Airflite, Inc.v.Aycock Engineering, Inc.

Trademark Trial and Appeal Board

Oct 4, 2007

No. 92032520 (T.T.A.B. Oct. 4, 2007)

Hearing: February 15, 2007
Mailed: October 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Airflite, Inc.
v.
Aycock Engineering, Inc.
_____

Cancellation No. 92032520
_____

David J. Kera of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. for Airflite, Inc.

David D. Kalish and Anthony J. Biller of Coats & Bennett,
P.L.L.C. for Aycock Engineering, Inc.
_____

Before Grendel, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Airflite, Inc. seeks to cancel Registration No.
0983064, issued on the Supplemental Register, for the mark
AIRFLITE, in standard character form (formerly a typed
drawing), for “arranging for individual reservations for
flights on airplanes.” Petitioner pleaded the following
grounds for cancellation:
1. Priority of use and likelihood of confusion;

2. Registrant’s application for registration was void
ab initio because the mark was not used in
connection with the activities set forth in
identification of services when the application
was filed;
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92032520
2
3. Multiple claims of fraud based on petitioner’s
allegation that registrant had never used the mark
in connection with the services set forth in the
registration when registrant filed its
application, amendment to the Supplemental
Register, affidavit of continued use, and first
and second renewal applications;1 and,

4. Abandonment.

Registrant denied the salient allegations in the
petition for cancellation. Registrant also alleged laches
as an affirmative defense, but because it did not refer to
that affirmative defense in its brief, we have considered it
waived.
The proceeding has been fully briefed, and an oral
hearing was held. For the reasons set forth below, the
petition for cancellation is granted.

The Record
By operation of the rules, the record includes the
pleadings and the AIRFLITE registration file. The record
also includes the following testimony and evidence
introduced by the parties:
A. Petitioner’s Evidence.
1. Testimony deposition of Peggy Zaun, petitioner’s
Customer and Aviation Relations Manager, with attached
exhibits;

1 Petitioner’s motion to treat the pleadings as amended to
conform to the evidence pursuant to Fed. R. Civ. P. 15(b) is
granted. See Petitioner’s Brief, p. 13, n.42.
Cancellation No. 92032520
3
2. Testimony deposition of Jeffrey Smith, former
President of Purex Industries, Inc., petitioner’s
predecessor-in-interest, and custodian of documents for
Purex Industries, with attached exhibits;
3. Notice of Reliance on a certified copy of the U.S.
Patent and Trademark Office file for trademark Application
Serial No. 75757405 owned by petitioner for the mark
AIRFLITE, shown below, for the following services:
Demonstrating, ordering and retailing aircraft; fixed
based operations for aircraft, namely, managing
aircraft for others, in Class 35;

Brokerage services in the field of aircraft, in Class
36;

Fixed base operations for aircraft, namely, storing
aircraft for others; leasing aircraft for others,
providing flight information to others, in Class 39;
and,

Providing weather information to others, in Class 42.

4. Notice of Reliance on Respondent’s Responses To
Petitioner’s Requests for Admissions;
5. Notice of Reliance on portions of the discovery
deposition of William L. Aycock, registrant’s president,
with attached exhibits (July 9, 2002); and,
6. Notice of Reliance on the discovery deposition of
William L. Aycock as the Rule 30(b)(6) representative of
registrant, with attached exhibits (October 22, 2004).
Cancellation No. 92032520
4
B. Registrant’s Evidence.
Testimony deposition of William L. Aycock with attached
exhibits.

Facts
A. Petitioner.
On July 23, 1999, petitioner filed an application to
register the mark AIRFLITE and Design for the services
identified supra (Application Serial No. 75757405).
Registration was refused on the ground that petitioner’s
mark, when used in connection with the services set forth in
the application, so resembles registrant’s mark AIRFLITE for
“arranging for individual reservations for flights on
airplanes” (Registration No. 0983064 - the trademark
registration that petitioner is seeking to cancel) as to be
likely to cause confusion. Action on the application has
been suspended pending the final determination of this
cancellation proceeding.
The parties dispute the probative value of the
documentary evidence introduced to show the use of the
AIRFLITE mark by petitioner’s predecessor-in-interest.
However, Peggy Zaun testified that she worked for petitioner
since May 11, 1992,2 and that petitioner has used AIRFLITE
as a trade name and service mark, in connection with fixed

2 Zaun Dep., p. 9.
Cancellation No. 92032520
5
based operations for aircraft and other related services
since at least as early as 1992.3 William Aycock,
registrant’s president, testified that sometime in the
1990’s, he visited petitioner’s offices at the Long Beach,
California airport.4
As far as I could tell, they were
operating what was called a fixed base
operation in which they served fuel or
have maintenance personnel that can help
visiting aircraft. They rent airplanes
perhaps or rent hangar space. It’s
called fixed based operation. FBO.5

B. Registrant.
Shortly after World War II ended, William Aycock,
registrant’s president, realized that because air taxi
operators were only offering chartered flights for entire
airplanes, and not individual seats, they were not
maximizing their potential business opportunities.6
Accordingly, registrant devised an airplane reservation
system utilizing a network of air taxi operators7 to sell
individual seats on airplanes, rather than chartering entire
planes.8 Registrant would be the communications link
between the customers and the air taxi operators.9 In other

3 Zaun Dep., pp. 25 - 52; Exhibits 73-106 and 109-147
4 Aycock Testimony Dep., pp. 52-54.
5 Id at 54.
6 Aycock Testimony Dep., p. 9
7 Aycock Discovery Dep. (7-29-02), p. 10.
8 Aycock Testimony Dep., p. 9.
9 Aycock Testimony Dep., pp. 11, 12, 15, and 106.
Cancellation No. 92032520
6
words, travelers would contact registrant regarding their
travel plans, and registrant would in turn contact its
member air taxi operators to arrange flights.
Registrant estimates that it will take 300 air taxi
operators to make the system viable.10 Registrant does not
have, and never has had, the necessary 300 air taxi
operators.11 Since the late 1940’s, registrant, through its
principal, William Aycock, has been working on enrolling the
air taxi operators necessary to commence operations.12 In
other words, registrant has been “arranging the system.”13
It has never marketed the services to the general public,14
communicated with persons seeking air travel,15 or arranged
for the transportation of any passengers.16
I had never made a - - any arrangement,
if you want to call it arrangement. I
had never had a talk with the customer
and then talked with the air taxi
operator and reached any agreement on
them carrying the customer.17

On August 10, 1970, registrant filed an application on
the Principal Register for the mark AIRFLITE for “a

10 Aycock Testimony Dep., p. 10.
11 Aycock Testimony Dep., p. 13; Registrant’s Response to
Petitioner’s Request for Admission No. 12.
12 Aycock Testimony Dep., p. 14.
13 Aycock Discovery Dep. (7-9-02), p. 23.
14 Aycock Testimony Dep., p. 86.
15 Aycock Discovery Dep. (7-9-02), p. 13
16 Id. Registrant has never taken or made an air travel
reservation. Registrant’s Responses To Petitioner’s Request for
Admissions No. 1 and 2.
17 Aycock Discovery Dep. (7-9-02), p. 28. See also Aycock
Discovery Dep. (7-9-02), p. 69 and Registrant’s Response To
Petitioner’s Request For Admission No. 13.
Cancellation No. 92032520
7
communication service between persons desiring custom air
travel and certified air taxi operators.” Registrant
claimed that the mark was first used in connection with the
services at least as early as June 23, 1969, that it was
first used in the sales or advertising of services rendered
in interstate commerce at least as early as March 3, 1970,
and that it was now in use in interstate commerce.
Registrant submitted an advertising brochure as a specimen
of use. The specimen was distributed to air taxi operators
as part of registrant’s efforts to enroll air taxi operators
in its airplane reservation network.18
In the July 27, 1971 Office Action, the examining
attorney recommended that the identification of services be
amended to “airplane reservation services,” if accurate. In
its January 26, 1972 response, registrant amended the
identification of services to “a communication service
between persons desiring to charter aircraft and certified
air taxi operators.” In its “Remarks,” registrant explained
its services as follows:
The statement of the services has been
amended to more clearly state the
business in connection with which
Applicant is using the mark of the

18 Registrant’s Response to Petitioner’s Second Set of Requests
for Admission Nos. 3 and 4; Aycock Discovery Dep. (July 9, 2002),
pp. 38-40 and Exhibit Nos. 1-48; Aycock Testimony Dep., pp. 18-21
and Exhibit No. 2. See also Registrant’s Brief, p. 5 (“The
specimen was a copy of an advertisement directed to air taxi
operators, inviting them to form a network for offering
individual flight reservations”).
Cancellation No. 92032520
8
present application. This service is a
communication service between persons
desiring to charter aircraft and
certified air taxi operators in the
locale in which the charter is desired
to originate. This is not a travel
agency arrangement nor is it a schedule
airline reservation service.

In a supplemental amendment dated April 14, 1972,
registrant amended the identification of services to “a
communication service between persons desiring scheduled and
unscheduled airplane reservation services and certified air
taxi operators.” The amendment more accurately reflects
that registrant’s services are related to reserving seats on
an airplane, not chartering the entire craft.
Applicant has pointed out to his
Attorney that his services relate to
obtaining of seat reservations on
aircraft and not to the charter of the
whole aircraft . . . Applicant’s
reservation for (sic) service is
directed primarily to certified air taxi
operators and not to scheduled airline
services or travel agency type
arrangements. Although Applicant’s
services does (sic) not refuse to obtain
scheduled airline reservations nor the
chartering of an aircraft, it is
primarily directed to obtaining a seat
on an aircraft that is going to the
desired destination of the party
concerned.

In the April 24, 1972 Office Action, the Examining
Attorney explained that registrant’s specimen demonstrates
that registrant “arranges charter air flights,” and required
the identification of services to be amended accordingly.
Cancellation No. 92032520
9
On October 24, 1972, registrant filed a Notice of
Appeal.
On December 4, 1972, registrant filed an amendment to
the Supplemental Register. In addition, registrant again
explained that it was not rendering an air charter service.
It should again be emphasized that the
service rendered by Applicant is not a
service of arranging charter aircraft
but rather is the arrangement of
transportation on a per seat basis from
one point to another, with the local
aircraft operator, under his own
trademark whatever it may be, to
actually do the flying. (Emphasis in
the original).

In its December 15, 1972 Order, the Board remanded the
application to the Examining Attorney to consider the
amendment to the Supplemental Register.
In the January 23, 1973 Office Action, the Examining
Attorney required registrant to file a declaration that its
mark has been in lawful use in commerce for at least a year
prior to the filing of the amendment to the Supplemental
Register. In addition, the Examining Attorney requested
that the registrant amend the identification of services to
read as follows: “Arranging for reservations for flights on
airplanes.”
In its April 27, 1973 response, registrant amended the
identification of services to read as follows: “Arranging
for individual reservations for flights on airplanes.” In
addition, it submitted an affidavit signed by William Aycock
Cancellation No. 92032520
10
attesting to the fact that “[t]he mark sought to be
registered has been in lawful use in interstate commerce in
connection with the goods (sic) for the year preceding the
date of filing of this statement.” The amendment was
approved, the lawful use statement was accepted, and the
AIRFLITE mark was registered on the Supplemental Register.

Standing
Petitioner, through its testimony and exhibits, has
established that it has been using AIRFLITE as a trade name
and service mark, in connection with fixed based operations
for aircraft and other related services since at least as
early as 1992, and therefore petitioner has shown that it is
not a mere intermeddler. In addition, petitioner has shown
that it filed an application to register its AIRFLITE
service mark, and that registration was refused because of
Registration No. 0983064. Thus, there is no issue with
respect to petitioner having proven its standing to
prosecute the petition for cancellation. Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

Registrant’s Use of the AIRFLITE Service Mark
The pertinent facts are not at issue:
Cancellation No. 92032520
11
1. The identification of services in registrant’s
AIRFLITE registration are “arranging for individual
reservations for flights on airplanes”;
2. Registrant has never marketed the services to air
travelers, communicated with persons seeking air travel,
arranged for the transportation of any passengers, nor taken
or made an air travel reservation; and,
3. Registrant has been using the AIRFLITE service
mark in connection with its efforts to enroll air taxi
operators in a network of air taxi operators in order to
have enough air taxi operators to commence the airplane
reservation services.
Registrant argues that arranging for the network of air
taxi operators necessary to start the airplane reservation
services falls within the penumbra of “arranging for
individual reservations for flights on airplanes.” In other
words, “arranging” means developing the whole system.19
The word “arranging” is broad in its
meaning. As such, the description of
services in the registration
incorporates a broad range of
activities. One such activity is the
arrangement of a network of air taxi
operators for the purpose of reserving
individual seats on air taxi airplanes.
To reserve individual seats on air taxi
aircraft according to Mr. Aycock’s plan,
the air taxi operators must necessarily
be arranged into a network. Mr.
Aycock’s arranging for the air taxi
operators to take individual

19 Aycock Testimony Dep., p. 99.
Cancellation No. 92032520
12
reservations is, thus, part and parcel
of “arranging for individual
reservations for flights on
airplanes.”20

Moreover, registrant asserts that AIRFLITE is a service
rendered to air taxi operators.21
Registrant further argued that because the Examining
Attorney reviewed the specimen showing use of the mark and
went through several iterations of the description of
services before settling on “arranging for individual
reservations for flights on airplanes,” the approval of the
identification of services by the Examining Attorney
demonstrates the propriety and accuracy of that description.
A. Establishing the infrastructure to render a service is
not a registrable service.

Even if we were to accept registrant’s argument that
“arranging for individual reservations for flights on
airplanes” encompasses arranging for, or the establishment
of, the network of air taxi operators necessary to begin the
airplane reservation services, setting up the infrastructure
or means of rendering the services is not a registrable
service. While the definition of a service mark in the
statute does not define what is meant by services, and the
term is susceptible to many different meanings and
interpretations, each situation involving what constitutes a

20 Registrant’s Brief, p. 10.
21 Aycock Discovery Dep. (July 9, 2002), p. 22.
Cancellation No. 92032520
13
service must be considered upon its own facts giving proper
regard to judicial precedent. In re Television Digest,
Inc., 169 UPSQ 505, 507 (TTAB 1971); In re Landmark
Communications, Inc., 204 UPSQ 692, 694-695 (TTAB 1979).
“The following criteria have evolved for determining
what constitutes a service: (1) a service must be a real
activity; (2) a service must be performed to the order or,
or for the benefit of, someone other than the applicant; and
(3) the activity must be qualitatively different from
anything necessarily done in connection with the sale of
applicant’s goods or the performance of another service.”
TMEP §1301.01(a). See also, In re Canadian Pacific Limited,
754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985) (a service
must be performed for the benefit of others); In re Betz
Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); In re Landmark
Communications, Inc., supra at 695 (“to be separately
recognizable, as services, an applicant’s activities must be
qualitatively different from anything necessarily done in
connection with the sale of goods”).
Thus, promoting the sale and use of one’s own products
is not a separate service. In re Radio Corporation of
America, 205 F.2d 180, 98 USPQ 157, 158 (CCPA 1953); In re
Restonic Corporation, 189 USPQ 248 (TTAB 1975); In re
Reichhold Chemicals, Inc., 167 USPQ 376, 377 (TTAB 1970).
The operations of a manufacturer or merchant involved in the
Cancellation No. 92032520
14
designing, production, sales, sales promotion and use,
advertising or building up of good will of a product is not
a separate service. In re Television Digest, Inc., supra.
Guaranteeing to repair or replace defective merchandise is
not a separate service. In re Orion Research Incorporated,
187 USPQ 485 (CCPA 1975). Syndicating an investment
partnership where applicant’s wholly owned subsidiary is the
managing partner is not a separate service because it is
merely an attempt to attract investors to become limited
partners in the partnership. In that situation, the
applicant is not in the business of syndicating multiple
investment partnerships, rather it is syndicating one
partnership for which it will render various services. In
effect, syndicating the one partnership is an activity that
primarily benefits applicant. In re Integrated Resources,
Inc., 218 USPQ 829, 831 (TTAB 1983).
In the case sub judice, registrant’s activities related
to enrolling air taxi operators in its airplane reservation
network is not an activity performed for the benefit of one
other than the registrant. Also, it is an activity that is
a necessary element of “arranging for individual
reservations for flights on airplanes.” First, enrolling
air taxi operators in registrant’s airplane reservation
network is an activity for registrant’s benefit. The air
taxi operators benefit from flying passengers obtained
Cancellation No. 92032520
15
through registrant’s airplane reservation network, not by
merely enrolling in the network. Second, enrolling air taxi
operators in registrant’s network so that registrant can
book air flight reservations is nothing more than an
activity that is preparatory to and essential to starting
its business. Stated differently, setting up the network of
air taxi operators is merely support and background for the
airplane reservation service and it does not constitute a
registrable service. Accordingly, enrolling air taxi
operators in registrant’s airplane reservation system is not
an activity that we recognize as a separate and registrable
service. Those efforts, therefore, do not constitute use of
the mark in connection with “arranging for individual
reservations for flights on airplanes.”
B. The meaning of “arranging for individual reservations
for flights on airplanes.”

Contrary to registrant’s argument, the meaning of the
identification of services in Registration No. 0983064,
“arranging for individual reservations for flights on
airplanes,” is limited to regulating, coordinating,
operating, or administering a system for individuals to book
flights on airplanes. As indicated supra, registrant
devised an airplane reservation service system utilizing a
network of air taxi operators. The purpose of the service
is to sell individual seats on airplanes, rather than
chartering full planes. Registrant would be the
Cancellation No. 92032520
16
communications link between the customers and the air taxi
operators. According the registrant, travelers would
contact registrant regarding their travel plans, and
registrant would in turn contact its member air taxi
operators to arrange flights. Accordingly, the services
identified in the registration are, in essence, a airplane
flight reservation service.
C. Registrant has not rendered its services.
It is clear that registrant had not rendered airplane
flight reservation services when it filed its application to
register the AIRFLITE service mark. In fact, registrant has
never marketed the services to air travelers, communicated
with persons seeking air travel, arranged for the
transportation of any passengers, or taken or made an air
travel reservation. Consequently, registrant’s application
was void when filed and could not lead to a registration.
Intermed Communications, Inc. v. Chaney, 197 USPQ 501, 507
(TTAB 1977) (“Mere adoption (selection) of a mark
accompanied by preparations to begin its use are
insufficient as a matter of law as a foundation for claiming
ownership of an applying to register the mark”). See also,
Gay Toys, Inc. v. McDonald’s Corporation, 585 F.2d 1067, 199
USPQ 722 (CCPA 1978) (because applicant did not use the mark
in commerce in association with the goods at the time it
filed the application, its application was void); In re
Cancellation No. 92032520
17
Cedar Point, Inc., 220 USPQ 533, 535 (TTAB 1983) (rights in
mark arise through its use in connection with existing
services); Greyhound Corp. v. Armour Life Insurance Co., 214
UPSQ 473, 474 (TTAB 1982) (application was void because at
the time it was filed the mark had not been used in the sale
or advertising of existing services).
In addition, because registrant has not made use of the
AIRFLITE mark in connection with “arranging for individual
reservations for flights on airplanes,” it could not
properly amend its application to the Supplemental Register.
Prior to November 16, 1989, one year of lawful use of the
mark in commerce was required to apply for registration on
the Supplemental Register. TMEP §816.02. The Trademark Law
Revision Act of 1988 eliminated the requirement that one
seeking registration on the Supplemental Register claim
exclusive use of the term for one year preceding the filing
date or the amendment to the Supplemental Register. Because
registrant had not, and has not, used the AIRFLITE mark in
commerce in connection with the services set forth in its
registration, its amendment to the Supplemental Register was
void.
For the preceding reasons, we conclude that
registrant’s mark AIRFLITE was not in use in commerce in
connection with “arranging for individual reservations for
flights on airplanes” at the time registrant filed its
Cancellation No. 92032520
18
application or at the time registrant amended it to the
Supplemental Register, and that the registration is
therefore void ab initio. Having determined that
registrant’s registration is void because registrant has
never used the AIRFLITE mark in connection with the services
set forth in the registration, we need not decide priority
of use and likelihood of confusion, fraud, or abandonment.
Decision: The petition for cancellation is granted.