pleaded or non-pleaded marks. Simply put, we cannot determine from opposer’s evidence of fame to which of opposer’s marks such evidence applies. Furthermore, opposer has provided numerical figures, discussed above, regarding various aspects of its business from 2008. However, opposer has not provided similar figures for other years whereby we may determine whether they are an anomaly, or whether they are consistent with opposer’s business under its UPS mark for an extended period of time. Opposer’s numerical evidence of fame further suffers to a large extent from a lack of specificity as to whether the numbers provided are attributable to its operations worldwide, or only in the United States. Thus, we are unable to determine therefrom how these numbers translate into fame of its UPS mark in the United States. Finally, in making our finding on this factor, we are aware of the prior, non-precedential Board decision in Opposition No. 91184197, involving opposer herein and a third party, in which opposer’s UPS marks were found to be famous. The Board’s findings in that case, however, are no substitute for opposer’s obligation to build its own record in the present proceeding. “The decision by another court based upon a different record is not evidence in this proceeding...Th[e] duty [to decide the right to registration Opposition Nos. 91175419; 91175420; and 91175426 14 in an inter partes proceeding] may not be delegated by the adoption of conclusions reached by another court on a different record. Suffice it to say that an [inter partes proceeding] must be decided on the evidence of record.” Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1665-66 (TTAB 2010). In this case, opposer introduced as evidence portions of the record from Opposition No. 91184197; however, the evidence properly of record from the prior case is insufficient to help establish fame herein.25 In view of the above, we find that opposer has failed to show fame. Accordingly, the fame factor is neutral.26 The Services Turning to our consideration of the recited services, we must determine whether consumers are likely to mistakenly believe that they emanate from a common source.27 It is not necessary that the services at issue be identical or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective services are 25 As discussed above, all evidence submitted by the parties on CD-ROM – including any evidence so submitted that may have been directed toward fame of opposer’s mark(s) - is in contravention of our rules and has not been considered. 26 In our determination regarding the fame of opposer’s UPS mark, we have considered applicant’s argument that the UPS mark should be afforded a limited scope of protection due to its coexistence with the United States Postal Service’s USPS mark. However, on this record we find insufficient evidence that the USPS mark has so weakened opposer’s UPS mark that it is entitled to only a narrow scope of protection. 27 All three involved applications recite identical services. Opposition Nos. 91175419; 91175420; and 91175426 15 related in some manner, and/or that the conditions and activities surrounding the marketing thereof are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this case, applicant’s Class 35 “business management and consultation services, namely, business and personal relocation services” are encompassed by opposer’s more broadly worded “business management consultation provided to the general public.” In other words, opposer’s generally worded “business management consultation” must be presumed to include applicant’s more limited “business management and consultation” in the field of personal relocation. Similarly, applicant’s Class 39 “transportation of goods of others by means of truck, van and other vehicles” are encompassed by opposer’s more broadly worded “transportation of personal property for hire by diverse modes of transportation” inasmuch as opposer’s services must be presumed to include transportation by truck, van and other vehicles. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) (finding “recreational vehicles, namely, travel trailers and fifth wheel trailers” to be encompassed by and legally identical to “trailers”); and In re Linkvest S.A., Opposition Nos. 91175419; 91175420; and 91175426 16 24 USPQ2d 1716 (TTAB 1992) (finding “computer software for data integration and transfer” to be encompassed by and legally identical to “computer programs recorded on magnetic disks”). Thus, applicant’s services in both Class 35 and Class 39 are legally identical in part to those of opposer. Because these services are legally identical, we find that the second du Pont factor weighs in support of a conclusion that confusion is likely.28 Channels of Trade Because applicant’s services, as identified, are identical in part to those of opposer, and because there are no recited restrictions as to their channels of trade or classes of purchasers, we must assume that the services are available in all the normal channels of trade to all the usual purchasers for such services, and that the channels of trade and the purchasers for applicant’s services as well as 28 Because we find that applicant’s “business management and consultation services, namely, business and personal relocation services” and “transportation of goods of others by means of truck, van and other vehicles” are legally identical to certain of the services in opposer’s pleaded registrations, we need not also determine the similarity or dissimilarity of opposer’s services to the other services identified in applicant’s applications, i.e., “consultation to others in the development and establishment of personnel relocation policies” and “warehousing and storage services; and freight forwarding services.” Similarity as to any of the services identified in the applications and pleaded registrations will suffice as a basis for finding the respective services to be similar for purposes of the second du Pont factor. See, for example, Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Opposition Nos. 91175419; 91175420; and 91175426 17 those of opposer would be the same. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It is settled that in making our determination regarding the relatedness of the services provided by the parties, we must look to the services as identified in the involved application and pleaded registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”). As a result of the foregoing, we find that this du Pont factor also favors a finding of likelihood of confusion. Actual Confusion Another du Pont factor discussed by the parties is the lack of instances of actual confusion. Applicant asserts that the absence of evidence of actual confusion despite Opposition Nos. 91175419; 91175420; and 91175426 18 over 9 years of simultaneous use by the parties of their marks suggests no likelihood of confusion. However, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Evidence of actual confusion often is very difficult to obtain, and while such evidence may support a finding of likelihood of confusion, the absence thereof does not necessarily suggest that confusion is unlikely. Accordingly, this du Pont factor must be considered to be neutral. Applicant’s Intent in Adopting Its Marks Opposer argues that as a result of a 1995 agreement with opposer, “UTS Germany agreed to limit its use of ‘UTS’ and not to file any applications anywhere in the world that included the letter combination ‘UTS.’”29 Opposer further argues that applicant’s “affiliate (UTS Germany) not only knew of the famous mark ‘UPS,’ but had promised not to use the letter combination ‘UTS’ in connection with services other than furniture removal….”30 Opposer argues in addition that “[a]t a minimum, the 1995 agreement is an 29 Opposer’s brief, p. 23. 30 Id. at 24. Opposition Nos. 91175419; 91175420; and 91175426 19 admission by UTS Germany to be applied against [applicant’s] interest”31 and that “‘due diligence’ [on applicant’s part] exercised in traditional business dealings of this type would reveal the existence of the Agreement.”32 In response, applicant argues that it has no contractual relationship with UTS Germany, the party with which opposer entered into the 1995 agreement. Applicant further argues that there is no support in the record for opposer’s contention that its agreement with UTS Germany is binding upon applicant or its European partner, UTS International. Finally, applicant argues in general that trademark rights in the United States are not affected by agreements addressing even the same marks in other jurisdictions. It is settled that a party’s bad faith intent in the adoption of a mark may be viewed as evidence of likelihood of confusion. See L.C. Licensing Inc. v. Berman, 86 USPQ2d 183, 1891 (TTAB 2008) (bad faith adoption of a mark is strong evidence that confusion is likely because an inference may be drawn from the imitator’s expectation of confusion); and Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB 1982) (“One’s wrongful intent to trade on the trademark or trade name of another is strong evidence 31 Id. 32 Id. Opposition Nos. 91175419; 91175420; and 91175426 20 that confusion is likely. Such inference is drawn from the imitator’s own expectation of confusion as to the source of his product”). In this case, however, it is not clear from the record whether or to what extent applicant may be related to UTS Germany, let alone the extent to which applicant may be bound by the terms of UTS Germany’s 1995 agreement with opposer. As a result, we do not find on this record that the existence of such agreement supports a finding that applicant adopted the marks at issue herein in bad faith. Accordingly, this du Pont factor also must be considered to be neutral. The Marks We now turn to the first du Pont factor, i.e., whether applicant’s marks are similar to opposer’s UPS mark or dissimilar therefrom, observing that, “[w]hen marks would appear on virtually identical ... services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). We begin by noting that the marks differ substantially in appearance. Opposer’s mark is UPS in typed or standard Opposition Nos. 91175419; 91175420; and 91175426 21 characters. Applicant’s marks all include the wording UNIGROUP WORLDWIDE UTS in standard stylized characters. Opposer’s mark is similar to the wording in applicant’s marks solely to the extent that they share the letters “U” and “S” as part of the respective initials UPS and UTS. The marks otherwise are completely dissimilar in appearance. The marks also differ in sound in that, regardless of pronunciation, opposer’s UPS mark is highly dissimilar from applicant’s UNIGROUP WORLDWIDE UTS marks. As for connotation, consumers are likely either to recognize opposer’s UPS mark as an initialism for “United Parcel Service” or simply view it as the letters UPS. Either connotation is dissimilar from the connotation of applicant’s UNIGROUP WORLDWIDE UTS marks. While consumers may not recognize that applicant’s marks are a combination of the names of the companies UNIGROUP WORLDWIDE and UTS INTERNATIONAL, there is nothing in the record to suggest that UPS and UNIGROUP WORLDWIDE UTS engender a similar meaning or significance. In view of the significant differences in the appearance, sound and connotation of the parties’ marks, we find that, despite both marks including the letters “U” and “S”, the differences are sufficient to distinguish applicant’s marks from opposer’s mark; overall they convey dissimilar commercial impressions. Opposition Nos. 91175419; 91175420; and 91175426 22 Thus, the du Pont factor of the similarity of the marks weighs against a finding of likelihood of confusion. Conclusion We have carefully considered all of the evidence pertaining to the relevant du Pont factors, as well as all of the parties’ arguments with respect thereto, including any evidence and arguments not specifically discussed in this opinion. We conclude, in view thereof, that opposer has proven its standing and priority of use. However, despite the legal identity in part of the parties’ services and their identical trade channels, we find that the strong dissimilarities in the marks outweigh these factors. Any one of the du Pont factors may, from case to case, play a dominant role. du Pont, 476 F.2d at 1361, 177 USPQ at 567. See also Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (Court found “no reason why, in a particular case, a single DuPont factor may not be dispositive”). In this case, because of the dissimilarity of the marks, we find that confusion is not likely. Decision: The oppositions are dismissed as to all three involved applications.

United Parcel Services of America, Inc. v. Unigroup Worldwide, Inc.